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 1-11, in the reply filed on 8/7/2026 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Claims 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.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 8/7/2026.
Claim Objections
Claims 1, 2, 4 and 8 are objected to because of the following informalities:
In claim 1 on lines 3 and 5, the limitations “is not provided in a portion of the substrate” and “is provided in a portion of the substrate” is objected to grammatically as the heat-sensitive recording layer is separate from the substrate and is therefore not “in” the substrate. This objection can be overcome by changing the phrases to “is not provided on a portion of the substrate” and “is provided on a portion of the substrate” which is how the claim will be interpreted.
In claim 2 on line 2, the phrase “only in a portion” is objected to grammatically for the same reasons as claim 1. The objection can be overcome by changing the phrase to “only on a portion” which is how the claim will be interpreted.
In claim 4 on lines 2 and 3, the phrase “in a portion” (two instances) is objected to grammatically for the same reasons as claim 1. The objection can be overcome by changing the phrase to “on a portion” which is how the claim will be interpreted.
In claim 8 on lines 2 and 3, the phrase “wherein color” and “higher than temperature” are objected to grammatically. The objection can be overcome by changing the phrases to “wherein a color” and “higher than a temperature” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-11 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 of a “heat-sealable” film “and thermally bonded to a material to be sealed” or “that is thermally bonded to a material to be sealed” renders the claim indefinite as it is unclear if the claim is drawn to a film that can be bonded to another material or if it has already been bonded. Also, it is unclear what component of the film is capable of doing the bonding. This rejection can be overcome by changing the phrase “and thermally bonded to a material to be sealed” in line 2 to “, wherein the substrate can be thermally bonded to a material to be sealed” and changing the phrase “that is thermally bonded to a material to be sealed” on lines 4 and 6 to “that can be thermally bonded to a material to be sealed” which is how the claim will be interpreted.
In claim 2, the phrase “only in a portion where printing is planned” is a subjective limitation that renders the claim indefinite. It is unclear where the “planned” portion is located as this would depend on the subjective preference of the user. For purposes of examination, any location is the planned portion for printing.
In claim 4, it is unclear if this claim requires one or two anchor layers. The claim requires providing it “in a portion where the substrate and the heat-sensitive layer recording layer are in contact with each other” and “in a portion where the substrate and the protective layer are in contact with each other”, but it is unclear if the same layer provides both locations. This rejection can be overcome by defining the layer order of the film.
In claim 5, the phrase “anti-diffused reflection layer” renders the claim indefinite because it is unclear if this is affecting light that has already diffused from somewhere else or if this is saying the layer prevents diffuse reflection of light. Applicants are encouraged to check the translation of this term from Japanese as the machine translation of the Japanese application has the term “diffuse reflection prevention layer”, which is a definite term and how the phrase will be interpreted.
In claim 7, the limitations “haze value (%)” renders the claim indefinite because it is unclear if the haze value being compared is required to be percentage haze or if this is an optional limitation. This rejection can be overcome by deleting the parenthesis.
In claim 7, the limitations of the haze value “of a portion where the heat-sensitive recording layer and the protective layer are provided” renders the claim indefinite as it is unclear what is being measured. It is unclear if the haze of only the heat-sensitive recording layer and the protective layer are measured or if this is measuring the haze through the substrate, the heat-sensitive recording layer and the protective layer.
In claim 11, the limitations of providing the recording layer “is provided at an appropriate portion combined with” is a subjective term that renders the claim indefinite. Whether the location of the recording layer is at an “appropriate portion” for combining with the pre-print layer to form a single design is a matter of subjective opinion by the user of the film. This rejection can be overcome by changing the phrase to “is provided at a portion and combined with”, which is how the claim will be interpreted.
In claim 11, the limitation of “a pre-printed portion and a printed portion are combined to form a single design” renders the claim indefinite as it is unclear if the printed portion is in addition to the heat-sensitive recording layer and the pre-print or if the printed portion is a print in the heat-sensitive recording layer. Additionally, it is unclear if the claim is then requiring a printed heat-sensitive recording layer, which also does not make sense as the claim requires a “heat-sensitive” recording layer. If the layer has been recorded upon with heat, then it is no longer a heat-sensitive recording layer. For purposes of examination, the Examiner will be treating this as a functional limitation of the heat-sensitive recording layer and the pre-print layer, e.g. they “can be combined to form a single design”.
Claim Rejections - 35 USC § 102
Claims 1-4 and 7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Watanabe et al. (US 2024/0042784).
With regard to claims 1-3, Watanabe et al. disclose the laminate 40 of Figure 4.
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The laminate includes a base material 11, which reads on applicants’ substrate, a recording medium 20 thereon that has a color development layer 24, which reads on applicants’ heat-sensitive recording layer only on a portion where printing is planned, and an overlay layer 15, which reads on applicants’ protective layer [0151] and [0156]-[0157]. The base layer 11 and overlay layer 15 are made of amorphous thermoplastic resins that are bonded by fusion at a temperature of 130 to 200 C, which means the laminate reads on applicants’ heat-sealable heat-sensitive film that can be thermally bonded to a material to be sealed as one can fusion bond the external surfaces of the base layer 11 and overlay layer 15 to another material [0157]-[0162].
Given the interpretation in the 112(b) rejection of claim 1 above, the claim does not require the film to already be sealed to another material, but that it is capable of being sealed to the material. Since the base material 11 is made from the same thermally bondable materials as preferentially disclosed in applicants’ specification, the base material 11 is inherently capable of being thermally bonded to another material in areas where the recording medium 20 is not provided.
With regard to claim 4, the broadest reasonable interpretation of the term “in contact” does not require direct contact but rather can include contact through other layers. The recording medium 20 also comprises a heat insulating layer 23, which reads on applicants’ anchor layer as it is on a portion where the base layer 11 is in contact with both the color development layer 24 and overlay layer 15 [0125] and Figs 3 and 4.
