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.
Claim Objections
Claims 1-4 and 8-15 are objected to because of the following informalities:
In claims 1, 2 and 8-15, the phrase “the diffusion reduction layer” is objected to grammatically (eleven instances). This objection can be overcome by changing the phrase to “the at least one diffusion reduction layer” which is how the claims will be interpreted.
In claim 3 and 4, the phrase “wherein average peel strength” is objected to grammatically. This objection can be overcome by changing the phrase to “wherein an average peel strength” which is how the claim will be interpreted.
In claim 13, the phrase “contains amorphous resin” is objected to grammatically. This objection can be overcome by changing the phrase to “contains an amorphous resin” which is how the claim will be interpreted.
In claim 14, the phrase “contains crystalline resin” is objected to grammatically. This objection can be overcome by changing the phrase to “contains a crystalline resin” which is how the claim will be interpreted.
In claim 15, the phrase “contains UV” is objected to grammatically. This objection can be overcome by changing the phrase to “contains a UV” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-17 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 1, the limitations that a diffusion reduction layer is provided “between the coloring layers adjacent to each other” renders the claim indefinite for multiple reasons. First, this limitation lacks antecedent basis in the claims as it has not been established that two of the plurality of coloring layers are adjacent to each other. Second, once a diffusion reduction layer is provided between coloring layers, then the coloring layers cannot be said to be “adjacent” to each other. This rejection can be overcome by changing line 2 of claim 1 to include “a plurality of coloring layers including a first coloring layer and a second coloring layer” and then state that the at least one diffusion layer is provided “between the first coloring layer and the second coloring layer”.
In claim 1 on lines 8-9, the limitations of “the coloring compound between the coloring layers adjacent to each other” lack antecedent basis in the claims because there are plural coloring layers each with a coloring compound, and therefore it is unclear if this limitation is referring to one or multiple of the plural coloring layers. The rejection can be overcome by making the change to introduce “a first coloring layer and a second coloring layer” as noted above and then changing the phrase on lines 8-9 to “the coloring compound from the first coloring layer to the second coloring layer” which is how the claim will be interpreted.
In claim 2, the limitations of “the binder layer is provided between the diffusion reduction layer and the coloring layers” renders the claim indefinite as it unclear if this requiring one binder layer between the diffusion reduction layer and each of “the coloring layers” on either side of the diffusion reduction layer, or if a single binder layer would read on these limitations. This rejection can be overcome by making the changes to claim 1 noted above and changing the phrase in claim 2 to “the at least one binder layer is provided between the at least one diffusion reduction layer and the first coloring layer” which is how the claim will be interpreted.
In claim 3, the limitations of “the respective layers of the recording medium” lack antecedent basis in the claims. It is unclear if this is only referring to only the coloring layers, the peel strength between a diffusion reduction layer and a coloring layer or if this is referring to the recording medium as a whole. The specification at [0065] does not make clear what layers of the recording medium are being referred to as this is referring to the laminate.
In claim 4, the limitations of “the coloring layers adjacent to each other” renders the claim indefinite for the same reasons as noted with claim 1. It is unclear how there can be a peel strength between coloring layers when there are other layers, e.g. diffusion reduction and/or binder layer, between the various coloring layers.
In claim 12, the limitation that the “diffusion reduction layer has a glass transition temperature” as a resin or a polymer has a glass transition temperature and not a layer per se.
In claim 15, the phrase “contains UV-curable resin” renders the claim indefinite as it is unclear in light of [0048] of the specification whether the layer should be a cured layer or a curable composition. This rejection can be overcome by changing the phrase to “contains a UV-cured resin” which is how the claim will be interpreted.
Claim Rejections - 35 USC § 102
Claims 1, 3, 4, 6-8 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shuto et al. (WO 2020/003868) of which US 12,077,009 is the national stage entry and will be used as a translation.
With regard to claims 1, 8 and 16, Shuto et al. teach the recording medium of Figure 4, which reads on applicants’ laminate (col. 12, lines 5-18). Shuto et al. teach that the recording medium has a support base 11, which reads on applicants’ base material, the recording layer 21, which reads on applicants’ recording medium, the first layer 22, which reads on applicants’ first coloring layer, the heat-insulating layer 25, which reads on applicants’ diffusion reduction layer, the second layer 23, which reads on applicants’ second coloring layer, and the UV barrier layer 13, which reads on applicants’ overlay layer (col. 12, lines 8-18 and col. 13, lines 57-60). The first and second layers have coloring compounds, which reads on applicants’ coloring compound that is electron-donative, color developing agents, which read on applicants’ developer that is electron-acceptive, and a macromolecular material, which reads on applicants’ matrix resin (col. 12, lines 23-37). The heat-insulating layer 25 has a typical macromolecular material having light transmissivity and is not an adhesive layer, which reads on the diffusion reduction layer being a resin layer that will inherently have no tackiness in the conditions claimed (col. 13, lines 21-38).
