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 12 and 24 are objected to because of the following informalities:
In claim 12, the phrase “based on waxes or fats, fatty acids or salts of fatty acids, or silicones” is objected to grammatically. The objection can be overcome by changing the phrase to “based on waxes, fats, fatty acids, salts of fatty acids, or silicones” which is how the claim will be interpreted.
In claim 24, the phrase “the color layer comprises a binder” is objected to grammatically. The objection can be overcome by changing the phrase to “the color layer further comprises a binder” which is how the claim will be interpreted.
In claim 24, the phrase “the heat-sensitive layer comprises a fatty acid” is objected to grammatically. The objection can be overcome by changing the phrase to “the heat-sensitive layer further comprises a fatty acid” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 6-8, 12, 23 and 24 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 6, the limitations of “wherein the color layer, which is also an insulating layer, preferably has a Bekk smoothness of more than 50 s, preferably more than 100 s” are broad/narrow limitations in the same claim. It is unclear if the Bekk smoothness is required to meet the claim. For purposes of examination, the Examiner will be treating the claim to the broader limitations where no Bekk smoothness is required.
In claims 7 and 8, the limitations of “the color layer, which is both a color layer and an insulating layer” lack antecedent basis in the claims. These claims depend from claim 5, which establishes that the insulating layer is a separate layer between the support and the color layer. This means the limitations of the color layer being an insulating layer lacks antecedent basis. For purposes of examination, each of these claims will be treated as being dependent from one of claims 5 or 6.
In claim 12, the phrase “selected from…and/or a rheology additive” renders the claim indefinite as this is an improper Markush group. The rejection can be overcome by changing the phrase to “selected from…and a rheology additive” which is how the claim will be interpreted.
In claim 23, the phrase “(roll)” renders the claim indefinite as it is unclear if this is required or optional in the claim. The rejection can be overcome by deleting the phrase, which is how the claim will be interpreted.
In claims 24, the limitations of “the color layer, which is both a color layer and an insulating layer” lack antecedent basis in the claims. Claim 24 previously establishes that the insulating layer is a separate layer between the support and the color layer. This means the limitations of the color layer being an insulating layer lacks antecedent basis. For purposes of examination, each option for the insulating layer will read on the claim.
Claim Rejections - 35 USC § 102
Claims 1-4, 6, 11-16 and 19-23 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 1-4, 12 and 22, Boxhammer et al. teach a heat-sensitive recording material having a carrier substrate, which reads on applicants’ support material, a colored interlayer, which reads on applicants’ color layer, a fusible layer on the colored interlayer, which reads on applicants’ heat-sensitive layer and a protective layer [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’ pigment [0169]. The protective layer in one variant is only required to have a polyvinyl alcohol and a crosslinking agent, which means no pigment is present [0091].
With regard to claim 6, Boxhammer et al. teach that the colored interlayer has kaolin [0169]. The colored interlayer Boxhammer et al. will inherently 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].
With regard to claims 11, 16 and 19-21, 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 dynamic color density, the functional limitations that the protective layer has a non-stick effect towards pressure-sensitive adhesives, the residual moisture, the surface whiteness and the contrast between locations that have become translucent versus locations that have not become translucent as claimed.
With regard to claims 13, the protective layer can have a basis weight of 0.95 to 2 g/m2, which reads on the range claimed [0095].
With regard to claims 14, 15 and 23, there may be an adhesive layer 9 on the opposite side of the carrier substrate 2, which reads on applicants’ adhesive layer [0175] and Figure 8. The adhesive layer is a self-adhesive layer, which means that it will read on applicants’ pressure-sensitive adhesive as this is what a self-adhesive layer would necessarily be made of [0103]. Boxhammer et al. also teach that the heat-sensitive recording material can be a self-adhesive label [0158].
Claims 1-4, 6, 11-13, 16 and 19-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harrison et al. (8,536,087) as evidenced by “Ropaque OP-96” (https://discover.univarsolutions.com/assets/uploads/dow/ropaque-op-96-all-purpose-pigment-tds.pdf).
