DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of Group I, claims 1-10 and 13-17, in the reply filed on 1/19/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/19/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 9, 10, 16 and 17 are objected to because of the following informalities:
In claims 9, 10, 16 and 17, the phrase “content ratio” is objected to grammatically because the value being claimed is not a ratio. This objection can be overcome by changing each instance of the phrase to “mass content”, which is how the claims will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
Claims 1, 2, 4, 5, 7, 8, 10, 14, 15 and 17 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by Oota (WO 2021/033778) of which US 12,145,389 is the US national stage and will be used as a translation.
With regard to claims 1, 2, 4, 5, 7, 8, 14 and 15, Oota teaches examples 6-8 of Table 1 (col. 12, lines 13-26, col. 13, lines 39-52, col. 14, lines 24-28, and cols. 17 and 19). These examples have a PET film, which reads on applicants’ substrate, and an adhesive layer having DAISO DAP A, S or K, which is the same diallyl phthalate resins used in applicants’ specification (col. 12, lines 13-26). The vinyl chloride-vinyl acetate copolymer D reads on applicants’ modified olefin polymer as the vinyl chloride portion is an ethylene modified with chloride (col. 14, lines 24-28 and Table 1); further, applicants’ specification allows for copolymers to read on modified olefin at [0038]. There may be a peeling layer, which reads on applicants’ release layer, and a colored layer, which reads on applicants’ colorant layer (Table 1).
With regard to claims 10 and 17, as can be seen in examples 6-8 of Table 1 the mass content of the allyl resin is greater that the mass content of the modified olefin polymer.
Claim Rejections - 35 USC § 103
Claims 6, 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Oota (WO 2021/033778) of which US 12,145,389 is the US national stage and will be used as a translation.
Oota teaches all of the limitations of claims 1, 2 and 4 above. Oota also teaches that the colorant layer may contain the “above other resin material” (col. 7, lines 51-57), which is referring the other resin materials at col. 5, line 65 to col. 6, line 12. These materials include (meth)acrylic resins and the vinyl-chloride-vinyl acetate resins (col. 6, lines 1-12). The adhesive layer may have the content of the allyl resin be from 13% by mass to 55% by mass of the adhesive layer and the colorant may be from 50% by mass to 85% by mass of the adhesive layer; however, Oota does not specifically teach an example having the resins of the colorant layer or the mass% of the adhesive layer.
As to claim 6, it would have been obvious to one having ordinary skill in the art to have combined a (meth)acrylic resin and a vinyl chloride-vinyl acetate resin with the allyl resin of the colored layer of Oota. These are known other resins in Oota for addition and it would be prima facie obvious to have combined multiple resins to form a further composition useful for the same purpose. Please note that claim 6 is not limited to only two resins.
As to claims 9 and 16, it would also have been obvious to have made the vinyl-chloride-vinyl acetate resin of the adhesive layer be the remainder of the mass percent of the adhesive layer other than the colorant and allyl resin. This implies that the vinyl-chloride-vinyl acetate resin could be present up to 37% by mass of the adhesive layer (= 100 – (13 + 50)). This means the mass % vinyl-chloride-vinyl acetate overlaps with the range for the modified olefin polymer claimed; hence, a prima facie case of obviousness exists.
It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to have made the vinyl-chloride-vinyl acetate any amount within the implied range of the prior art, including from 5 to 37 mass% of the layer as claimed.
Claims 1-10 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (JP 10-250222), machine translation included.
With regard to claims 1-3 and 13, Kobayashi teaches a thermal transfer medium that includes a support 1, which reads on applicants’ substrate, and a thermal transfer layer 2, which reads on applicants’ adhesive layer of a transfer layer [0041]. Please note that Kobayashi teaches that the thermal transfer layer undergoes thermocompression bonding, which means the thermal transfer layer acts as an adhesive layer [0042]. The thermal transfer layer may comprise a thermoplastic polymer resin that may be an acrylic resin or a vinyl chloride resin, and a thermally crosslinkable polymer resin that may be diallyl phthalate [0023] and [0025]. There may also be a binder, wherein the binder may be ethylene-vinyl acetate copolymer or vinyl chloride-vinyl acetate [0032]; however, Kobayashi does not specifically teach the combination of resins claimed.
It would have been obvious to one having ordinary skill in the art to have combined either an acrylic resin or vinyl chloride resin as the thermoplastic polymer resin with either of vinyl chloride-vinyl acetate or ethylene-vinyl acetate copolymer, respectively, and the diallyl phthalate resin as the thermally crosslinkable polymer resin in the thermal transfer layer of Kobayashi. The rationale to have done so is that Kobayashi specifically teaches these as options in the reference for all these materials. The vinyl chloride resin or the vinyl chloride-vinyl acetate reads on applicants’ modified olefin polymer as the vinyl chloride is ethylene modified with chloride; further, applicants’ specification allows for copolymers to read on modified olefin at [0038]. The combination including ethylene-vinyl acetate would read on claims 3 and 13.
With regard to claims 4-8, 14 and 15, Kobayashi also teach that the thermal transfer layer may comprise a coloring pigment [0034]; however, they do not teach a release layer adjacent to the substrate or a colorant layer having the resins claimed.
The Examiner notes that the release layer and colorant layer of claims 4, 8, 14 and 15 represent a mere duplication of the transfer transfer layer of Kobayashi. It has been held that "mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” Please see MPEP 2144.04 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
It would have been obvious to one having ordinary skill to have included a coloring pigment in the layer and to have made the thermal transfer layer of Kobayashi be two of the same coating. The rationale to have coated the material twice would be the increase the thickness of the thermal transfer layer of Kobayashi and the rationale to include a coloring pigment is to provide a background color to any transferred image. The first coating would read on applicants’ release layer or colorant layer and the second coating would read on applicants’ adhesive layer.
