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 1-13 and 19-21, in the reply filed on 3/20/2026 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Claims 14-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.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 3/20/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 12, 19 and 21 are objected to because of the following informalities:
In claim 12 on lines 6-7, the phrase “in that the color layer is both a color layer and an insulating layer, wherein the color layer, which is also an insulating layer, has” is objected to grammatically. This objection can be overcome by changing the phrase to “the color layer is also an insulating layer and has” which is how the claim will be interpreted.
In claim 19, the phrase “no individual point is negative” is objected to grammatically. This objection can be overcome by changing the phrase to “no individual point value is negative” which is how the claim will be interpreted.
In claim 21 on lines 6-7, the phrase “and is both a color layer and an insulating layer” is objected to grammatically. This objection can be overcome by changing the phrase to “and the color layer is also an insulating layer” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-13 and 19-21 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 claims 1, 11, 12 and 21, the phrase “web-like carrier material” renders the claim indefinite. Please note that the word "like” in this instance (i.e. web-like) has the same effect as the word “type” in that extends the scope of the expression so as to render it indefinite. It is unclear what other materials other than webs are to be considered “web-like”. Please see MPEP 2173.05(b). This rejection can be overcome by changing the phrase to a “web of carrier material”.
In claims 1-4, 6, 20 and 21, the limitations of “at least one removable dye” renders the claim indefinite based on how this term is explained in the specification (pg 9) and the materials that are included within this concept in claims 4 and 20. Saying that the dye is selected from “carbon black pigments”, “alternative carbon black pigments”, “pigment dyes”, “iron oxide”, “Fe3O4”, “activated carbon”, “iron gall ink”, “graphite”, mica”, “dark pigments” and “sepia black” render the claims indefinite as all of these materials are pigments, and pigments cannot be considered a dye. The ambiguous scope of the term “removable dye” makes the metes and bounds of the claim unclear. For purposes of examination, if the color layer contains any pigment and/or dye (pg. 9, lines 5-8), it will be held as reading on the removable dye.
In claims 1, 3, 4 and 20, the limitations of “more particularly…” (six instances total) represents broad/narrow limitation in the same claim, which render the claims indefinite. The rejection can be overcome by deleting the narrower limitations that appear after the “more particularly”, which is how the claims will be interpreted.
In claim 1 on line 9, claim 20 on line 2 and claim 21 on line 3, the phrase “the waste paper cycle” lacks antecedent basis in the claim. It is unclear what is the waste paper cycle. The rejection can be overcome by changing the phrase in claim 1 to “a waste paper cycle”.
In claim 2 on line 9, the limitations in parenthesis “(ink elimination)” render the claim indefinite as it is unclear whether the limitations are required to meet the claim. Also, it is unclear whether the score is to a “dye elimination” or an “ink elimination” and these two terms would appear to have a different scope. For purpose of examination, the claims will be interpreted as being drawn to ink elimination because of the “IE” abbreviation.
In claim 3, the phrase “selected from the group comprising…and/or” renders the claim indefinite as this is an open Markush group. It is unclear what the members of the Markush group are. This rejection can be overcome by changing the phrase to “selected from the group consisting of…and” which is how the claim will be interpreted.
In claim 4, the phrase “selected from the group comprising…and/or printing inks…and/or mixtures thereof” renders the claim indefinite as this is an open Markush group. It is unclear what the members of the Markush group are. This rejection can be overcome by changing the phrase to “selected from the group consisting of…printing inks…and mixtures thereof” which is how the claim will be interpreted.
In claim 4 on line 6, the phrase “alternative carbon black pigments preferably with different particle sizes” represents broad/narrow limitation in the same claim, which render the claims indefinite. Also, the term “alternative” is a subjective term as it is unclear to what these pigments are considered alternatives or what structure makes them alternative to the previously mentioned carbon black.
In claim 4, the phrase “such as iron gall ink (Iron (III) gallate)” renders the claim indefinite as “such as” is exemplary language that makes it unclear whether these limitations are required to meet the claim. It is also unclear whether the limitations in parenthesis are required to meet the claim.
In claim 4, the phrase “bio-based/food dyes” renders the claim indefinite as these are different concepts and it unclear if the slash means they are being treated as equivalents or two different Markush group members.
In claim 4, the phrase “such as sepia black, caramel coloring or based on hydrothermally treated lignin” renders the claim indefinite as “such as” is exemplary language that makes it unclear whether these limitations are required to meet the claim and the “or” makes the Markush group of the claim unclear as it would be an open group.
In claim 4, the phrase “printing inks for coloring (offset, (UV) flexo inks)” renders the claim indefinite as this is a broad/narrow limitation in the same claim as this concept is broader than a species of a dye. It is unclear if the printing ink would even require a dye, and therefore the metes and bounds of the Markush group are unclear. It is also unclear whether the limitations in parenthesis are required to meet the claim.
In claim 6, the phrase “the binder” lacks antecedent basis in the claim. This rejection can be overcome by changing the dependency of this claim to be from claim 5, which is how the claim will be interpreted.
