DETAILED ACTION
Response to Amendment
Applicant's amendment filed 6/11/2026 has been entered. Currently, claims 1-6 and 9-12 are pending and claims 7 and 8 are canceled.
Claim Rejections - 35 USC § 102
Claims 1-6 and 9-12 are rejected under 35 U.S.C. 102(a)(1/2) as being anticipated by Harrison et al. (WO 2022/271595).
With regard to claims 1, 4-6, 11 and 12, Harrison et al. teach the thermographic substrate of Figure 1 [0045], [0075], [0106] and [0111].
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The thermographic substrate includes a paper substrate 101, which reads on applicants’ sheet material, and a color layer 201 that may contain a dye colorant 202, which together read on applicants’ first layer [0047] and [0075].
There is then a thermosensitive layer 301 having particles of thermal solvent 303, which reads on applicants’ second layer coextensive with the first layer and comprising a plurality of discrete particles [0106] and [0115]. On top of the thermosensitive layer 301 is a thermosensitive foam layer 401 having optional dye colorants 202, which reads on the second layer being dyed [0168] and [0179]. The dye of the thermosensitive foam layer 401 provides a tinting or light filter effect for the underlying color layer, which means the dye of this layer would necessarily have to be a different color or it could not provide these effects [0180].
Lastly, there is a thermosensitive layer 501 that is formed of the particles of thermal solvent 303, which reads on applicants’ third layer coextensive with the second layer and comprising a plurality of discrete particles [0106] and [0115]. The thermosensitive layer 501 is opaque and will be white as it has L* of greater than 70 and Harrison et al. teach white opaque layers at [0034] and [0115]-[0117].
Since Harrison et al. teach that the thermosensitive layers are white opaque layers that have “light scattering” capabilities [0034], this means the particles of thermal solvent 303 in the thermosensitive layer 501 will inherently be partly transmissive to light in the visible range but cause all wavelengths of light passing through the layer to evenly at least one of refract and reflect multiple times and appear white as claimed.
With regard to claims 2 and 3, the thermosensitive layers 301 and 501 are coated from a dispersion containing the particles of thermal solvent 303 in a binder 302 and 502, respectively [0106], [0115] and [0206]. This means both thermosensitive layers will intrinsically be “randomly and evenly arranged per a thickness unit and per an area unit” as claimed because the dispersions will be randomly and evenly distributed mixtures.
With regard to claim 9, the dyed substrate 101 is on the bottom and is an outer layer of the sheet as seen in the Figure 1, and the thermosensitive layer 501 reads on the top outer layer as it may be coated on the thermosensitive foam layer 401 and the layers 601 and 701 are optional [0110], [0203] and [0218].
With regard to claim 10, this is an intended use limitation of the sheet for thermal printing, wherein intended use limitations are not dispositive of patentability. Also, the melting of the thermal solvent transparentizes the thermosensitive layer 501, which means the thermal solvent particles of Harrison et al. can inherently perform these functional limitations [0114].
Claim Rejections - 35 USC § 103
Claims 1-5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Stalling et al. (WO 2022/262908), of which US 2024/0278592 is the US national stage application and will be used as a translation.
With regard to claims 1, 2 and 9, Stalling et al. teach a heat sensitive recording material having a heat-sensitive layer that become translucent by heating with a direct thermal printer, which reads on applicants’ sheet for thermal printing [0778]. The top cover layer should provide highest contrast with the underlying color layer [0008]. The heat-sensitive recording material comprises a support material having a colored layer having a dye on one side, which reads on applicants’ first layer being a sheet material dyed a specific color, and a heat-sensitive layer that becomes translucent through local effect of heat, which can read on a second layer can melt and fuse into a continuous portion as that will intrinsically occur when the heat-sensitive layer is melted [0778] and [0844]. There may be a protective layer on the heat-sensitive layer having inorganic pigments, which reads on applicants’ third layer disposed on and coextensive with the second layer and having a plurality of discrete particles [0877] and [0879].
The heat-sensitive layer may comprise light scattering particles that scatter visible light, which read on applicants’ being partly transmissive to light in the visible range but cause all wavelengths of light to refract or reflect a plurality of times [0778]. The light scattering particle can include a polyester [0784]. Stalling et al. also teach that the heat-sensitive layer can have a dye [0814]; however, they do not specifically teach using a different color dye for the second layer compared to the color of the first layer.
It would have been obvious to one having ordinary skill in the art to have included a dye in the heat-sensitive layer that was different than the dye in the colored layer of Stalling et al. The rationale was to provide a more complex color when the layer was recorded upon with heat and/or to provide a distinct color change depending upon the desired end use of the consumer. Stalling et al. recognize blue to yellow color changes at [0008], and therefore it would have been obvious to have added dyes to the heat-sensitive layer to provide that contrasting color change.
With regard to claim 2, the heat-sensitive layer was made by coating aqueous suspensions comprising the starting materials onto the carrier material [0231] and [0928]. This means the heat-sensitive layer will intrinsically be “randomly and evenly arranged per a thickness unit and per an area unit” as claimed because the aqueous suspension will be a randomly and evenly distributed mixture.
