DETAILED ACTION
Response to Amendment
Applicant's amendment filed 8/17/2026 has been entered. Currently, claims 1, 2, 7 and 9-15 are pending and claims 3-6 and 8 are canceled.
Claim Rejections - 35 USC § 103
Claims 1, 2 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kocak et al. (US 2021/0060994) in view of Sakamoto et al. (WO 2020/004558), of which US 2021/0268821 is the US national stage entry and will be used as a translation.
With regard to claims 1, 2, 12 and 14, Kocak et al. teach a recording sheet including a paper support, an undercoat layer comprising organic hollow particles, a binder and an oil absorbing pigment, which reads on applicants’ inorganic pigment I, and a recording composition layer that includes a color forming compound, which reads on applicants’ leuco dye, and a combination of color developers that may be a combination of 5-(N-3-methylphenyl-sulfonylamido)-(N′,N″-bis-(3-methylphenyl)-isophthalic acid diamide, which reads on applicants’ stability improver, with NKK-1304, which reads on applicants’ developer N-[2-(3-phenylureido)phenyl]benzenesulfonamide [0008], [0022] and [0185]. They also teach that the binder in the undercoat layer may be styrene-butadiene latex [0187]; however, they do not teach a specific example with the combination of materials, the hollow particles or the glass transition temperature claimed.
It would have been obvious to one having ordinary skill in the art to have made the undercoat layer with a combination of organic hollow particles, a binder and an oil absorbing pigment, and then to have made the heat sensitive recording layer be a combination of 5-(N-3-methylphenyl-sulfonylamido)-(N′,N″-bis-(3-methylphenyl)-isophthalic acid diamide with NKK-1304. The combination of these materials is clearly suggested in the reference and there would be a reasonable expectation of success in forming a working thermal recording sheet.
Sakamoto et al. teach an undercoat layer for a heat-sensitive recording material that can comprise a hollow plastic particle, an oil-absorbing pigment and a styrene-butadiene latex [0024]-[0032]. The binder can have a glass transition temperature of -10 C or less, a hollow ratio of the hollow plastic particles of 50 to 99% and an average particle diameter of 6 to 9 microns [0025] and [0032].
Since Kocak et al. and Sakamoto et al. are both drawn to undercoat layers for heat-sensitive recording media, it would have been obvious to one having ordinary skill in the art to have substituted the undercoat layer of Kocak et al. with the undercoat layer of Sakamoto et al. The results of such a substitution would have been predictable to one having ordinary skill as these are both undercoat layers having the same types of materials therein. The rationale to use the undercoat layer of Sakamoto et al. is that it has enhanced cushioning properties and increases recording sensitivity [0024] and [0032].
With specific regard to claims 1 and 12, given that the average particle diameter of the hollow plastic particle is within the range claimed and the particles are for the same purpose, it would have been obvious to one having ordinary skill to have made the average particle size of the hollow plastic particle about 9 microns and to have made the distribution of the particle diameters any amount, including from 2 to about 17 microns, absent evidence of unexpected results. The resulting particles would then have the maximum diameter, the D100/D50 ratio and the volume % of <2 micron particles claimed.
With regard to claim 13, the hollow ratio of Sakamoto et al. overlaps with the claimed hollow ratio, and therefore 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).
With regard to claim 15, there may be an adhesive layer on a rear side of the support, which reads on the adhesive layer claimed [0192].
Claims 1, 7, 9-11, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kocak et al. (US 2021/0060994) as evidenced by “Socal P3” (https://www.coatino.com/products/fex00000045/formulations).
With regard to claims 1, 7-11 and 15, Kocak et al. teach a recording sheet including a paper support, an undercoat layer comprising organic hollow particles, a binder and an oil absorbing pigment, which reads on applicants’ inorganic pigment I, and a recording composition layer that includes a color forming compound, which reads on applicants’ leuco dye, and a combination of color developers that may include 5-(N-3-methylphenyl-sulfonylamido)-(N′,N″-bis-(3-methylphenyl)-isophthalic acid diamide, which reads on applicants’ stability improver [0008], [0022] and [0185].
Kocak et al. also teach that the recording composition layer can have a filler of precipitated calcium carbonate, i.e. Socal P3, which reads on applicants’ inorganic pigment II, and other color developers, such as the cross-linked diphenylsulfone of the formula at the end of [0156], which reads on the formula (3) of claim 11 [0124]-[0126], [0156] and [0228]. As evidenced by “Socal P3”, this material has an oil absorption of 33g/100g, which given the density of linseed oil of 0.93 g/mL, means this has an oil absorption of ~35.5 mL/100g. The oil absorbing pigment in the undercoat layer can be calcined kaolin, which reads on clay [0185]; however, they do not teach a specific example with all of these materials.
It would have been obvious to one having ordinary skill in the art to have made the undercoat layer with a combination of organic hollow particles, a binder and calcined kaolin, and then to have made the heat sensitive recording layer be a combination of 5-(N-3-methylphenyl-sulfonylamido)-(N′,N″-bis-(3-methylphenyl)-isophthalic acid diamide with precipitated calcium carbonate and the cross-linked diphenylsulfone. The combination of these materials is clearly suggested in the reference and there would be a reasonable expectation of success in forming a working thermal recording sheet. The calcined kaolin of the undercoat layer will intrinsically possess the oil absorption claimed in claim 9 as this is the same material used in applicants’ examples.