In claim 11, the phrase “the respective underlying layer” lacks antecedent basis in the claim. It is unclear if the carrier material is to be considered a layer or if this is only referring to the color layer and the heat-sensitive layer. Also, in the case of this only referring to the color layer and the heat-sensitive layer, it is unclear if this is requiring a further layer between the carrier material and the color layer.
In claim 13 on line 5, the test name in parenthesis renders the claim indefinite as it is unclear if these test limitations are required in the claim. The rejection can be overcome by removing the parenthesis, which is how the claim will be interpreted.
In claim 13 on line 6, the phrase “the addition of 1% heat-sensitive recording material” lacks antecedent basis in the claim. It is unclear to what the 1% is relative and on what units this is being measured.
In claim 13 on lines 6-7 and 12-13, the phrase “the light reflectance value after flotation” (two instances) lacks antecedent basis in the claim. It is unclear what light reflectance value is being measured, e.g. the initial mixture, the copy paper or the heat-sensitive recording material, and it is unclear what is floating.
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.
In claim 13 on lines 8 and 14, the phrase “the floated initial mixture” (two instances) lacks antecedent basis in the claim. It is unclear if this is the same as the “initial mixture” or if something was done to it to float it. Also, it is unclear if the phrase on line 14 is referring to the “initial mixture” of option ‘a’ or the “initial waste paper mixture” of option ‘b’.
In claim 13 on line 5, the phrase in parenthesis, i.e. (offset, uncoated), renders the claim indefinite as it is unclear if these limitations are required in the claim, and if one applies to the newspaper and the other to the magazines. The rejection can be overcome by removing the parenthesis, which is how the claim will be interpreted.
In claim 13 on line 12, the phrase “the addition of 5% heat-sensitive recording material” lacks antecedent basis in the claim. It is unclear to what the 5% is relative and on what units this is being measured.
In claim 20, the phrase “selected from the group comprising…organic and/or water insoluble disperse dyes…or based on hydrothermally treated lignin…and/or mixtures thereof” renders the claim indefinite as this is an open Markush group. It is unclear what the members of the Markush group are. This rejection can be overcome by changing the phrase to “selected from the group consisting of… organic insoluble disperse dyes… water insoluble disperse dyes…hydrothermally treated lignin…and mixtures thereof” which is how the claim will be interpreted.
In claim 20, the phrase “alternative carbon black pigments with different particle sizes” render the claims indefinite as the term “alternative” is a subjective term as it is unclear to what these pigments are considered alternatives or what structure makes them alternative to the previously mentioned carbon black.
In claim 20, the phrase “iron gall ink (Iron (III) gallate)” renders the claim indefinite as it is also unclear whether the limitations in parenthesis are required to meet the claim.
In claim 20, the phrase “(UV) flexo inks” render the claim indefinite it is unclear if the flexo ink would even require a dye, and therefore the metes and bounds of the Markush group are unclear. It is also unclear whether the limitations in parenthesis are required to meet the claim.
In claim 21, the phrase “the binder” lacks antecedent basis in the claim. This rejection can be overcome by changing the dependency of this claim to be from claim 5, which is how the claim will be interpreted.
Claim Rejections - 35 USC § 102
Claims 1-10, 12, 13, 19 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Becerra Siabato et al. (EP 2993055), machine translation included.
With regard to claims 1 and 3-8, 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 and/or dyes, which read on applicants’ removable dye set in a binder [0039] and [0045]. Carbon black is hydrophobic or can be made hydrophobic by chemical modification.
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 and preferentially disclosed, the heat-sensitive recording material will inherently 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 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 1-10, 13 and 19 are rejected under 35 U.S.C. 102(a)(1/2) as being anticipated by Boxhammer et al. (US 2022/0055389).
With regard to claims 1 and 3-8, 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 set in a binder [0169]. Carbon black is hydrophobic or can be made hydrophobic by chemical modification.
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 and preferentially disclosed, the heat-sensitive recording material will inherently meet the assessment scores after processing according to the INGEDE method 11, the residual moisture, the surface whiteness and the recyclability criteria claimed.
Claim Rejections - 35 USC § 103
Claims 11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Becerra Siabato et al. (EP 2993055), machine translation included.
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 claim 20, Becerra Siabato et al. teach all of the limitations of claim 1 above. They also teach that the carbon black can be added to the colored intermediate layer in such a quantity that the substrate has an intense coloration [0039]; 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 up to 19% by weight of the layer or by weight of the heat-sensitive recording material, in order to form a recording material that had the correct amount of coloration while recorded upon while not using excess materials. Please note that applicants’ claims do not limit what this weight percentage is based on.
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].
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Boxhammer et al. (US 2022/0055389).
With regard to claim 20, Boxhammer et al. teach all of the limitations of claim 1 above; 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 up to 19% by weight of the layer or by weight of the heat-sensitive recording material, in order to form a recording material that had the correct amount of coloration while recorded upon while not using excess materials. Please note that applicants’ claims do not limit what this weight percentage is based on.
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 1-13 and 19-21 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 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.
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.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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