DETAILED ACTION
Response to Amendment
Applicants’ amendment filed 8/13/2026 has been entered. Currently, claims 1, 2, 5-17, 19 and 21 are pending, claims 3, 4, 18 and 20 are canceled and claims 14-17 are withdrawn.
Claim Objections
Claims 12 and 13 are objected to because of the following informalities:
In claim 12 on lines 6-7, the phrase “or in that the color layer is both a color layer and an insulating layer, wherein the color layer is also an insulating layer and has” is objected to grammatically. This objection can be overcome by changing the phrase to “or the color layer is also an insulating layer and has” which is how the claim will be interpreted.
In claim 13 on lines 9 and 14-15, the phrases “a floated initial mixture without” and “a floated initial waste paper mixture without” are objected to grammatically. This objection can be overcome by changing the phrases to “the initial mixture being floated without” and “the initial waste paper mixture being floated without” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 13 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 13, the Examiner does not find support for the limitations of “an addition of 1% by weight” and “an addition of 5% by weight” in the specification as originally filed. The indication of “by weight” is not present in the specification in relation to these terms.
Claims 2, 13 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 2 on line 9, the limitations “dye elimination IE” render the claim indefinite as these are two different concepts that have a slightly different meanings, i.e. dye vs. ink elimination. It is unclear whether the score is to a “dye elimination” or an “ink elimination”. For purpose of examination, the claims will be interpreted as being drawn to ink elimination because of the “IE” abbreviation.
In claim 13 on line 7, the phrase “the light reflectance value” lacks antecedent basis in the claim. Applicants have addressed this issue on line 13 of this claim. This rejection can be overcome by changing the phrase to “a light reflectance value” on line 7, which is how the claim will be interpreted.
In claim 13 on lines 7 and 13, the phrase “the filtrate” (two instances) lacks antecedent basis in the claim. It is unclear what materials are in the filtrate or how a mixture becomes a filtrate.
Claim Rejections - 35 USC § 103
Claims 1, 2, 5-13, 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Becerra Siabato et al. (EP 2993055), machine translation included.
With regard to claims 1 and 5-8, Becerra Siabato et al. teach a heat-sensitive recording material having a web-shaped substrate, which reads on applicants’ web-like carrier material, a colored intermediate layer as a first layer, which reads on applicants’ color layer, and a second layer that at least partially covers the colored intermediate layer and can form a typeface by local heat treatment, which reads on applicants’ heat-sensitive layer that becomes translucent when exposed to localized heat [0040]. The second layer can have hollow pigments made of thermoplastic resins having a glass transition temperature of 75 to 120 C, which reads on applicants’ scattering particle, and a fatty acids such as stearic acid amide, which reads on applicants’ heat-sensitive material and has a melting point in the range claimed [0028]-[0030] and [0034]. The intermediate layer can have a binder with carbon black, which read on applicants’ removable dye or pigment being carbon black set in a binder [0044] and [0045]. Carbon black is hydrophobic or can be made hydrophobic by chemical modification. The carbon black can be added to the colored intermediate layer in a corresponding quantity [0044]; however, they do not specifically teach the weight percentage claimed.
It would have been obvious to one having ordinary skill in the art to have formed the colored intermediate layer with any amount of carbon black, including from 2 to 19% by weight of the colored intermediate layer, in order to form a recording material that had the desired amount of coloration/shade while recorded upon while not using excess materials. Adjusting the amount of colorant in a layer to achieve a desired coloration will lead to predictable results and have a reasonable expectation of success in forming a working heat-sensitive recording material. The resultant intermediate layer will intrinsically have the pigment be removable in a waste paper cycle as claimed.
With regard to claims 2, 9, 10, 13 and 19, given the fact that the heat-sensitive recording material of Becerra Siabato et al. is identical to that claimed, the heat-sensitive recording material will intrinsically meet the assessment scores after processing according to the INGEDE method 11, the residual moisture, the surface whiteness and the recyclability criteria claimed.
With regard to claim 11, Becerra Siabato et al. teach all of the limitations of claim 1 above. They also teach smoothing the colored intermediate layer to a Bekk smoothness of 200 to 500 sec; however, they do not specifically teach a smoothness of the heat-sensitive layer being as great as the layer below it.
It would have been obvious to one having ordinary skill in the art to smoothen every layer lying on the colored intermediate layer to the same Bekk smoothness as the colored intermediate layer. The rationale would be to have the outward facing smoothness of the heat-sensitive recording material be set to a value for the desired intended use, and therefore it would have been obvious to have calendared every layer on the substrate to the same degree to form the desired smoothness for preventing printer jams and lost productivity in printing.
With regard to claims 12 and 21, the colored intermediate layer can have a Bekk smoothness of 200 to 500 sec and will inherently be an insulating layer as the materials of the layer, such as the boehmite or kaolin, and its thickness will prevent movement of heat to some degree [0041] and [0042]. The presence of the binder and the properties of the scattering particle, the stearic acid amide and the residual moisture content have been explained above.