With regard to claim 13, Kocak et al. teach that the hollow particles have a void ratio of from 50 to about 99%, which overlaps with the hollow ratio claimed [0186].
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 one having ordinary skill in the art to have made the hollow particles have any void/hollow ratio, including from 80 to 98% as claimed.
With regard to claim 15, there may be an adhesive layer on a rear side of the support, which reads on the adhesive layer claimed [0192].
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kocak et al. (US 2021/0060994) in view of Sakamoto et al. (WO 2020/004558), of which US 2021/0268821 is the US national stage entry and will be used as a translation.
Kocak et al. render obvious all of the limitations of claim 1 above. They also teach that the binder in the undercoat layer may be styrene-butadiene latex [0187]; however, they do not teach the specific diameters of the hollow particles and glass transition temperature claimed.
Sakamoto et al. teach an undercoat layer for a heat-sensitive recording material that can comprise a hollow plastic particle, an oil-absorbing pigment and a styrene-butadiene latex [0024]-[0032]. The binder can have a glass transition temperature of -10 C or less, a hollow ratio of the hollow plastic particles of 50 to 99% and an average particle diameter of 6 to 9 microns [0025] and [0032].
Since Kocak et al. and Sakamoto et al. are both drawn to undercoat layers for heat-sensitive recording media, it would have been obvious to one having ordinary skill in the art to have substituted the undercoat layer of Kocak et al. with the undercoat layer of Sakamoto et al. The results of such a substitution would have been predictable to one having ordinary skill as these are both undercoat layers having the same types of materials therein. The rationale to use the undercoat layer of Sakamoto et al. is that it has enhanced cushioning properties and increases recording sensitivity [0024] and [0032].
With specific regard to claim 12, given that the average particle diameter is within the range claimed and the particles are for the same purpose, it would have been obvious to one having ordinary skill to have made the average particle size of the hollow plastic particle about 9 microns and to have made the distribution of the particle diameters any amount, including from 2 to about 17 microns, absent evidence of unexpected results. The resulting particles would then have the maximum diameter, the D100/D50 ratio and the volume % of <2 micron particles claimed.
With regard to claim 13, the hollow ratio of Sakamoto et al. overlaps with the claimed hollow ratio, and therefore 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).
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 and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/854259 (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, an undercoat layer having the same materials claimed and a heat-sensitive recording layer. The first developer of copending claim 8 reads on the developer or stability improver of pending claims 1 and 2. The first developer of copending claim 7 reads on the other developer of pending claim 1; however, the copending claims do not teach the combination of materials of the pending claims.
It would have been obvious to one having ordinary skill in the art to have combined the 5-(N-3-methylphenyl-sulfonylamido)-(N′,N″-bis-(3-methylphenyl)-isophthalic acid diamide as the first developer of copending claim 1 or to have combined multiple first developers, including the one in copending claim 7, as it is prima facie obvious to combine compositions useful for the same purpose as a developer to form a new composition also useful as a developer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 7 and 9-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/855932 (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, an undercoat layer that can have an inorganic pigment I and a heat-sensitive recording layer that can have an inorganic pigment II. The sulfonyl urea compound of copending formula (1) reads on pending claim 11 and the second developer of copending claim 1 reads on the developer or stability improver of pending claims 1 and 2 and the other developer of pending claim 1; however, the copending claims do not teach the combination of materials of the pending claims.
It would have been obvious to one having ordinary skill in the art to have combined the 5-(N-3-methylphenyl-sulfonylamido)-(N′,N″-bis-(3-methylphenyl)-isophthalic acid diamide as the second developer of copending claim 1 or to have combined both second developers of copending claim 1 with the inorganic pigments I and II. It is prima facie obvious to combine compositions useful for the same purpose as a developer to form a new composition also useful as a developer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see Remarks, filed 8/17/2026, with respect to the objection to the specification, the claim objections and the 112 rejections have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicants’ arguments filed 8/17/2026 have been fully considered but they are not persuasive.
Applicants argue that there are unexpected results for each of option (A) and option (B) that overcome the prior art rejections.
The Examiner respectfully disagrees and notes that the claims are not commensurate in scope with the evidence provided for multiple reasons.
As to option (A), at least the hollow particles’ average diameter and volume percentage, wherein applicants note the criticality of this when they compare examples A13 and A18, the lack of a protective layer having a binder and pigment, wherein every example has a protective layer and one of ordinary skill would expect the protective layer to affect the resistances in Table 1, the amount of the stability improver in the layer, which is clearly shown to affect the resistances when one looks to examples A1 through A5, and the type of binder in the undercoat layer, which is tested in examples A13, A15 and A16 and is shown to have an effect on at least the recording density are not commensurate in scope with the evidence provided.
As to option (B), at least the oil absorption range of the pigment of the recording layer, the lack of a protective layer having a binder and pigment, wherein every example has a protective layer and one of ordinary skill would expect the protective layer to affect the resistances in Table 1, the type hollow particles used, wherein examples B1 and B9 show that changing this can lead to a sample having low sensitivity and problematic in practical use, and the type of binder in the undercoat layer, which is tested in examples B1, B5 and B6 and is shown to have an effect on at least the recording density are not commensurate in scope with the evidence provided
Applicants state that they are deferring over the provisional double patenting rejections at this time.
The Examiner acknowledges applicants’ position; however, given that the rejections have not been overcome, the rejections have been repeated in this Office action.
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.
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
