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
Claims 1, 5, 7 and 9 are objected to because of the following informalities:
In claim 1, the phrase “attaches at the * position” is objected to grammatically as there is no indication as to what the group of formula (3) attaches. This objection can be overcome by changing the phrase to “attaches to the rest of the compound at the * position”
In claims 5, 7 and 9, there is no period at the end of each claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 1-16 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 limitations of a “non-phenol-based light stabilizer” renders the claim indefinite as it unclear from the specification what the term “non-phenol-based” means. In the specification at [0064], [0066] and [0073], applicants state that a non-phenol-based light stabilizer has no phenolic hydroxyl group and as an example of this they include the hindered amine-based light stabilizers of formula (3). They give specific examples of this non-phenol hindered amine-based light stabilizer at [0073] and include “bis(1,2,2,6,6-pentamethyl-4-piperidyl-2-butyl-2-(3,5-di-tertiary butyl-4-hydroxybenzyl) malonate”, but this compound has a phenolic hydroxyl group. This means the metes and bounds of claim 1 are unclear as a compound having a phenolic hydroxyl group on the 3,5-di-tertiary butyl-4-hydroxybenzyl is considered non-phenol-based. For purposes of examination, the claim will be interpreted as not including this malonate compound and the rejection can be overcome by deleting this compound and any other phenolic hydroxyl group containing compound from the specification.
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 2 are being referred. This rejection can be overcome by including the substituents by name in claim 3 that are the same as in the formulae (1) and (2) of claim 2.
In claim 13, the phrase “content ratio” renders the claim indefinite as it is unclear what measurement units are being compared to determine the content ratio, e.g. mass, volume etc. This rejection can be overcome by changing the phrase to “mass ratio” which is how the claim will be interpreted.
In claim 15, the limitations that the compound having a group represented by formula (3) “comprises…1,2,3,4-butanetetracarboxylic acid tetramethyl esters” renders the claim indefinite because a tetramethyl ester of 1,2,3,4-butanetetracarboxylic acid does not have the group of formula (3) attached to it and it is unclear where the group of formula (3) would be in such a compound.
Claim Rejections - 35 USC § 102
Claims 1, 10-12 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwasaki et al. (JP 2003-072246), machine translation provided.
With regard to claims 1 and 15, the heat-sensitive recording material of Example 1 has a thermosensitive recording layer formed on a paper, which reads on applicants’ heat-sensitive recording layer on a substrate [0039]. The thermosensitive recording layer of Example 1 includes a fluoran leuco dye, which reads on applicants’ color former, 4,4'-bis [(4-methyl-3-phenoxycarbonylaminophenylureido)] diphenylsulfone, which acts as a color developer, and tetrakis(1,2,2,6,6-pentamethyl-4-piperidyl)-1,2,3,4-butanetetracarboxylate, which reads on applicants’ non-phenol-based light stabilizer including a group according to formula (3) [0033], [0034] and [0037].
With regard to claims 10-12, based on the solids in example 1 and each of the Liquids A, B, C and D, the 4,4'-bis [(4-methyl-3-phenoxycarbonylaminophenylureido)] diphenylsulfone developer is present at approximately 10.2 mass% (= 11.25/109.9) of the recording layer and the tetrakis(1,2,2,6,6-pentamethyl-4-piperidyl)-1,2,3,4-butanetetracarboxylate is present at approximately 1.1 mass% of the recording layer (= 1.25/109.9) [0033]-[0037].
Claim Rejections - 35 USC § 103
Claims 4, 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki et al. (JP 2003-072246).
With regard to claims 4 and 5, Iwasaki et al. teach all of the limitations of claim 1 above. They also teach that another color developer may be present in the thermosensitive recording layer [0017]. This other color developer may be N-p-tolylsulfonyl-N'-phenylurea or 1,1-bis(4-hydroxyphenyl)-1-phenylethane [0018]; however, Example 1 does not specifically teach using the N-p-tolylsulfonyl-N'-phenylurea.
It would have been obvious to one having ordinary skill in the art to have substituted the 1,1-bis(4-hydroxyphenyl)-1-phenylethane in liquid D of Example 1 with N-p-tolylsulfonyl-N'-phenylurea. The results of such a substitution would have been predictable to one having ordinary skill in the art as these are recognized equivalents for the same purposes in the prior art. In this embodiment, the N-p-tolylsulfonyl-N'-phenylurea reads on applicants’ non-phenol-based developer and the 4,4'-bis [(4-methyl-3-phenoxycarbonylaminophenylureido)] diphenylsulfone reads on applicants’ storage stability improver.
With regard to claims 14, since 4,4'-bis [(4-methyl-3-phenoxycarbonylaminophenylureido)] diphenylsulfone is the only urea urethane in the composition, this means it reads on being 100 mass% of the total stage stability improver.
Claims 1-4, 6, 8, 10-12, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata et al. (WO 2020/105564).