Claims 1, 2, 5-10, 13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over by Boxhammer et al. (US 2022/0055389).
With regard to claims 1 and 5-8, Boxhammer et al. teach a heat-sensitive recording material having a carrier substrate, which reads on applicants’ web-like carrier material, a colored interlayer, which reads on applicants’ color layer, and a fusible layer on the colored interlayer [0138]-[0144], [0151] and [0155]. The fusible layer has inorganic pigments such as calcium silicate, which reads on applicants’ scattering particle, and an amide wax such as stearamide, which reads on applicants’ heat-sensitive material and has a melting point in the range claimed [0053], [0060], [0061] and [0169]. The d50 particle diameter of the calcium silicate is from 1 to 1.8 microns, which reads on the average particle size claimed [0049]. The colored interlayer can have carbon black in a PVA binder, which reads on applicants’ removable dye or pigment set in a binder [0169]. Carbon black is hydrophobic or can be made hydrophobic by chemical modification; however, they do not specifically teach the weight percentage or carbon black in the colored interlayer.
It would have been obvious to one having ordinary skill in the art to have formed the colored interlayer with any amount of carbon black, including from 2 to 19% by weight of the colored interlayer, in order to form a recording material that had the desired amount of coloration/shade while recorded upon while not using excess materials. Adjusting the amount of colorant in a layer to achieve a desired coloration will lead to predictable results and have a reasonable expectation of success in forming a working heat-sensitive recording material. The resultant colored interlayer will intrinsically have the pigment be removable in a waste paper cycle as claimed.
With regard to claims 2, 9, 10, 13 and 19, given the fact that the heat-sensitive recording material of Boxhammer et al. is identical to that claimed, the heat-sensitive recording material will intrinsically meet the assessment scores after processing according to the INGEDE method 11, the residual moisture, the surface whiteness and the recyclability criteria claimed.
Claims 11, 12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Boxhammer et al. (US 2022/0055389) in view of Becerra Siabato et al. (EP 2993055).
With regard to claims 11, 12 and 21, Boxhammer et al. teach all of the limitations of claim 1 above. They also teach that the colored interlayer has kaolin [0169]; however, they do not specifically teach the smoothness of the colored interlayer or the fusible layer.
Becerra Siabato et al. teach a heat-sensitive recording material having a web-shaped substrate, a colored intermediate layer and a second layer that at least partially covers the colored intermediate layer and can form a typeface by local heat treatment [0040]. The colored intermediate layer can have a Bekk smoothness of 200 to 500 sec [0041].
Since Boxhammer et al. and Becerra Siabato et al. are both drawn to heat-sensitive recording media with colored layers that are revealable by making an opaque heat-sensitive layer translucent, it would have been obvious to one having ordinary skill in the art to have made the Bekk smoothness of the colored interlayer of Boxhammer et al. be the same as that taught in Becerra Siabato et al. The rationale is to have the layer be as smooth as possible to reduce the amount of coating material needed for further layers.
It would also have been obvious to one having ordinary skill in the art to smoothen every layer lying on the colored interlayer to the same Bekk smoothness as the colored interlayer. The rationale would be to have the outward facing smoothness of the heat-sensitive recording material be set to a value for the desired intended use, and therefore it would have been obvious to have calendared every layer on the substrate to the same degree to form the desired smoothness for preventing printer jams and lost productivity in printing.
With specific regard to claims 12 and 21, the colored interlayer Boxhammer et al. will intrinsically be an insulating layer as the material of the layer, i.e. the kaolin, and its thickness will prevent movement of heat to some degree [0169]. The fusible layer has inorganic pigments such as calcium silicate, which reads on applicants’ scattering particle, and an amide wax such as stearamide, which reads on applicants’ heat-sensitive material and has a melting point in the range claimed [0053], [0060], [0061] and [0169]. The d50 particle diameter of the calcium silicate is from 1 to 1.8 microns, which reads on the average particle size claimed [0049].
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, 5-13, 19 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-10, 12-21, 23, 27, 41-45, 49-51, 64, 65, 85, 86 and 90 of copending Application No. 18/570919 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to heat-sensitive recording media having a support material, a colour layer and a heat-sensitive layer that becomes translucent with localized heat. The heat-sensitive layer has the same materials, e.g. the scattering polymer particles and fatty acid amide, as claimed and the colour layer can comprise a pigment and binder; however, the copending claims do not specifically teach the removable dye or pigment of the pending claims.
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 page 11 of the specification of copending Application No. 18/570919, which defines what is meant by a pigment in that it may be a carbon black pigment present at 10-35 wt% of the colour layer; therefore, it would have been obvious to one of ordinary skill in the art to have made the colour layer of the copending claims be carbon black. It would also have been obvious to have made the carbon black present at from 10 to 19 wt% of the colour layer as presently claimed as the copending application defines a range that overlaps with the range of the pending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Terminal Disclaimer
The terminal disclaimer filed on 8/13/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Application No. 18/570919 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because:
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b).
