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 disclosure is objected to because of the following informalities:
At [0031], [0083], [0109] and in the Table 1, the word “metacrylate” is misspelled. This objection can be overcome by changing the word to “methacrylate”.
Appropriate correction is required.
Claim Objections
Claims 1, 7, 9, 11 and 12 are objected to because of the following informalities:
In claim 1 on line 4 and claim 12 on lines 2-3, the phrase “and macromolecular material” is objected to grammatically. The objection can be overcome by changing the phrase to “and a macromolecular material” which is how the claims will be interpreted.
In claim 7, the phrase “wherein a heat-insulating layer is disposed between” is objected to grammatically. The objection can be overcome by changing the phrase to “further comprises a heat-insulating layer disposed between” which is how the claim will be interpreted.
In claim 9, the phrase “wherein a reflective layer is provided on” is objected to grammatically. The objection can be overcome by changing the phrase to “further comprises a reflective layer provided on” which is how the claim will be interpreted.
In claim 11, the “m2” is objected to as this should be “m2”, which is how the claim will be interpreted.
In claim 12 on lines 7, 8 and 10, the phrases “includes leuco pigment”, “includes photothermal conversion material” and “is polycarbonate” are objected to grammatically. This objection can be overcome by changing the phrases to phrases “includes a leuco pigment”, “includes a photothermal conversion material” and “is a polycarbonate” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 1-14, the Examiner does not find support for broadening of the claims to a “recording medium” in the specification as originally filed. The specification teaches a “reversible recording medium”, and therefore there is no support to have broadening the claims to a generic “recording medium”.
In claims 1-3, 5, 7-9 and 11-14, the Examiner does not find support for broadening of the claims by removing the “ultraviolet absorbing layer” in the specification as originally filed. The reversible recording medium is always described as having an “ultraviolet absorbing layer provided on the recording layer”, and therefore there is no support to have broadening the claims by removing the “ultraviolet absorbing layer” from the independent claims.
In claims 1 and 12, the Examiner does not find support for the embodiment of the macromolecular material being “polycarbonate that…includes 0.5 wt% of chlorine atoms, fluorine atoms, and sulfur atoms in a molecule” in the specification as originally filed. Applicants did not possess a polycarbonate having this non-zero amount of chlorine, fluorine and sulfur atoms in the specification as originally filed. The closest embodiment to this is example 1-18, but the polymers used were not polycarbonates.
In claim 10, the Examiner does not find support for the limitations of “an ultraviolet absorbing agent having absorption in a wavelength region of 420 nm or less” in the specification as originally filed. The specification makes clear at [0033] that this absorption range is for a “benzotriazole-based compound” and not a generic ultraviolet absorbing agent.
In claim 14, the Examiner does not find support for the limitations of an “exterior member card” in the specification as originally filed. There is no disclosure of the exterior member being a “card” in the specification as originally filed. Additionally, there is no support for the exterior member to generically include the recording medium of claim 1. The specification supports the reversible recording medium being on a support base.
Claims 6, 8, 9 and 12 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 “wherein the recording layer includes a layer including a pressure-sensitive adhesive or an adhesive on a surface opposite to a surface provided with the ultraviolet absorbing layer” renders the claim indefinite because a PSA layer cannot both be comprised within the recording layer and be on a surface of the recording layer. At least according to [0035] of applicants’ specification, the adhesive layer is not part of the recording layer, and therefore the limitations of claim 10 do not make sense. This rejection can be overcome by changing the limitations to “further comprising a layer including a pressure-sensitive adhesive or an adhesive on a surface of the recording layer opposite to a surface provided with the ultraviolet absorbing layer” which is how the claim will be interpreted.
In claim 8, the limitations “wherein the recording medium is disposed on a support base” renders the claim indefinite as it is unclear if this is a structural limitation of the recording medium or if this is an intended use of the recording medium. This rejection can be overcome by changing the limitations to “further comprising a support base and wherein the at least one recording layer is disposed on the support base” which is how the claim will be interpreted.
In claim 12, the limitations of “three types of microcapsules” and “each type of microcapsules includes a coloring compound having an electron-donating property, a color developing/quenching agent having an electron-accepting property” renders the claim indefinite as it is unclear what the word “type” is intended to convey. 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).”
This rejection can be overcome by changing the phrases to “three different microcapsules” and “each different microcapsule includes a coloring compound having an electron-donating property to be colored in colors different from each other, a color developing/quenching agent having an electron-accepting property and corresponding to the respective coloring compound” which is how the claim will be interpreted.
In claim 12 on line 7, the limitation of “the coloring compound” lacks antecedent basis in the claim as there are three coloring compounds in the recording layer. This rejection can be overcome by changing the phrase to “each coloring compound” and making the changes noted above, which is how the claim will be interpreted.
In claim 12 on lines 7-8, the limitation of “the photothermal conversion agent” lacks antecedent basis in the claim as there are three photothermal conversion agents in the recording layer. This rejection can be overcome by changing the phrase to “each photothermal conversion agent” which is how the claim will be interpreted.
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 1-12 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,077,009.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to a recording medium and an exterior member including a recording medium having a coloring compound, a color developing agent, a photothermal conversion agent and a macromolecular material. The copending claims are a species of the pending claims in that the copending claims require 0.5 wt% of chlorine atoms in an organic material. The organic material may be polycarbonate in copending claim 3; however, the copending claims do not specifically teach the materials claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to cols. 8 and 15 of the specification of US Patent No. 12,007,009, which defines what is meant by the photothermal conversion material in that it may have a phthalocyanine structure and the recording layer may have three microcapsules of different colors; therefore, it would have been obvious to one of ordinary skill in the art to have made the organic material be polycarbonate, to have made the photothermal conversion material have a phthalocyanine structure and to have made the recording layer have three microcapsules of different colors as presently claimed.
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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