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 .
Election/Restrictions
Applicant’s election of Group I, claims 1, 4 and 6, in the reply filed on 8/13/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 2, 3 and 5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/13/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities:
At [0254], the general image is referred to as part 53, but this does not match with the general image of printed material in Figures 7-14. It appears the general image should be part 52.
Appropriate correction is required.
Claim Objections
Claims 1, 4 and 6 are objected to because of the following informalities:
In claim 1 on lines 10-11, the phrase “the compound having sublimability or diffusibility” is objected to grammatically. The objection can be overcome by changing the phrase to “and wherein the compound has sublimability or diffusibility” which is how the claim will be interpreted.
In claim 1 on line 13, the phrase “forming a general image” is objected to grammatically as this phrase appears earlier in the claim. The objection can be overcome by changing the phrase to “forming the general image” which is how the claim will be interpreted.
In claim 1 on lines 28-30, the phrase “and contains a compound responsible for discoloration or decolorization, the compound having sublimability or diffusibility and a function” is objected to grammatically. The objection can be overcome by changing the phrase to “and contains the compound responsible for discoloration or decolorization, and wherein the compound has sublimability or diffusibility and the function” which is how the claim will be interpreted.
In claim 4 on lines 10-11, the phrase “the compound having sublimability or diffusibility” is objected to grammatically. The objection can be overcome by changing the phrase to “and wherein the compound has sublimability or diffusibility” which is how the claim will be interpreted.
In claim 6 on lines 10-11, the phrase “the compound having sublimability or diffusibility” is objected to grammatically. The objection can be overcome by changing the phrase to “and wherein the compound has sublimability or diffusibility” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1 on line 23, the Examiner does not find support for the limitations that “the transfer-receiving article includes a receiving layer” in the specification as originally filed. The receiving layer is present in the retransfer layer of the intermediate transfer medium and not in the transfer-receiving article of either of the first or second forms of producing the thermal transfer printed material.
Claims 1 and 6 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 on line 24, the limitations that the “general image and/or the sublimation transfer discoloration- or decolorization-imparting image are disposed on” the receiving layer render the claim indefinite because the “and/or” makes it optional which image is on the receiving layer, but on lines 13-14 of the claim these images are “on the transfer-receiving article”. If the images are on the transfer-receiving article and the transfer-receiving article includes the receiving layer, then both images must be on the receiving layer. The rejection can be overcome by changing the phrase to “general image and the sublimation transfer discoloration- or decolorization-imparting image are disposed on” which is how the claim will be interpreted.
In claim 6 on lines 14-15, the phrase “from a side of the thermal transfer printed material adjacent to the retransfer layer” renders the claim indefinite as a side is not a physical object/layer that can be adjacent to the retransfer layer. This rejection can be overcome by changing the phrase to “from a side of the thermal transfer printed material formed by the retransfer layer” which is how the claim will be interpreted.
Potential Allowable Subject Matter
Claim 4 is objected to grammatically but would be allowable if the objections above were addressed.
The closest prior art to the method of producing a thermal transfer printed materials as claimed is Nakamura (JP 2003-237231), but the application of the decoloring agent layer of the prior art onto the imaged receiving layer would lead to an immediate reaction with the image on the image receiving sheet, and therefore the prior art cannot teach or suggest the “sublimation transfer discoloration- or decolorization-imparting image on the receiving layer” as claimed. The sublimation transfer discoloration- or decolorization-imparting image must be capable of imparting discoloration- or decolorization; however, since the reaction would have already occurred upon being placed onto the receiving layer, the reference cannot teach the structure and functional limitations claimed. Please note that the definition of a “thermal transfer printed material” means a “printed material before the general image is discolored or decolorized”, which means since the method of the prior art cannot read on the “thermal transfer printed material” as it never existed in this state.
Claim 6 would be allowable if rewritten or amended 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.
The closest prior art to the method of producing a discolored or decolorized printed material as claimed is Nakamura (JP 2003-237231), but the application of the decoloring agent layer of the prior art would lead to an immediate reaction with the image on the image receiving sheet, and therefore the prior art cannot teach or suggest the “sublimation transfer discoloration- or decolorization-imparting image is in contact with at least part of the general image” in combination with “a light irradiation step…to discolor or decolorize the general image” as claimed. The sublimation transfer discoloration- or decolorization-imparting image must be capable of imparting discoloration- or decolorization; however, since the reaction would have already occurred upon being placed onto the receiving layer, the reference cannot teach the structure and functional limitations claimed; furthermore, there is no teaching of “a light irradiation step…to discolor or decolorize the general image”, which means the reference also does not teach these method steps 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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