Also, please note that the wrong form was used. Please use form PTO/AIA 25
Response to Arguments
Applicants’ arguments, see Remarks, filed 8/13/2026, with respect to the objections to claims 19 and 21, the 112(b) rejections of claims 1, 3-12, 20 and 21 and the 102(a) rejections have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicants’ arguments filed 8/13/2026 have been fully considered but they are not persuasive.
Applicants argue on page 9 of their Remarks that the paragraph [0039] of Becerra Siabato et al. does not talk about the addition of carbon black to the colored intermediate layer.
While this typographical error for the paragraph citation is noted, the Examiner notes that Becerra Siabato et al. teach achieving coloration of the intermediate layer using carbon black at [0040], [0044] and [0045]. The 102 rejection over Becerra Siabato et al. in section 7 of the Office action mailed 5/13/2026 specifically pointed to [0040] to describe the structure being relied upon and pointed to [0045] for the inclusion of carbon black in the intermediate layer
Therefore, sufficient notice was provided on how the previous claim 20 was being rejected in the statement of grounds of rejection in section 9 of the previous Office action, i.e. claims 11 and 20 are rejected under 35 USC 103 as being unpatentable over Becerra Siabato et al. (EP 2993055), in combination with the fact that the body of that rejection referred back to the rejection of claim 1 in section 7 of the Office action mailed 5/13/2026 for the other limitations of the claim.
Applicants argue on pages 9-10 of their Remarks that there is a teaching away in Becerra Siabato et al. because they teach carbon black at 30 to 40 wt% of the colored intermediate layer, and therefore one of ordinary skill would not adjust the amount of carbon black to be 2 to 19 wt% of the color layer.
The Examiner respectfully disagrees and notes that the weight percentage of carbon black at [0044] is disclosed as “preferably in a range of 30 to 40 wt%”. A preferable range does not disparage other amounts of carbon black, and therefore Becerra Siabato et al. do not teach away from the claimed amount of carbon black. One of ordinary skill would adjust the amount of carbon black in the colored intermediate layer to get the desired coloration/shade for the final product depending upon its intended use.
One of ordinary skill is not an automaton and would know that if lower amounts of carbon black are added to the colored intermediate layer, this would lead to a lighter gray coloration when mixed with the inorganic white pigments that are in the layer [0045]; furthermore, as more carbon black is added to the intermediate layer, the coloration would progress through the grayscale and approach a dark intense black coloration.
Applicants argue on pages 9-10 of their Remarks that one of ordinary skill is not motivated to modify the carbon black levels to satisfy the recycling or deinking requirement claimed; further, there is no suggestion that the modification would be successful.
The Examiner respectfully disagrees and notes that his rejection is not to make the heat-sensitive recording material possess the functional limitations of recycling, the deinking requirement or that the pigment can be removed in a waste paper cycle; rather, the rejection is to modify the amount of carbon black in the layer to achieve a desired coloration/shade for the final product depending upon its intended use. Adjusting the amount of colorant in a layer to achieve a desired coloration will clearly lead to predictable results and have a reasonable expectation of success in forming a working heat-sensitive recording material.
Given the fact that the obviousness rejection has established a heat-sensitive recording material that is identical to that claimed, the resultant heat-sensitive recording material rendered obvious above will intrinsically have the pigment be removable in a waste paper cycle, the residual moisture, the surface whiteness and the recyclability criteria, and will meet the assessment scores after processing according to the INGEDE method 11 as claimed.
As such, the Examiner has provided “a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Please see MPEP 2112(IV) and Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). It has also been held that “[w]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” Please see MPEP 2112.01(I) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicants have not provided a showing or evidence to overcome the Examiner's prima facie case.
Applicants argue on page 11 that Boxhammer et al. does not teach the amount of carbon black in the colored interlayer, and therefore there is no motivation to modify the carbon black levels to satisfy the recycling or deinking requirements.
For the same reasons as noted above with Becerra Siabato et al., the Examiner respectfully disagrees and notes that his rejection is not to make the heat-sensitive recording material possess the functional limitations of recycling, the deinking requirement or that the pigment can be removed in a waste paper cycle; rather, the rejection is to modify the amount of carbon black in the layer to achieve a desired coloration/shade for the final product depending upon its intended use. Adjusting the amount of colorant in a layer to achieve a desired coloration/shade will clearly lead to predictable results and have a reasonable expectation of success in forming a working heat-sensitive recording material.
Given the fact that the obviousness rejection has established a heat-sensitive recording material that is identical to that claimed, the resultant heat-sensitive recording material rendered obvious above will intrinsically have the pigment be removable in a waste paper cycle, the residual moisture, the surface whiteness and the recyclability criteria, and will meet the assessment scores after processing according to the INGEDE method 11 as claimed.
As such, the Examiner has provided “a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Please see MPEP 2112(IV) and Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). It has also been held that “[w]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” Please see MPEP 2112.01(I) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicants have not provided a showing or evidence to overcome the Examiner's prima facie case.
Conclusion
Applicants’ 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.
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.
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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.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