With regard to claims 1-3, 15 and 16, Shibata et al. disclose a thermosensitive recording layer on a support, which reads on applicants’ heat-sensitive recording layer on a substrate [0008]. The thermosensitive recording layer can comprise a leuco dye, which reads on applicants’ color former, and a color developer such as compound 2 of Table A1, which reads on applicants’ non-phenol-based developer of formulae (2) and (2a) [0015], [0039] and [0040]. An auxiliary additive may be included and this may be tetrakis(1,2,2,6,6-pentamethyl-4-piperidyl)-1,2,3,4-butane tetracarboxylate [0065]; however, they do not specifically teach a recording layer having all of these materials.
It would have been obvious to one having ordinary skill in the art to have combined the tetrakis(1,2,2,6,6-pentamethyl-4-piperidyl)-1,2,3,4-butane tetracarboxylate with the leuco dye and the color developer of Shibata et al. The results of such a combination would have been predictable to one having ordinary skill; further, each of the elements would have performed the same in combination as they had separately. The rationale to use the tetrakis(1,2,2,6,6-pentamethyl-4-piperidyl)-1,2,3,4-butane tetracarboxylate is that it is a hindered amine light stabilizer that would protect the recording medium from degradation by light.
With regard to claims 4, 6 and 8, according to applicants’ specification a “storage stability improver” may be a surfactant [0084]. Shibata et al. teach surfactants at [0068], and therefore this reads on applicants’ storage stability improver.
With regard to claim 10, Shibata et al. teach that the amount of developer may be from 10 to 30% by mass of the of the thermosensitive recording layer [0053].
With regard to claims 11 and 12, Shibata et al. do not specifically teach the amount of auxiliary additive in the thermosensitive recording layer.
It would have been obvious to one having ordinary skill in the art to have added the auxiliary additive in any amount, including from 1 to 10 mass% of the thermosensitive recording layer such that there was enough of the additive to perform its intended purpose while not being so great as to waste money.
Claims 1, 4, 5 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bie et al. (WO 2020/130099).
With regard to claims 1, 4, 5 and 15, Bie et al. disclose a thermosensitive recording layer on a support, which reads on applicants’ heat-sensitive recording layer on a substrate [0005]. The thermosensitive recording layer can comprise a leuco dye, which reads on applicants’ color former, a developer according to formula (I), which reads on applicants’ non-phenol-based developer, and a urea urethane co-developer, which reads on applicants’ storage stability improver [0023], [0028] and [0032]. An auxiliary additive may be included and this may be tetrakis(1,2,2,6,6-pentamethyl-4-piperidyl)-1,2,3,4-butane tetracarboxylate [0038]; however, they do not specifically teach a recording layer having all of these materials.
It would have been obvious to one having ordinary skill in the art to have combined the tetrakis(1,2,2,6,6-pentamethyl-4-piperidyl)-1,2,3,4-butane tetracarboxylate with the leuco dye and the color developer of Bie et al. The results of such a combination would have been predictable to one having ordinary skill; further, each of the elements would have performed the same in combination as they had separately. The rationale to use the tetrakis(1,2,2,6,6-pentamethyl-4-piperidyl)-1,2,3,4-butane tetracarboxylate is that it is a hindered amine stabilizer that would protect the recording medium from degradation by light.
With regard to claim 10, Bie et al. teach that the amount of leuco dye may be from 3 to 30% by mass of the of the thermosensitive recording layer and the developer can be present at a mass of 0.5 to 10 parts by mass relative to 1 part by mass of the leuco dye [0035]. This relative parts by mass with the mass % of leuco dye overlaps with the developer mass % range claimed, 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).
With regard to claims 11 and 12, Bie et al. do not specifically teach the amount of hindered amine stabilizer auxiliary additive in the thermosensitive recording layer.
It would have been obvious to one having ordinary skill in the art to have added the auxiliary additive in any amount, including from 1 to 10 mass% of the thermosensitive recording layer such that there was enough of the additive to perform its intended purpose while not being so great as to waste money.
With regard to claims 13 and 14, the urea urethane can be present at a weight ratio of 0.05 to 0.1 relative to the developer according to formula (I) [0034]. This would represent a weight ratio of 1/20 to 3.06/30.6, which reads on the range claimed. Also, since the urea urethane is the only urea urethane in the composition, this means it reads on being 100 mass% of the total stage stability improver.
Potential Allowable Subject Matter
Claims 7 and 9 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 closest prior art to claims 7 and 9 are WO 2020/105564 and WO 2022/202154; however, none of these references teach a heat-sensitive recording medium having a combination of a color former, a developer according to claims 2 or 3 and the urea-urethane of claims 7 or 9. There would have been no rationale, save improper hindsight, to have added the specific urea urethane of claims 7 and 9 to the thermosensitive recording material of WO 2020/105564 or WO 2022/202154.
The Examiner also notes US 11,912,052 and US 11,529,819; however, these references do not teach or suggest a non-phenol-based light stabilizer comprising a compound having a group represented by formula (3). There would have been no reason, save improper hindsight, to have added one of the hindered amine light stabilizing compounds having a group represented by formula (3) because the stabilizers mentioned in these references would not lead one of ordinary skill to add the specific non-phenolic hindered amine light stabilizer claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Examiner notes that Koide et al. (WO 2022/202154) is considered cumulative to the Shibata et al. rejection above.
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/Gerard Higgins/Primary Examiner, Art Unit 1785