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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The substitute specification filed 2/27/2025 has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because:
There is no marked-up copy of the substitute specification showing changes. Also, the formulae at [0028], [0036], [0052], [0069], [0070], [0172], [0214] and [0215] are incomplete as they appear to be missing bonds in the structures.
The abstract of the disclosure is objected to because it is not a single paragraph and the description of what the substituents are is not grammatically correct due to the multiple periods and the parenthesis in the last five lines of the claim. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities:
The formulae at the places noted in section 3 above and any other formula that was missing bonds in the original specification, e.g. [0006], [0031], etc., are objected to for the same reasons.
In [0172], the phrase “each of a benzene ring having Y11 and Y12 and/or a benzene ring having Y12 and Y13 in the formula (1) is a weak acid” is objected to as there is no benzene ring that has the substituents Y12 and Y13 on it. Also, the syntax of “each…and/or” does not make sense together when it is the “or” option.
Appropriate correction is required.
Claim Objections
Claims 19, 26-29 and 34 are objected to because of the following informalities:
In claims 19, 26-29 and 34, the formulae in each of these are faded or incomplete, such that they are not readable, i.e. the superscripts or subscripts in each formula and the missing bonds in formulae (3)-(6) and (a).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 19-36 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for a specific subset of compounds having -OH on each terminal benzene ring and the hydrogen bonding Z groups of claim 21, does not reasonably provide enablement for a compound having any substituent as the Y groups and any hydrogen bonding group as the Z groups, e.g. ether, ester or carbonyls. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 19-36 can be used as claimed and whether claims 19-36 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 19-36, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 19-36 read on any substituent for the Y groups and any hydrogen bonding groups, such as ethers, esters or carbonyls, while the specification discloses using specific developer compounds having an -OH as one of the Y groups and only a urea group as the Z substituents.
(b) There is no direction or guidance presented for forming a working recording layer with developer compounds where the Y groups can by any monovalent substituent on the terminal benzene groups and having hydrogen bonding groups other than those of claim 21, e.g. ethers, esters or carbonyls.
(c) There is an absence of working examples concerning developer compounds having no -OH groups on the terminal benzene groups and having hydrogen bonding groups other than urea, e.g. ethers, esters or carbonyls.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 19-36.
Claims 25-33 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 25, the limitations of “a benzene ring having Y11 and Y12 and a benzene ring having Y12 and Y13 in the formula (1) is a weak acid” renders the claim indefinite for multiple reasons. First, saying “a benzene” does not make sense as the specific rings referred to have been established in claim 19, so it is unclear if further benzene rings are being implied. Second, the limitations of the “benzene ring having Y12 and Y13” lacks antecedent basis and does not make sense as there is no such ring having those substituents in claim 19. The rejection can be overcome by changing the limitations to “the benzene ring having Y11 and Y12 and the benzene ring having Y13 and Y14 in the formula (1) is a weak acid” which is how the claim will be interpreted.
In each of claims 26-29, the phrase “* represents a bonding portion” renders the claims indefinite because it is unclear to what this is bonding to. The rejection can be overcome by clarifying that the *’s are bonding to Z11 and Z12, which is how the claim will be interpreted.
In claim 30, the phrase “the coloring compound included in each of the plurality of recording layers is capable of exhibiting a different hue in a colored state” renders the claim indefinite because if the plurality of recording layers has the same coloring compound, then it cannot exhibit different colors. This rejection can be overcome by changing the phrase to “the plurality of recording layers are capable of exhibiting different hues in a colored state” which is how the claim will be interpreted.
In claims 32 and 33, the phrase “plurality of types of capsules” renders the claims indefinite. It has been held that “[t]he addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955); likewise, the phrase “ZSM-5-type aluminosilicate zeolites” was held to be indefinite because it was unclear what “type” was intended to convey Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986).” Please see MPEP 2173.05(b). This rejection can be overcome by changing the phrase to a “plurality of different capsules”, which is how the claim will be interpreted.
In claim 32, the phrase “each of the plurality of types of capsules includes the coloring compound and the color developer, and the coloring compound included in each of the plurality of types of capsules is capable of exhibiting a different hue in a colored state” renders the claim indefinite because if the plurality of capsules has the same coloring compound as implied by the claim, then it cannot exhibit different colors. Similarly, since the claim is implying different coloring compounds, it is also unclear if “the color developer” has to be the same compound or can be different compounds. This rejection can be overcome by changing the phrase to “each of the plurality of different capsules is capable of exhibiting a different hue in a colored state” which is how the claim will be interpreted.
Claim Rejections - 35 USC § 102
Claims 19, 21-29 and 34-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takano et al. (5,656,569).
With regard to claims 19, 21-24, 26-29 and 34, Takano et al. teach a thermal recording medium having a thermal recording layer comprising a colorless or pale colored dye precursor, which reads on applicants’ coloring compound with electron-donating properties, and a color developer, which reads on applicants’ color developer with electron acceptability (col. 2, lines 42-46). The color developer can be a bisurea compound according to formula (1), wherein Takano et al. teach the specific exemplary compounds A-25 or A-55 as this material (col. 2, lines 46-65, col. 11 and col. 21). The structure of compound A-25 reads on claims 19, 21-24, 26, 28, 29 and 34 and the structure of compound A-55 reads on claims 19, 21-23, 26, 27 and 34.
With regard to claim 25, the phenolic -OH on the terminal benzene rings of A-25 and A-55 would act as a weak acid group.