With regard to claims 1, 2, 4, 12, 13 and 23, Harrison et al. teach a thermographic substrate according to example 1 having a polyester flexible substrate, which reads on applicants’ support material, a black color layer, which reads on applicants’ color layer having a pigment or dye, a white opaque thermosensitive layer, which reads on applicants’ heat-sensitive layer, and a heat resistant topcoating, which reads on applicants’ protective layer (col. 41, lines 15-67). The silica is present at 0.045 grams (= 0.15*0.3 grams) relative to 2.465 total weight of the layer, which is less than 5% by weight of the layer, i.e. = 0.045/2.465 x 100 (col. 41, lines 53-67). The dibenzyl oxalate thermal solvent reads on applicants’ heat-sensitive material and has a melting point of 80 to 82 C (col. 41, lines 40-47). The heat resistant topcoating comprises polyvinyl alcohol and has a coat weight of 1.5 g/m2 (col. 41, lines 53-58 and col. 42, lines 1-4). The thermographic substrate can be used as a receipt (col. 53, lines 55-65).
With regard to claim 3, the white opaque thermosensitive layer has Ropaque OP-96 hollow particles (col. 41, lines 35-40). As evidenced by “Ropaque OP-96”, these particles have an average particle size of 0.55 microns.
With regard to claim 6, the color layer may also contain hollow organic pigments in the alternative embodiment of Figure 2 (col. 30, lines 60-63). Since the layer contains hollow organic particles, it will inherently act as an insulating layer to some extent.
With regard to claims 11, 16 and 19-21, given the fact that the thermographic substrate of Harrison et al. is identical to that claimed and preferentially disclosed, the thermographic substrate will inherently meet the dynamic color density, the functional limitations that the protective layer has a non-stick effect towards pressure-sensitive adhesives, the residual moisture, the surface whiteness and the contrast between locations that have become translucent versus locations that have not become translucent as claimed.
With regard to claim 22, the heat resistant topcoat 700 of Figure 1 is taught to “optionally” have abrasive particles (col. 27, lines 27-29). This is sufficiently specific to teach a layer entirely made of the binder, which reads on this claim. Alternatively, the barrier layer 600 is made of a crosslinked binder and has no pigments added, which also reads on applicants’ protective layer (col. 26, lines 56-61).
Claim Rejections - 35 USC § 103
Claims 5, 9, 10, 17, 18 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 5, 9, 10, 17 and 18, Boxhammer et al. teach all of the limitations of claim 1 above. They also teach that an additional release layer 7 on the protective layer 5 [0104]. The release layer may comprise silicones, which reads on applicants’ siloxane [0104]; however, they do not specifically teach the insulating layer between the support and the color layer having the smoothness claimed or the release layer having the smoothness claimed.
Becerra Siabato et al. teach a heat-sensitive recording material having a web-shaped substrate, a first intermediate layer, a colored second 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] and [0046]. The colored intermediate layer can have a Bekk smoothness of 200 to 500 sec [0041]. The first intermediate layer can have a calcined kaolin and a binder [0042] and [0046]. The binders taught in Becerra Siabato et al. include starch.
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 combined the first intermediate layer of Becerra Siabato et al. into the layer structure of Boxhammer et al. between the carrier substrate and the colored interlayer. The results of such a combination would have been predictable; further, each of the elements would have performed the same in combination as they had separately.
It would also have been obvious to have used any binder taught in Becerra Siabato et al., including starch, as the binder of the first intermediate layer and to have smoothened the first intermediate layer to the same Bekk smoothness as the colored interlayer. The rationale is to have the layer be as smooth as possible to reduce the amount of coating material needed for further layers.
Additionally, it would have been obvious to one having ordinary skill in the art to smoothen every layer lying on the carrier substrate to the same Bekk smoothness taught in Becerra Siabato et al., including to more than 400 s to 500 s. 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, including the protective layer and the release layer, to the same degree to form the desired smoothness for preventing printer jams and lost productivity in printing.
Claims 5, 7-10, 17, 18 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Boxhammer et al. (US 2022/0055389) in view of Stalling et al. (US 2024/0278592).