With specific regard to claims 6 and 7, the combination of resins rendered obvious above read with the duplication of the layers on these claims. Specifically, the combination of an acrylic resin with the vinyl chloride-vinyl acetate and the diallyl phthalate resin reads on these claims.
With regard to claims 9, 10, 16 and 17, Kobayashi teaches that the thermoplastic polymer resin and the thermally crosslinkable polymer resin can be present at 40 to 100% by weight of the layer, the binder can be from 1% to 40% by weight of the layer and the weight ratio of the thermoplastic polymer resin to the thermally crosslinkable polymer resin can be from 9:1 to 1:9 [0028]-[0029] and [0032]; however, they do not specifically teach the content ratio of the claims.
The Examiner notes that the weight percentages of the thermoplastic polymer resin and the thermally crosslinkable polymer resin combined with the weight ratio of the two overlaps with the mass content claimed. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would also have been obvious to have made the thermoplastic polymer resin and thermally crosslinkable polymer resin be from 40 to 99 weight % of the layer, to have made the resin be the vinyl chloride resin and diallyl phthalate resins, and to have made the weight ratio of the thermoplastic polymer resin to the thermally crosslinkable polymer resin be from greater than 1:1 to 1:7 as these are all within the ranges of the prior art. This would result in weight percentages of from 5% to less than 49.5% of the vinyl chloride and from greater than 49.5% to approximately 86.6 weight % of the diallyl phthalate.
Claims 1, 2, 4, 5, 8-10 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Miyagawa et al. (5,034,301).
With regard to claims 1 and 2, Miyagawa et al. teach a transfer recording medium having a recording layer, which reads on applicants’ adhesive layer of a transfer layer, on a support, which reads on applicants’ substrate (col. 4, lines 50-52). Please note that Miyagawa et al. teach that the adhesive force increases between the recording layer and a transfer-receiving medium after passing through hot-pressure rollers, which means the recording layer acts like an adhesive layer (col. 9, lines 11-28). The recording layer may comprise a functional component that may include diallyl phthalate resin and a binder that may be a chlorinated olefin resin, which reads on applicants’ modified olefin resin (col. 4, lines 52-57 and col. 14, lines 30-61); however, Miyagawa et al. do not specifically teach an example with both of these materials.
It would have been obvious to one having ordinary skill in the art to have combined either of the styrene resin or polyester resin with the diallyl phthalate resin in the recording layer of Miyagawa et al. The rationale to have done so is that Miyagawa et al. specifically teach that this is an option in the reference.
With regard to claims 4, 5, 8, 14 and 15, Miyagawa et al. also teach that their recording layer comprises a colorant (col. 4, lines 50-54); however, they do not teach a release layer adjacent to the substrate or a colorant layer having an allyl resin.
The Examiner notes that the release layer and colorant layer of claims 4, 8, 14 and 15 represent a mere duplication of the transfer recording layer of Miyagawa et al. It has been held that "mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” Please see MPEP 2144.04 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
It would have been obvious to one having ordinary skill to have made the transfer recording layer of Miyagawa et al. be two of the same coating. The rationale to have coated the material twice would be the increase the thickness of the transfer recording layer of Miyagawa et al. The first coating would read on applicants’ release layer or colorant layer and the second coating would read on applicants’ adhesive layer.
With regard to claims 9, 10, 16 and 17, Miyagawa et al. teach that the functional component may be present at 30 to 95 wt% and the binder may be present at 0 to 60 wt% (col. 15, lines 51-56); however, they do not specifically teach the content ratio of the claims.
The Examiner notes that the wt% of the functional component and the binder in the prior art overlaps with the mass content claimed. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would also have been obvious to have made the diallyl phthalate more than 50 wt% to 95 wt% of the layer as this would be within the range taught in the prior art; therefore, this means the mass content of the allyl resin would necessarily be larger than the mass content of the modified olefin polymer.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4-10 and 14-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,145,389.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to a thermal transfer sheet with a substrate and a transfer layer. The transfer layer of the copending claims has a peeling layer, which reads on the pending release layer, a colored layer, which reads on the pending colorant layer, and an adhesive layer having a allyl resin; however, the copending claims do not specifically teach the modified olefin resin in the adhesive layer.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to col. 6, lines 1-12, col. 7, lines 51-57 and col. 9, lines 5-22 of the specification of US Patent No. 12,145,389 which defines what is meant by the colored layer in that it may further comprise (meth)acrylic resins and vinyl chloride-vinyl acetate and what is meant by the adhesive layer in that it may further comprise a vinyl chloride-vinyl acetate resin, which reads on applicants’ modified olefin polymer, and the percentage of allyl resin and colorant in the adhesive layer; therefore, it would have been obvious to one of ordinary skill in the art to made the adhesive layer and colored layer have the same resins as presently claimed.
it would also have been obvious to have made the vinyl-chloride-vinyl acetate resin of the adhesive layer be the remainder of the mass percent of the adhesive layer other than the colorant and allyl resin. This implies that the vinyl-chloride-vinyl acetate resin could be present up to 37% by mass of the adhesive layer (= 100 – (13 + 50)). This means the mass % vinyl-chloride-vinyl acetate overlaps with the range for the modified olefin polymer claimed; hence, a prima facie case of obviousness exists.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Gerard Higgins/Primary Examiner, Art Unit 1785