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:
In Table 2, the term “polymethylene wax” is objected to as polymethylene polymers cannot exist as there is no double bond that can be polymerized.
Appropriate correction is required.
Claim Objections
Claim 8 is objected to because of the following informalities:
In claim 8, the phrase of forming an image “on the recording body” is objected to grammatically as the image is “in the recording body” and not on it. The objection can be overcome by changing the phrase “in the recording body” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-8 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 definition of the term “wax” at [0017] of applicants’ specification renders the meaning of the term indefinite. The definition requires that the wax has a “low melt viscosity””, but this is a term of degree that renders the claim indefinite. It is unclear what is considered a “low” melt viscosity.
Additionally, the definition at [0017] says the wax melts from room temperature to “about 100 C” however, examples 4 and 5 have a melting point of 120 C and 123 C, respectively, which is at least 20% greater than 100 C, and therefore it is unclear how much higher one can be than 100 C and still be considered “about 100 C”.
In claim 2, the concept of a “repeating unit” with the formula (1) renders the claims indefinite. It is shown in the specification that ‘n’ and ‘m’ represent repeating units and the term repeat unit is known in chemistry as monomer, and therefore calling formula (1) a repeat unit does not make sense since this represents the wax as a whole.
Also, the fact that ‘n’ and ‘m’ are given as integers for the repeat units in the form of a (co)polymer does not make sense as the formula (1) only shows a single carbon atom in the main chain as part of the repeat unit. A repeat unit would need two carbon atoms in the main chain as this would need to be formed from ethylenic unsaturation. It is unclear what the structure of the (co)polymer can be from the formula (1). For purposes of examination, the examiner will be looking for (co)polymers of aromatic containing ethylenically unsaturated groups.
Claim Rejections - 35 USC § 102
Claims 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al. (JP 2635552 B2), machine translation included.
With regard to claims 1-4 and 7, Suzuki et al. teach a thermal recording medium having a support and a hot-melt ink layer thereon comprising a microporous resin and a hot-melt ink, which reads on applicants’ recording body with a support and a concealing layer as it is capable of forming a recording (pg. 1-2). In example 5, the ink composition for forming the hot melt ink layer is taught to be used to form an image in the same manner as in example 1, which means the ink composition of example 5 was combined with a vinyl-chloride-vinyl acetate resin, which reads on applicants’ binder, and dispersed to form a coating agent that is then coated on a film, which reads on applicants’ method for producing a recording body (pg. 32-34).
The example 5 includes the wax 1120H, which is identical to the wax used in Example 3 of applicants’ specification and reads on their fusible substance having a branched structure containing an aromatic ring/phenyl group, the repeat unit structure of formula (1) and the average particle diameter claimed. Lastly, given that the hot melt ink layer is microporous and includes a colorant, resin and a wax as claimed and disclosed, it will inherently function as a concealing layer of the layers that lie beneath it.
Claim 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harrison et al. (8,536,087).
With regard to claim 7, Harrison et al. teach water-based coating for coating a thermosensitive layer 500 on the substrate 101 in Figure 1, which reads on applicants’ method for producing a recording body by applying a coating liquid (col. 5, lines 4-8 and col. 14, lines 4-15). The thermosensitive layer has materials that become transparent at elevated temperatures, which means the as-formed layer is functioning as a concealing layer as claimed (col. 18, line 60 to col. 19, line 5).
Claim Rejections - 35 USC § 103
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (JP 2635552 B2).
Suzuki et al. teach all of the limitations of claim 1 above; however, they do not specifically teach a further color layer.
The Examiner notes that a mere duplication of the hot melt ink layer of Suzuki et al. would read on applicants’ further color layer. 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 one having ordinary skill in the art to have merely coated the hot-melt ink layer twice in order to form a thicker layer. Either of the upper or lower hot-melt ink layers could read on applicants’ concealing layer and the other of the two would read on applicants’ color layer.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Arimura et al. (5,605,766).
With regard to claims 1-4 and 7, Arimura et al. teach a thermal transfer recording medium, which reads on applicants’ recording body as it is capable of forming a recording (col. 1, lines 35-42). The recording medium can comprise a foundation, which reads on applicants’ support body, and a release layer formed with a heat-meltable resin, which reads on applicants’ binder, and a modified polyethylene wax such as 1120H or 1160H, which are identical to the waxes used in Examples 1-3 of applicants’ specification and reads on their fusible substance having a branched structure containing an aromatic ring/phenyl group, the repeat unit structure of formula (1) and the average particle diameter claimed (col. 1, lines 35-42 and col. 2, lines 1-7 and lines 57-67). The release layer is formed from a coating liquid application, which reads on applicants’ applying a coating liquid onto a substrate (col. 4, lines 55-59); however, Arimura et al. do not teach a specific example with the modified wax claimed.
It would have been obvious to one having ordinary skill in the art to have made a release layer from the modified polyethylene wax 1120H or 1160H in combination with the heat-meltable resin as these materials are specifically taught in the reference for this purpose. There would have been a reasonable expectation of success in forming a proper release layer from these materials as they are specifically taught for this purpose. Given that the release layer has all of the same materials as claimed having the same particle size as claimed, it will intrinsically have a haze and function as a concealing layer of the layers that lie beneath it.
With regard to claim 5, the modified polyethylene wax is preferably contained at 60 to 90% by weight and the heat-meltable resin is preferably at 5 to 15% by weight, which reads on the parts by mass of the binder to 100 parts of fusible substance as claimed, e.g. 5 parts resin to 90 parts wax = ~5.6 to 100 parts and 15 parts resin to 60 parts wax = 25 to 100 parts (col. 3, lines 14-17).
With regard to claim 6, there is a heat-meltable colored ink layer, which reads on applicants’ further colored layer (col. 3, lines 26-29).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Examiner has cited JP H08-291222 to show that HiWax 1160H is a styrene-ethylene copolymer [0009].
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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