With regard to claim 7, Watanabe et al. teach that the base layer 11 and overlay layer 15 can contain the same type of thermoplastic resin [0158]. Given that the materials and structure of the base layer 11, recording medium 20, and overlay layer 15 are the same as that claimed and preferentially disclosed, the laminate of Watanabe et al. will inherently have the haze value % ratio of 4.6 times or less as claimed.
Claims 1, 2 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furusawa et al. (JP 2019-172276).
With regard to claims 1, 2 and 9-11, Furusawa et al. teach the heat seal film of Figure 1 [0009].
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The heat-sealable film 100 includes an amorphous film 10 having heat sealability and being transparent, which reads on applicants’ substrate, a thermosensitive recording layer 40, which reads on applicants’ heat-sensitive recording layer only on a portion where printing is planned, and printed region 31, which reads on applicants’ pre-print [0009] and [0013]. This printed region 31 would also read on applicants’ pre-print that combined with whatever is printed in the thermosensitive recording layer 40 to form a single design for the overall film as this represents a functional/intended use of the recording layer.
Given the interpretation in the 112(b) rejection of claim 1 above, the claim does not require the film to already be sealed to another material, but that it is capable of being sealed to the material. Since the non-printed region 32 of the lower surface of the substrate is the location where heat-sealing occurs and this is on an opposite surface from where the thermosensitive recording layer 40 is formed, this reads on the limitations that the heat-sensitive recording layer is not provided on a portion of the substrate that can be thermally bonded and the heat-sensitive recording layer is provided on a portion of the substrate other than the portion of the substrate that can be thermally bonded to the material to be sealed as the opposite surface of the substrate are different portions.
Claim Rejections - 35 USC § 103
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (US 2024/0042784).
Watanabe et al. teach all of the limitations of claim 1 above. They also teach in another embodiment that the overlay layer 15 may be transparent and there may be pattern printed on the overlay layer 15, wherein in an alternative reading, the overlay layer may read on applicants’ substrate and the base material 11 may read on applicants’ protective layer [0081]; however, they do not specifically teach a transparent overlay layer 15 having a print in the embodiment of Figure 4.
It would have been obvious to one having ordinary skill in the art to have made the overlay layer 15 of Figure 4 transparent so that one could see the thermal printing of the recording medium 20 from the outside of the laminate. Additionally, it would have been obvious to have placed a printed pattern on the overlay layer to form standard information on the card. This pattern would read on applicants’ pre-print that combined with whatever is printed in the color development layer 24 to form a design for the overall card as this represents a functional/intended use of the color development layer.
Claims 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Furusawa et al. (JP 2019-172276) in view of Yoshida et al. (JP 2020-037444).
With regard to claims 3-6, Furusawa et al. teach all of the limitations of claim 1 above. They also teach that other functional layers may be included in the film [0013]; however, they do not specifically teach a protective layer as claimed.
Yoshida et al. teach a heat-sealable packing sheet that has a base material layer 30 having heat-sealing properties, an undercoat layer 40, which reads on applicants’ anchor layer, a heat sensitive layer 50 and a protective layer 70 [0030]. The protective layer 70 can comprise colloidal silica, which will intrinsically have a particle size as claimed because that is the definition of colloidal and particles bigger than 1 micron will intrinsically settle and not behave as a colloidal particle [0036].
Since Furusawa et al. and Yoshida et al. are both drawn to heat sealable packaging films with thermal recording layers, it would have been obvious to one having ordinary skill to have combined the undercoat layer and protective layer of Yoshida et al. into the film of Furusawa et al. The results of such a combination would have been predictable to one having ordinary skill; further, each of the elements would have performed the same in combination as they had separately. The undercoat layer would increase the adhesion of the thermosensitive recording layer to the amorphous film, and the protective layer would protect the thermosensitive recording layer from damage.
With specific regard to claim 4, the broadest reasonable interpretation of the term “in contact” does not require direct contact but rather can include contact through other layers. In this way, the undercoat layer combined into the structure of Furusawa et al. would be present in a portion where the amorphous film 10 and the thermosensitive recording layer 40 are in contact and in a portion the amorphous film 10 and the protective layer are in contact.
With regard to claim 7, Furusawa et al. teach that the amorphous film 10 and the thermosensitive recording layer 40 are transparent [0013]. The structure rendered obvious above by Furusawa et al. in view of Yoshida et al. would have a protective layer 70 that is intrinsically transparent based on the materials it is made from and the fact that the printing in the heat sensitive layer is viewable from the outside of the package, see Figure 5 of Yoshida et al. Given all of this information, the structure rendered obvious above will intrinsically possess the haze value % ratio of 4.6 times or less as claimed.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Furusawa et al. (JP 2019-172276) in view of Yoshida et al. (JP 2020-093447).
Furusawa et al. teach all of the limitations of claim 1 above; however, they do not specifically teach the color developing temperature as being higher than the temperature of thermal bonding.
Yoshida et al. teach a heat-sealing film for packing purposes that includes a heat-sealing layer and a heat-sensitive layer, and wherein the heat-sealing temperature of the heat-sealing layer is lower than the color-developing temperature of the heat-sensitive layer [0005].
Since Furusawa et al. and Yoshida et al. are both drawn to heat sealable packaging films with thermal recording layers, it would have been obvious to one having ordinary skill to have made the heat-sealing temperature of the amorphous film 10 lower than the color-developing temperature of the thermosensitive recording layer 40 of Furusawa et al. as taught by Yoshida et al. The rationale to do so is so that the thermosensitive recording layer 40 does not react and color when one is sealing the packaging film prior to 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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