The Stalling et al. reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
With regard to claims 5, 7-10, 17, 18 and 24, Boxhammer et al. teach all of the limitations of claim 1 above. They also teach that an additional release layer 7 on the protective layer 5 [0104]. The release layer may comprise silicones, which reads on applicants’ siloxane [0104]; however, they do not specifically teach the polymer particles of the heat-sensitive layer, the insulating layer between the support and the color layer having the smoothness claimed, the starch layers, the smoothness of the protective layer or the smoothness of the release layer.
Stalling et al. teach a heat-sensitive layer having scattering polymer particles with a mean particle size of 0.1 to 2.5 microns, an insulation layer comprising calcined kaolin with styrene-acrylate copolymer particles and having a Bekk smoothness of greater than 100 s, a layer comprising starch on both sides of the support material having a Bekk smoothness of greater than 50 s, a protective layer having a Bekk smoothness of 400-1500 s, and a siliconized release layer having a Bekk smoothness of greater than 400 s [0089], [0147]-[0151], [0164]-[0168], [0170] and [0197].
Since Boxhammer et al. and Stalling 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 combined the starch layers and insulation layers of Stalling et al. into the layer structure of Boxhammer et al. and it would have been obvious to have combined the scattering polymer particles into the heat-sensitive layer of Boxhammer et al. The results of such a combination would have been predictable; further, each of the elements would have performed the same in combination as they had separately.
It would have been obvious to have smoothened all of the layers in the degree taught in Stalling et al. for forming a heat-sensitive recording material having the desired smoothness for preventing printer jams and lost productivity in printing.
With specific regard to claim 24, Boxhammer et al. teach that the fusible layer has 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 colored interlayer can have carbon black in a PVA binder, which reads on applicants’ binder [0169]. The protective layer can have a polyamine crosslinker and can have a basis weight of 0.95 to 2 g/m2, which overlaps the claimed range [0089] and [0095]. Lastly, the Bekk smoothness of the protective layer has been rendered obvious above using Stalling et al., wherein this range of Stalling et al. overlaps with the range of this claim.
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 to have made the basis weight and Bekk smoothness of the protective layer any amount within the ranges of the prior art, including from 1000-1500 s and 0.95-1.5 g/m2 as claimed.
Claims 5, 7-10, 14, 15, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Harrison et al. (8,536,087) in view of Becerra Siabato et al. (EP 2993055).
Harrison et al. teach all of the limitations of claim 1 above. They also teach that the substrate 101 can be sized with starch, there can be a surface layer 200 that has a resin binder and may have clay and hollow sphere organic pigments that may be styrene-acrylic copolymers (col. 5, lines 56-59, col. 9, lines 7-10 and col. 17, lines 53-57); however, they do not specifically teach the presence of a release layer or adhesive layer and the smoothness of the insulating layer, the starch layer, the protective layer, or the release layer.
Becerra Siabato et al. teach a heat-sensitive recording material having a web-shaped substrate, a colored second 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] and [0046]. The colored intermediate layer can have a Bekk smoothness of 200 to 500 sec [0041]. The reverse side of the substrate can have a self-adhesive layer to be a label [0025]. The self-adhesive layer means that it will read on applicants’ pressure-sensitive adhesive as this is what a self-adhesive layer would necessarily be made of [0025]. There may also be a release layer on the outer protective layer of the recording material formed of silicone oil, which reads on applicants’ siloxane of a siliconized release layer
Since Harrison 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 combined the adhesive layer and release layer of Becerra Siabato et al. into the layer structure of Harrison et al. The results of such a combination would have been predictable; further, each of the elements would have performed the same in combination as they had separately. The rationale to use these is to form a proper working label.
Additionally, it would have been obvious to one having ordinary skill in the art to smoothen every layer lying on the substrate to the same Bekk smoothness taught in Becerra Siabato et al., including to more than 400 s to 500 s. The rationale would be to have the outward facing smoothness of the thermographic substrate 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, including the starch layer, the insulating layer, the protective layer and the release layer, to the same degree to form the desired smoothness for preventing printer jams and lost productivity in 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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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
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