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 .
Claims 1-3, 9-12 and 21-35 are currently pending. Claims 4-8 and 13-20 are canceled. Claims 1-3, 9-10 and 12 are amended. Claims 25-35 have been added as new.
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 1-3, 9-12 and 21-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 U.S. Patent No. 12,187,025 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and patent ‘025 have claims drawn to an on-machine development type planographic printing plate precursor, comprising: a support; and an image-recording layer on the support, wherein the image-recording layer contains an infrared absorber, a polymerization initiator and a color-developing substance precursor.
The present claims indicated above also cover the method which overlap the claims of U.S. Patent No. 12,187,025 and thus , render the present claims prima facie obvious.
Claims 1-3, 9-12 and 21-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 U.S. Patent No. 12,157,296 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and patent ‘296 have claims drawn to an on-machine development type ( on-press development type patent ‘296) planographic (lithographic) printing plate precursor, comprising: a support; and an image-recording layer on the support, wherein the image-recording layer contains an infrared absorber, a polymerization initiator (initiator), and a color-developing substance precursor.
The color-developing substance precursor of the instant claims and color-developing substance precursor of the patent ‘296 are the same. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. [MPEP 2112.01 In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)]. Therefore, the specific parameters of the instant claims ‘color-developing substance precursor should be inherently and obvious over the color-developing substance precursor of the patent ‘296.
The claim language of “capable of donating electrons to the initiator” is an intended use of the infrared absorber. In re Leshin, 125 USPQ 416, 417-418; 277 F2d 197 (CCPA 1960).
The claim language of “in a case where the image-recording layer is exposed to an infrared laser with a wavelength of 830 nm at an energy density of 110 mJ/cm2 , a brightness change ΔL of the image-recoding layer before and after the exposure is 3.0 or more. “ is intended use of the image-recording layer. In re Leshin, 125 USPQ 416, 417-418; 277 F2d 197 (CCPA 1960).
Furthermore, the instant claims and copending application recite open claim language “ comprising”; therefore, it would have been obvious for other components to be comprised in their respective inventions.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive. Applicant’s principle arguments are the following:
A) Applicants argue these two ODP rejections should be withdrawn because the on-machine type planographic printing plate precursor of the claims as amended is not merely an obvious variant of any planographic printing plate precursor claimed in the ‘025 or ‘296 patent.
A) Examiner respectfully disagrees. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Claim 2 of the ‘025 patent specifically teaches
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encompasses the same limitation of independent claim 1 of the instant claims. Both the instant claims and patent ‘025 teach the color-developing substance precursor having a lactone skeleton ( as newly amended). The present claims recites a brightness change of the image recording layer before and after the exposure is 3.0 to 20.0 ( newly amended) encompasses the brightness change of the image recording layer before and after the exposure is 3.0 or more of the ‘025 patent. The present claims recites a molar light absorption coefficient of a color-developing substance generated from the color-developing substance precursor between 50,000 and 150,000 ( newly amended) encompasses a molar light absorption coefficient of a color-developing substance generated from the color-developing substance precursor between 35,000 or more of the ‘025 patent. The present claims recites a color-developing substance generated from the color-developing substance precursor has a maximum absorption wavelength of 520 nm to 600 nm in a wavelength range of 380 nm to 750 nm ( as newly amended) encompasses a color-developing substance generated from the color-developing substance precursor has a maximum absorption wavelength of 500 nm to 650 nm in a wavelength range of 380 nm to 750 nm of the ‘025 patent. The present claims indicated above also cover the method which overlap the claims of U.S. Patent No. 12,187,025 and thus , render the present claims prima facie obvious.
Furthermore, both the instant claims and patent ‘296 have claims drawn to an on-machine development type ( on-press development type patent ‘296) planographic (lithographic) printing plate precursor, comprising: a support; and an image-recording layer on the support, wherein the image-recording layer contains an infrared absorber, a polymerization initiator (initiator), and a color-developing substance precursor.
The color-developing substance precursor of the instant claims and color-developing substance precursor of the patent ‘296 are the same. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. [MPEP 2112.01 In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)]. Therefore, the specific parameters of the instant claims ‘color-developing substance precursor should be inherently and obvious over the color-developing substance precursor of the patent ‘296.
The claim language of “capable of donating electrons to the initiator” is an intended use of the infrared absorber. In re Leshin, 125 USPQ 416, 417-418; 277 F2d 197 (CCPA 1960).
The claim language of “in a case where the image-recording layer is exposed to an infrared laser with a wavelength of 830 nm at an energy density of 110 mJ/cm2 , a brightness change ΔL of the image-recoding layer before and after the exposure is 3.0 or more. “ is intended use of the image-recording layer. In re Leshin, 125 USPQ 416, 417-418; 277 F2d 197 (CCPA 1960).
Therefore, the ODP rejections are maintained.
Applicant’s arguments, see pages 22-24, filed 03/02/2026, with respect to claims 1-24 have been fully considered and are persuasive due to claims amendments. The 35 U.S.C. 103 rejection of Enomoto. (WO 2019021828 A1; citations and translation from USPGPUB 2020/0147951 A1) as evidenced by Tsushima et al. ( US 2014/0349234 A1) has been withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANCEITY N ROBINSON whose telephone number is (571)270-3786. The examiner can normally be reached Monday-Friday (8:00 am-6:00 pm; IFP; PHP).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHANCEITY N ROBINSON/Primary Examiner, Art Unit 1737
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