20DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Morita (JP2021126860).
Re claim 1, Morita discloses thermal recording linerless label comprising adhesive layer and undercoat layer, i.e. insulation layer [12]. The undercoat layer comprises heat expandable hollow particles (corresponding to claimed first hollow particles), non-heat-expandable hollow particles (corresponding to claimed second hollow particles), and styrene/butadiene copolymer, i.e. matrix polymer [86]. The heat expandable hollow particles are organic [23].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Ishibashi (JP2008149623) in view of Morita (JP2021126860).
Re claim 1, Ishibashi discloses thermal recording material [1] comprising a multilayer structure of two or more undercoats [49] where the undercoat layers comprise organic hollow particles, thermally expandable particles, and adhesive resin, i.e. matrix polymer [51]. One of the undercoat layers would correspond to the claimed insulation layer and the other undercoat layer would correspond to he claimed adhesive layer. The undercoat layer comprises 20-90 wt.% organic hollow particles [54] and 1-80 wt.% thermally expandable particles [55].
Ishibashi does not disclose that the thermally expandable particles are hollow.
Morita discloses undercoat layer comprising heat expandable organic hollow particles [22-23]. The heat expandable organic hollow particles produce a thermal recording material with high heat insulation and excellent color sensitivity [21].
In light of the motivation for using heat expandable organic hollow particles disclosed by Morita as described above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the heat expandable organic hollow particles as the thermally expandable particles of Ishibashi in order to produce thermal recording material with high heat insulation and excellent color sensitivity.
Re claim 2, while Ishibashi in view of Morita disclose the use of 1-80 wt.% heat expandable organic hollow particles in the undercoat or insulation layer, there is no disclosure of the amount of heat expandable organic hollow particles in vol.% as presently claimed. However, given the broad range in wt% disclosed by Ishibashi in view of Morita and given the broad range in vol% presently claimed, it is clear that the amount of heat expandable organic hollow particles in Ishibashi in view of Morita would overlap that presently claimed.
Re claim 3, while Ishibashi in view of Morita disclose the use of 20-90 wt.% organic hollow particles and 1-80 wt.% heat expandable organic hollow particles in the undercoat or insulation layer, there is no disclosure of the volume ratio of organic hollow particles to heat expandable organic hollow particles as presently claimed. However, given the broad ranges in wt% disclosed by Ishibashi in view of Morita and given the broad volume ratio presently claimed, it is clear that the volume ratio of organic hollow particles to heat expandable organic hollow particles in Ishibashi in view of Morita would overlap that presently claimed.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ishibashi (JP2008149623) in view of Morita (JP2021126860) and further in view of Fukunaga (US 2018/0326772).
The references are relied upon above.
Re Claim 4, Ishibashi discloses the use of adhesive resin in the undercoat layer including polyacrylic acid ester [58-59], however, there is no disclosure of a compound of formula (1) as claimed.
Fukunaga discloses thermal recording medium comprising undercoat layer [16] where the undercoat layer comprises acrylic resin [31] that is a polyethylene glycol di(meth)acrylate ester [45, 54] and would therefore be necessarily be made from monomer corresponding to claimed formula (1). The acrylic resin is essential to achieve dye barrier properties and solvent resistance [31].
In light of the motivation for using polyethylene glycol di(meth)acrylate ester disclosed by Fukunaga as described above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polyethylene glycol di(meth)acrylate ester as the polyacrylic acid ester of Ishibashi in view of Morita in order to produce thermal recording material with dye barrier properties and solvent resistance.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
Response to Arguments
Applicant’s arguments are moot in view of the amendment and new grounds of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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