DETAILED ACTION
Response to Amendment
Applicant's amendment filed 1/29/2026 has been entered. Currently, claims 1, 2, 4 and 5 are pending and claim 3 is canceled.
Claim Objections
Claims 2 and 4 are objected to because of the following informalities:
In claims 2 and 4, the phrase that the “layer comprises a reducing agent” are objected to grammatically. The objection can be overcome by changing the phrase to “layer further comprises a reducing agent” which is how the claims will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 1, 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Uytterhoeven et al. (5,863,859) in view of Roschger et al. (5,948,600).
With regard to claims 1 and 2, Uytterhoeven et al. teach a heat-sensitive recording material, which reads on applicants’ thermal recording material (col. 3, lines 56-64). The heat-sensitive recording material can have a transparent resin film support, which reads on applicants’ light-transmittable support, a hydrophobic binder layer 2 that may contain an infrared-red light absorbing substance, which reads on applicants’ infrared absorbing layer, a recording layer 1 covering the layer 2 that, which reads on applicants’ thermal recording layer, and a protective coating or slipping layer as an outermost layer, which reads on applicants’ protective layer (col. 8, lines 1-6 and 32-41 and col. 9, lines 1-8). The outermost layer can comprise talc particles, which reads on applicants’ hydrophilic particles, and a styrene-acrylonitrile binder, which reads on applicants’ hydrophobic resin (col. 9, lines 4-8 and 31-37). The layer 2 contains at least one reducing agent and the recording layer 1 contains a light-insensitive organic silver salt, such as silver behenate, and the layer does not have any silver halide (col. 6, lines 54-67 and col. 8, lines 49-54); however, they do not specifically teach the thickness of the outermost protective layer or the molar absorptivity ratio of the infra-red light absorbing substance.
Roschger et al. teach IR dyes for forming IR-laser sensitive thermographic material that uses organic silver salts (col. 3, lines 35-47 and col. 17, lines 1-7). The IR dyes have a ratio of the average absorptance in the UV area (330-430 nm) to the absorptance at 823 nm should be at most 0.3 (col. 16, line 60 to col. 17, line 12). Tables 2 and 3 show that at least dye 16 has a ratio of 0.24, which would represent a ratio of absorptance at 823 nm to the UV area (330-430 nm) of approximately 4.17 (= 1/0.24) (col. 25, lines 30-35). These absorptances would be directly related to the molar absorptivity and shows that the prior art ratio overlaps with the molar absorptivity ratio claimed.
Since Uytterhoeven et al. and Roschger et al. are both drawn to thermal recording using IR lasers of non-silver halide recording material, it would have been obvious to one having ordinary skill in the art to have used the infra-red absorbing dye 16 of Roschger et al. as the infra-red light absorbing substance of Uytterhoeven et al. This would have been a simple substitution of known materials for the infra-red absorbing substance that would have had predictable results in their substitution; further, this dye would intrinsically have the molar absorptivity ratio claimed.
Alternatively, it would have been obvious to have made the ratio of the IR molar absorptivity at 830 nm to the UV molar absorptivity at 365 nm to be at least 4.0 or more as Roschger et al. teaches making the UV side absorption as low as possible for these IR absorbing dyes (col. 17, lines 1-7).
Lastly, it would have been obvious to one having ordinary skill in the art to have made the thickness of the outermost protective layer any amount, including from 2.7 to 8.1 microns thick, so that the proper level of improved resistance against abrasion while not being so thick as to waste materials.
With regard to claim 4, Uytterhoeven et al. teach that auxiliary reducing agents can be present in the imaging layer 1 (col. 6, lines 1-4).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Uytterhoeven et al. (5,863,859) in view of Roschger et al. (5,948,600), and further in view of Dooms et al. (6,337,303).
Uytterhoeven et al. in view of Roschger et al. rendered obvious all of the limitations of claim 4 above; however, they do not specifically teach that the imaging layer further comprises one of the compounds claimed.
Dooms et al. teach a thermographic recording material that can be recorded upon with an infra-red laser and uses a light-insensitive organic silver salt to form the image (col. 5, lines 16-31 and col. 8, lines 30-38). The thermosensitive element can also contain a stabilizer that is a dicarboxylic acid according to formula (I) and is preferably glutaric or succinic acid (col. 3, lines 51-67 and col. 4, lines 22-31).
Since Uytterhoeven et al. in view of Roschger et al. and Dooms et al. are drawn to thermographic recording using light-insensitive organic silver salts, it would have been obvious to have combined in the glutaric or succinic acid stabilizer into the image forming layer of Uytterhoeven et al. in view of Roschger et al. The results of such a combination would have been predictable to one having ordinary skill; further, each of the elements would have performed the same in combination as they had separately. The rationale to use this material is to stabilize the image forming layer.
Response to Arguments
Applicant’s arguments, see Remarks, filed 1/29/2026, with respect to the rejections based on Sakata have been fully considered and are persuasive. The relevant rejections have been withdrawn.
Applicant's arguments filed 1/29/2026 have been fully considered but they are not persuasive.
Applicants argue on pages 7-8 of their Remarks that the prior art does not teach or suggest the narrowed thickness range of their protective layer.
The Examiner respectfully disagrees and notes that applicants’ amendment has necessitated the rejection based on Uytterhoeven et al. in view of Roschger et al. These references render obvious the thickness of the protective layer for the reasons noted above.
Applicants argue on pages 8-9 of their Remarks that the evidence at least in Table 3 of their specification demonstrates evidence of secondary considerations that would overcome any prior art rejections.
The Examiner respectfully disagrees and notes that the claimed invention is not commensurate in scope with the evidence in the Tables. As examples of this, the Examiner notes that the examples of Table 3 all have a reducing agent in the recording layer but that is not in claim 1. Also, there is no evidence demonstrating the synergistic effect over the full range of molar absorptivity ratios at the wavelengths claimed, i.e. there is no dye tested with a molar absorptivity ratio of 4.0, e.g. see examples 13 and 30. Lastly, it appears that applicants only tested two IR absorbing dyes and this would not provide evidence of secondary consideration for any dye having the molar absorptivity ratio claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Gerard Higgins/Primary Examiner, Art Unit 1785