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.
Claim Rejections - 35 USC § 112
Claims 2 and 3 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 2, the term “substituent” renders the claim indefinite as it is unclear what the substituent may be based on the definition at [0046] of applicants’ specification. This section defines substituent as “organic groups other than a hydrogen atom” but then lists as examples of this a “halogen atom” and a “nitro group”. These are not organic groups, and therefore it is unclear if the substituents of claim 2 are limited to organic groups or not. For purposes of examination, the Examiner will be treating the claim as open to the exemplary groups/atoms listed at [0046].
In claim 3 on lines 5 and 7, the phrase “the symbols” lack antecedent basis in the claims. This rejection can be overcome by setting forth the specific substituents of formula (1a) and (2a), e.g. R1 etc., that have the same meaning as in formulae (1) and (2), respectively.
Claim Rejections - 35 USC § 102
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stork et al. (EP 2033801), machine translation included.
The Examiner is interpreting the term “non-phenol-based” as meaning that the compound does not have a phenolic hydroxyl group based on the context of [0006] and [0008] of applicants’ specification.
With regard to claims 1 and 4, Stork et al. teach forming a heat-sensitive recording layer on a substrate layer, wherein each of the compositions of Table 1 are used to form the heat-sensitive recording layer [0049]-[0051]. Comparative example 4 has OBB-2 as a color former, Pergafast 201 as a developer, which reads on applicants’ non-phenol-based developer and Tinuvin 312, which is N-(2-ethoxyphenyl)-N'-(2-ethylphenyl)ethanediamide and reads on applicants’ non-phenol based ultraviolet absorber comprising an oxanilide-based ultraviolet absorber [0051] and Table 1. The developer is present at 25 weight % of the layer, which reads on applicants’ mass % of claim 4 (Table 1).
Claim Rejections - 35 USC § 103
Claims 1 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kabashima et al. (US 2001/0044553).
With regard to claim 1, Kabashima et al. teach a recording medium having a heat-sensitive recording layer on a substrate that is formed from a color-producing composition [0342]. The color-producing composition comprises a leuco dye, which reads on applicants’ color former, a urea-urethane compound such as (E-24), which reads on applicants’ non-phenol-based developer, a heat-meltable material and a water-soluble polymer [0179] and [0342]. The color-producing composition may also contain a shelf-life imparting agent such as a light stabilizer that may be 2-ethoxy-2’-ethyloxanilide, which reads on applicants’ non-phenol-based UV absorber [0336] and [0338]; however, Kabashima et al. does not specifically teach an example having a heat-sensitive recording layer including an oxanilide light stabilizer.
It would have been obvious to one having ordinary skill in the art to have made a heat-sensitive recording layer including a light-stabilizer such as 2-ethoxy-2’-ethyloxanilide as taught in the prior art for the purpose of improving the light resistance to the recording medium.
With regard to claim 4, the content of the developer can be from 20 to 50 weight % of the heat-sensitive recording layer, which reads on the mass % claimed [0404].
With regard to claims 5 and 6, the light stabilizer may be present at 10 to 500 parts by weight relative to 100 parts of the colorless dye precursor and the colorless dye precursor may be present at 10 to 25 wt% of the heat-sensitive recording layer [0338] and [0404]. This means the amount of light stabilizer taught in Kabashima et al. overlaps with the range of claims 5 and 6.
It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Given the parts by weight of light stabilizer relative to the colorless dye precursor taught in Kabashima et al., this would represent a range of at least 1 wt% to 50 wt% light stabilizer (10/100*10% to 500/100*10%). This means a prima facie case of obviousness exists for a content of the light stabilizer being from 5 mass% to 15 mass% as claimed.
Potential Allowable Subject Matter
Claims 2 and 3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art would not teach or suggest a combination of a color former, an oxanilide-based ultraviolet absorber and one of the non-phenol-based developer of at least one of formulae (1) or (2) of claim 2 or the non-phenol-based developer of at least one of formulae (1a) or (2a) or claim 3. The closest prior art for the developers of claim 2 are US 10,780,724, US 11,945,769 and US 12,246,549. However, none of these references would teach or suggest using the specific class of non-phenol-based UV absorber compounds, i.e. oxanilide-based ultraviolet absorber, in combination with these developers. Also, there would not be a predictable result from combining an oxanilide-based ultraviolet absorber with the developers of these references.
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 (variable one work-at-home day).
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/Gerard Higgins/Primary Examiner, Art Unit 1785