With regard to claims 3, 4, 6 and 7, given the fact that the structure and materials are identical to that claimed and preferential disclosed in the specification, the recording layer 21 of Shuto et al. will inherently have the average peel strengths of claims 3 and 4 and the diffusion reduction layer will inherently reduce diffuse of coloring compound at the heating ranges claimed.
Claim Rejections - 35 USC § 103
Claims 2, 5 and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Shuto et al. (WO 2020/003868) of which US 12,077,009 is the national stage entry and will be used as a translation, as evidenced by “PMMA” (https://www.princeton.edu/~maelabs/mae324/glos324/pmma.htm#:~:text=PMMA%20has%20a%20Young%27s%20modulus,is%201.2%20Mg%2Fm3.).
With regard to claim 2, this claim represents a mere duplication of the heat-insulating layer 25 of Shuto 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 have merely duplicated the heat-insulating layer 25 of Shuto et al. to be two layers to make the heat-insulating layer 25 have a larger heat-insulating effect. The first heat-insulating layer directly on the first layer 22 reads on the binder layer and the second heat-insulating layer would read on applicants’ diffusion reduction layer.
With regard to claims 5, 9, 10, 12, 13 and 15, Shuto et al. teach all of the limitations of claim 1 above. They also teach that the macromolecular material of the first layer 22 and the second layer 23 can be polycarbonate or polymethyl methacrylate and the macromolecular material of the heat-insulating layer 25 can be polycarbonate or a polymethacrylic ester, wherein polymethyl methacrylate would be known as a type of polymethacrylic ester (col. 9, lines 8-15 and col. 13, lines 21-35); however, they do not teach examples using these polymers.
It would have been obvious to one having ordinary skill in the art to have made the macromolecular materials of the first layer 22, the second layer 23 and the heat-insulating layer 25 either all from polycarbonate or from polymethyl methacrylate. There would be a reasonable expectation of success in forming a recording medium as these resins are taught for the layers; furthermore, it would have been obvious to have used the same resin in all the layers to save money in the manufacture of the recording medium. Polycarbonate has a Tg of approximately 147 C, which reads on claim 12.
As evidenced by “PMMA”, when the heat-insulating layer 25 is polymethyl methacrylate it will intrinsically have a Young’s modulus of 2900 MPa. Also, PMMA is intrinsically an amorphous resin.
With specific regard to claim 15, the limitation of a “UV-cured resin” is a product-by-process limitation. It has been held that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since PMMA can be formed by UV curing monomers, it reads on applicants’ UV-cured resin.
With regard to claim 11, Shuto et al. also teach that the heat-insulating layer 25 can include porous alumina (col. 13, lines 39-46); however, they do not teach an example using this material.
It would have been obvious to one having ordinary skill in the art to have made the heat-insulating layer 25 of porous alumina. There would be a reasonable expectation of success in forming a recording medium as this inorganic material is specifically taught for the heat-insulating layer. Porous alumina will intrinsically have a pencil hardness of F or higher as it is a ceramic material.
With regard to claim 14, Shuto et al. also teach that the heat-insulating layer 25 can include starch, which is intrinsically semi-crystalline and reads on applicants’ crystalline resin (col. 13, lines 25-35); however, they do not teach an example using this polymer.
It would have been obvious to one having ordinary skill in the art to have made the macromolecular materials of the heat-insulating layer 25 all from starch. There would be a reasonable expectation of success in forming a recording medium as this resin is specifically taught for the heat-insulating layer.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Shuto et al. (WO 2020/003868) in view of Kurihara et al. (WO 2020/090369) of which US 2021/0362511 is the US national stage entry and will be used as a translation.
Shuto et al. teach all of the limitations of claim 16 above. They also teach that an adhesive may be used to bond the recording layer to the support base and an optical adhesive sheet can be used to bond the UV barrier layer to the recording layer (col. 9, lines 57-61); however, they do not specifically teach a thermal adhesive bonding the recording medium to each of the base material and the overlay layer.
Kurihara et al. teach a thermal recording medium having a recording layer 112 bonded to a support substrate 111 using an adhesive and a light-transmitting member 113 bonded to the recording layer 112 via a hot melt adhesive for protecting a surface of the recording layer [0058], [0060] and [0065].
Since Shuto et al. and Kurihara et al. are both drawn to thermal recording media having recording layers adhered to a support substrate and a protective top layer, it would have been obvious to one having ordinary skill in the art to have used the hot melt adhesive of Kurihara et al. as the adhesive between the recording layer and the support base as well as between the recording layer and the UV barrier layer of Shuto et al. The results of such a substitution would have been predictable to one having ordinary skill as these are all adhesives for thermal recording media. The rationale to use a single type of adhesive is to save money during the manufacture of the recording media.
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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