With regard to claim 3, the protective layer is made from a coating process [0885]. This means the protective layer will intrinsically be “randomly and evenly arranged per a thickness unit and per an area unit” as claimed because a coating composition will be intrinsically be a randomly and evenly distributed mixture.
In an alternative interpretation with regard to claims 3-5 and 10, a mere duplication of the heat-sensitive layer would also read on the third layer. It has been held that "mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” Please see MPEP 2144.04 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). It would have been obvious to one having ordinary skill in the art to have coated the heat-sensitive layer twice in order to have made the layer thicker, wherein the second coating of the heat-sensitive layer would then read on applicants’ third layer.
With regard to claims 3 and 5, since the third layer is a mere duplication of the second layer, this means the third layer will intrinsically be “randomly and evenly arranged per a thickness unit and per an area unit” and cause all wavelengths of light to refract or reflect a plurality of times as claimed because it will have the same structure of the second layer [0231], [0778] and [0928].
With regard to claim 4, the Examiner notes that there is no definition of “the particles being at least partly transmissive to light in the visible range”, and given the fact that the materials of the particles are identical to that preferentially disclosed and that they scatter light in the same manner as the current invention operates, the particles of the prior art will intrinsically be at least partly transmissive to light in the visible range as claimed.
With regard to claim 10, this is an intended use limitation of the sheet for thermal printing, wherein intended use limitations are not dispositive of patentability. Additionally, the sheet rendered obvious above can meet these intended use limitations as a laser could be used to selectively thermally print in the third layer.
With regard to claim 11, the support material may be paper [0842].
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 1-6 and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,958,308.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to sheets for thermal printing having the same arrangement of a first layer that may be paper, a second layer and a third layer. The particles of the second and third layers are randomly and evenly arranged and partly transmissive to light in the visible light range; however, the claims do not specifically teach the dyed second layer or that the third layer appears white.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to cols. 1 and 16 of the specification of Patent No. 11,958,308, which defines what is meant by the second layer in that it may be dyed a specific color different from the first layer and the particles of the third layer can be the same as those of the second layer; therefore, it would have been obvious to one of ordinary skill in the art to have dyed the second layer a different color from the first layer and to have used the same particles of the second layer in the third layer which will intrinsically make the third layer appear white as presently claimed.
Response to Arguments
Applicant’s arguments, see Remarks, filed 6/11/2026, with respect to the claim objections, the 112(b) rejections and the 112(d) rejections have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 6/11/2026 have been fully considered but they are not persuasive.
Applicants argue on pages 5-7 of their Remarks that claim 1 requires the “second layer both includes discrete particles and is dyed” means these are in a “single claimed second layer” having these materials, and therefore Harrison does not teach or suggest the claimed invention.
The Examiner respectfully disagrees and notes that applicants are arguing limitations that are not claimed. It is noted that the features upon which applicant relies (i.e., a “single claimed second layer” having both a dye and discrete particles) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants are claiming a second layer that “is dyed in a specific color”. The broadest reasonable interpretation of this phrase is not limited to a single layer having a mixture of dye and discrete particles; rather, it would also include a dye applied on top of the second layer. This is the appropriate broadest reasonable interpretation when one looks to Figure 2 and [0139] of applicants’ specification. In Figure 2, the second layer 220 may be dyed in a specific color by having the dye 228 “disposed on a surface of second layer 220”.
As such, the Examiner’s interpretation of the claim was appropriate, and the Examiner maintains that the thermosensitive layer 301 reads on applicants’ second layer and the thermosensitive foam layer 401 having dye colorants 202 disposed on the thermosensitive layer 301 reads on the second layer being “dyed in a specific color”.
Applicants argue on pages 7-8 of their Remarks that the dye of the thermosensitive foam layer 401 will not necessarily be a different color because [0180] would only teach that the “dyes may influence transmitted light”.
The Examiner respectfully disagrees and notes that the dye are providing a “tinting color effect”. This fact combined with the definition of dye in Merriam-Webster as “a substance used for changing the color of something” would mean that applicants’ arguments that the light filter affect may be “neutral, low-saturation or spectrally overlapping” is not persuasive. In order to have a light filtering effect or to provide a “tinting color effect”, the dye in the thermosensitive foam layer would necessarily have a different absorption spectrum that the colorant in the color layer 201. If it had the same absorption spectrum, then it would not be able to provide a color filtering effect nor a tinting color effect.
Applicants argue on pages 8-10 that Stalling does not render obvious using dyes of different colors.
The Examiner respectfully disagrees and notes that having two different colors is within the level of one having ordinary skill in the art. Stalling teach that the heat-sensitive layer can have a dye. Once this principle has been established, one of ordinary skill would then be motivated to choose the color of the dye in this layer, and it would have been obvious to one having ordinary skill to have made this dye have a different color to provide a more complex color when the layer was recorded upon. The rationale for obviousness can come from the “background knowledge, creativity, and common sense of the person of ordinary skill”, see MPEP 2143.01. Adding different color dyes to provide a more complex color would be within the background knowledge, creativity and common sense of the person of ordinary skill, and therefore applicants’ arguments are not persuasive.
Applicants indicate on page 4 of their Remarks that they will file a terminal disclaimer upon indication of allowable claims.
The Examiner notes that he cannot indicate allowable claims until a terminal disclaimer is filed, and therefore the nonstatutory double patenting rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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