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 Objections
Claim 4 is objected to because of the following informalities:
In claim 4, the limitations that the mass % of developer is based on “an entirety of the heat-sensitive recording medium” appears to be a typographic error as this would not make sense and does not agree with the specification, where the mass % of developer is based on the “an entirety of the heat-sensitive recording layer” [0015], which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1 and 3-7 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 term “substituent” (four instances) renders the claim indefinite as it is unclear what the substituent may be given the definition at [0046] of applicants’ specification. This section of applicants’ specification defines substituent as “organic groups other than a hydrogen atom” but then it lists examples of this as a “halogen atom” and a “nitro group”. These would not be considered organic groups to one having ordinary skill in the art, and therefore it is unclear if the substituents of claim 1 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, the phrase “the symbols” (two instances) lacks antecedent basis in the claim. It is unclear to which symbols of formulae (1) and (2) in claim 1 are being referred. The rejection can be overcome by including the substituents by name in claim 3 that are the same as in formulae (1) and (2) of claim 2.
Claim Rejections - 35 USC § 103
Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Miyanaga et al. (WO 2017/111032) of which US 10,780,724 is the US national stage entry and will be used as a translation.
With regard to claims 1 and 3, Miyanaga et al. teach a heat-sensitive recording material that can include a heat-sensitive recording layer on a supporting medium, which reads on applicants’ substrate (col. 30, lines 30-43). The heat-sensitive recording layer can comprise a color-forming compound, a stabilizer and a color-developing compound according to formula (1) that may be compound #2 of Table 1, which reads on applicants’ compound (2a) (col. 10, lines 4-30 and col. 26, lines 17-26). The stabilizer may be a sodium salt of 2,2′-methylenebis(4,6-di-t-butylphenyl)phosphate, which reads on applicants’ phosphorus-based antioxidant (col. 28, lines 61-63); however, Miyanaga et al. do not specifically teach an example with all of these materials.
It would have been obvious to one having ordinary skill in the art to have used one of the specific stabilizers in Miyanaga et al. in the heat-sensitive recording layer as this is specifically suggested in the reference. The rationale is to allow the recoding material to be stable for storage for a longer period of time. This stabilizer will intrinsically act like an antioxidant in the heat-sensitive recording layer.
With regard to claim 4, the developer can be present at 10 to 50 mass % of the heat-sensitive recording material that makes up the heat-sensitive recording layer (col. 29, lines 54-67).
With regard to claims 5 and 6, the stabilizer can be present at 0 to 30 mass % of the heat-sensitive recording material that makes up the heat-sensitive recording layer (col. 29, lines 54-67). The Examiner notes that the range of the prior art overlaps with the claimed range, and therefore a prima facie case of obviousness exists.
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).
Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kinishi et al. (WO 2019/044462) of which US 11,945,769 is the US national stage entry and will be used as a translation.
With regard to claims 1 and 3, Kinishi et al. teach a thermosensitive recording material that can include a thermosensitive recording layer on a base sheet, which reads on applicants’ substrate (col. 20, lines 15-21). The thermosensitive recording layer can comprise a basic dye that can form a color, which reads on applicants’ color former, a storage stabilizer and a color-developer according to formula (3) such as N,N′-di-[3-(p-toluenesulfonyloxy) phenyl] urea, which reads on applicants’ compound (1a) (col. 8, lines 26-29 and 55-58, col. 20, lines 32-40 and col. 21, line 46-48). The storage stabilizer may be a sodium salt of 2,2′-methylene bis(4,6-di-t-butylphenyl)phosphate, which reads on applicants’ phosphorus-based antioxidant (col. 22, lines 3-4); however, Kinishi et al. do not specifically teach an example with all of these materials.
It would have been obvious to one having ordinary skill in the art to have used one of the specific storage stabilizers in Kinishi et al. in the thermosensitive recording layer as this is specifically suggested in the reference. The rationale is to allow the recoding material to be stable for storage for a longer period of time. This stabilizer will intrinsically act like an antioxidant in the thermosensitive recording layer.
With regard to claim 4, in Example 1 the N,N′-di-[3-(p-toluenesulfonyloxy) phenyl] urea is present at 40.4% by mass of the thermosensitive recording layer (col. 32, lines 1-31).
With regard to claims 5 and 6, Kinishi et al. teach mixing the storage stabilizer with the basic dye and the developer (col. 23, lines 37-43); however, they do not specifically teach how much storage stabilizer may be used in the thermosensitive recording layer.
It would have been obvious to one having ordinary skill in the art to have added the storage stabilizer in any amount, including from 5 to 10 mass% of the recording layer as claimed, to have improved the storage stability of the thermosensitive recording layer.
Potential Allowable Subject Matter
Claim 7 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 prior art does not teach or suggest a heat sensitive recording medium having a heat-sensitive recording layer with a color former, a non-phenol-based developer having a compound according to formula (1) and/or formula (2) and a non-phenol-based antioxidant that comprises a phophorus-based antioxidant that has a trivalent phosphorus atom in the molecule in combination with the rest of the limitations 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 (variable one work-at-home day).
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/Gerard Higgins/Primary Examiner, Art Unit 1785