With regard to claim 35, the thermal recording medium can be included in a thermal recording card (col. 36, lines 45-48).
With regard to claim 36, a booklet is defined by Merriam Webster as a little book, especially a pamphlet, wherein a pamphlet can be a single sheet of material. This means the preamble of “booklet” is merely a statement of intended use and does not breathe life and meaning to the claim, see MPEP 2111.02. The thermal recording material having the thermal recording layer on a paper substrate, which is a single sheet of material, reads on a booklet (col. 35, lines 26-28).
Claims 19-36 are rejected under 35 U.S.C. 102(a)(1/2) as being anticipated by Tejima et al. (WO 2021/187385) of which US 2023/0132486 is the US national stage application and will be used as translation.
With regard to claims 19, 21-29 and 34, Tejima et al. teach a recording medium having a recording layer that comprises color-exhibiting compounds such as leuco dyes, which reads on applicants’ coloring compound with electron-donating properties, and a color-developing agent having electron-accepting properties, which reads on applicants’ color developer [0047] and [0048]. As a specific example of a color-developing agent, they teach compounds (I-2) and (I-3) [0059]. The structure of compound (I-3) anticipates claims 19, 21-26, 28, 29 and 34 and the structure of compound (I-2) anticipates claims 19, 21-23, 25-27 and 34. The carboxylic acid group on the terminal benzene rings leads them to be weak acids.
With regard to claim 20, the recording layer can include a polycarbonate binder [0074].
With regard to claims 30 and 31, Tejima et al. teach that the recording layer can include a first to nth layer containing color-exhibiting compounds having color development hues different from each other [0076]. There may be a photothermal conversion material in each of the recording layers that absorb light in different wavelength ranges, which read on applicants’ limitations that the agents have different absorption wavelength peaks [0078].
With regard to claims 32 and 33, Tejima et al. teach that the recording layer can include microcapsules having color-exhibiting compounds having different colors from each other, which reads on applicants’ plurality of different capsules with different hues [0091]. There may be a photothermal conversion material in each of the microcapsules that absorb light in different wavelength ranges, which read on applicants’ limitations that the agents have different absorption wavelength peaks [0091].
With regard to claim 35, the recording medium can be applied to a card [0102].
With regard to claim 36, a booklet is defined by Merriam Webster as a little book, especially a pamphlet, wherein a pamphlet can be a single sheet of material. This means the preamble of “booklet” is merely a statement of intended use and does not breathe life and meaning to the claim, see MPEP 2111.02. The recording medium material having the recording layer on a paper substrate, which is a single sheet of material, reads on a booklet [0043].
Claim Rejections - 35 USC § 103
Claims 30 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Takano et al. (5,656,569) in view of Kurihara et al. (JP 2005-131909), machine translation included.
Takano et al. teach all of the limitations of claim 19 above. They also teach that the thermal recording material can color by the action of laser light and may have an optical absorbent to convert light to heat (col. 35, lines 46-60); however, they do not specifically teach multiple recording layers with different hues when colored.
Kurihara et al. teach a recording medium having a plurality of recording layers having coloring compounds of different color tones, which reads on applicants’ different hues in the colored state, and a color developer [0017], [0046] and [0047]. The recording layers can contain a light-to-heat conversion material that absorb infrared rays having different wavelengths for laser recording, which reads on applicants’ photothermal conversion material, wherein the light absorption bands of the light-to-heat conversion materials are narrow and do not overlap each other, which reads on applicants’ limitations of different absorption wavelength peaks [0048] and [0056].
Since Takano et al. and Kurihara et al. are both drawn to thermosensitive recording media that are recordable using laser light, it would have been obvious to one having ordinary skill in the art to have made the recording medium of Takano et al. be a full color recording medium with plural recording layers having coloring compounds of different colors and light-to-heat conversion materials that absorb infrared rays having different wavelengths for laser recording. The rationale for doing this is to allow for color printing.
Claims 30-33 are rejected under 35 U.S.C. 103 as being unpatentable over Takano et al. (5,656,569) in view of Shuto et al. (WO 2020/003868), of which US 2021/0316563 is the US national stage entry and will be used as a translation.
Takano et al. teach all of the limitations of claim 19 above. They also teach that the thermal recording material can color by the action of laser light and may have an optical absorbent to convert light to heat (col. 35, lines 46-60); however, they do not specifically teach multiple recording layers with different hues when colored or a recording layer having microcapsules with different hues when colored.
Shuto et al. teach a recording medium of having a plurality of recording layers having coloring compounds that will be colored in different colors from each other, which reads on applicants’ different hues in the colored state, and a color developer [0071] and [0072]. The recording layers can also contain a photothermal conversion material that absorb rays having different wavelength regions for laser recording, which reads on applicants’ limitations of different absorption wavelength peaks [0071] and [0072]. They also teach a recording layer having a mixture of microcapsules having coloring compounds that will be colored in different colors from each other and photothermal conversion materials having absorption wavelengths different from each other [0085] and [0086].
Since Takano et al. and Shuto et al. are both drawn to thermosensitive recording media that are recordable using laser light, it would have been obvious to one having ordinary skill in the art to have made the recording medium of Takano et al. be a full color recording medium with either plural recording layers having coloring compounds of different colors or with plural different microcapsules of different colors and photothermal conversion materials that absorb infrared rays having different wavelengths for laser recording. The rationale for doing this is to allow for color printing.
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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