DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/25/2025 has been entered.
Claim Objections
Claim 14 is objected to because of the following informalities: Claim 14 recites the phrase “the one or more lipids”. Applicants are advised to amend this phrase to recite “the at least one lipid”. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: Claim 17 recites the phrase “the one or more lipids”. Applicants are advised to amend this phrase to recite “the at least one lipid”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6, 8-9, 11-20, and23 are rejected under 35 U.S.C. 103 as being unpatentable over Craig (US 6,033,464) in view of Kaiser et al (US 6,124,377) and Von Der Fecht et al (US 2005/0053636).
Regarding claim 1, Craig discloses crayon comprising a writing composition comprising stearic acid, i.e. a fatty acid, and a wax known under the tradename KESTER WAX (Abstract, Column 10 – Table II, and Column 11 Lines 14-16). KESTER WAX is disclosed in Column 7 (Lines 25-40) as a fatty acid ester. Accordingly, the writing composition comprises a lipid comprising a wax, a fatty acid, and a fatty acid ester. The writing composition further comprises a colorant such as titanium dioxide (Column 10 Table 2 and Column 7 Lines 40-45). While the reference does not disclose titanium dioxide as premature color masking agent, given that the reference discloses the identical compound recited in the present claims as a premature color masking agent, it is the Office’s position that the titanium dioxide disclosed by the reference will necessarily function as a premature color masking agent.
The reference teaches all the claim limitations as set forth above. However, the reference does not disclose that the writing composition comprises a leuco dye as required by the present claims.
Kaiser et al discloses a marking system comprising a marking instrument which includes a color precursor in the form a leuco dye (Abstract). Writing with the marking instrument on the treated surface of a substrate produces color on the substrate corresponding to the selected color of the leuco dye intermediate (Column 2 Lines 1-4). Little or no color mark is developed by contacting the marking instrument with surfaces other than the treated surface, such as skin, clothing, carpeting, walls or other household surfaces (Column 2 Lines 4-8). The marking instrument can be of a number of different forms, including a crayon (Column 2 Lines 7-10). The composition of the marking instrument inhibits the development of color marks on unintended surfaces (Column 2 Lines 25-30).
Given that both Craig and Kaiser et al are drawn to marking compositions in the form of crayons, and given that Craig does not explicitly prohibit other ingredients, in light of the particular advantages provided by the use and control of the leuco dye as taught by Kaiser et al, it would therefore have been obvious to one of ordinary skill in the art to include the leuco dye in the writing composition disclosed by Craig in order to prevent to inhibit the development of color marks on unintended surfaces with a reasonable expectation of success.
In light of the above, it is clear that the combined disclosures of Craig and Kaiser et al disclose a writing composition for used with a substrate having a color-development coating as recited in the present claims.
While Craig discloses that the writing composition comprises hard waxes such as beeswax, the reference does not disclose that the writing composition comprises synthetic beeswax as recited in the present claim (Column 3 Lines 40-50).
Von Der Fecht et al discloses beeswax and synthetic waxes such as synthetic beeswax ([0043]). In view of Von Der Fecht‘s recognition that microcrystalline and synthetic beeswax are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute microcrystalline with synthetic beeswax and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Regarding claim 2, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Kaiser et al discloses that the marking composition comprises antioxidants such as Vitamin E and those known under the tradenames IRGANOX 1010 and TINUVIN (Column 4 Lines 34-50). The antioxidant is utilized in order to prevent premature oxidation of the leuco dye, i.e. prevent chromophore development during storage (Column 4 Lines 33-40).
Given that both Craig and Kaiser et al are drawn to marking compositions in the form of crayons, and given that Craig does not explicitly prohibit other ingredients, in light of the particular advantages provided by the use of the antioxidant as taught by Kaiser et al, it would therefore have been obvious to one of ordinary skill in the art to include the antioxidant in the writing composition disclosed by Craig in order to prevent premature oxidation of the leuco dye with a reasonable expectation of success.
Regarding claim 3, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the writing composition can comprise a filler (Column 8 Lines 42-55).
Regarding claim 4, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the filler is mica, i.e. a mineral filler (Column 8 Lines 42-55).
Regarding claim 5, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the filler is calcium carbonate (Column 8 Lines 42-55).
Regarding claim 6, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the writing composition comprises glitter (Column 8 Lines 3-4).
Regarding claim 8, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the writing composition comprises glitter in amount of about 3 to about 10 wt. %, overlapping the recited range of about 0.05 to about 5 wt. % (Column 8 Lines 36-40).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claim 9, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the writing composition comprises paraffin wax (Column 4 Lines 11-15).
Regarding claim 11, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that stearic acid, i.e. fatty acid, is present in the amount of about 30 to about 55 wt. % (Column 10 – Table II), overlapping the recited range of about 20 to about 50 wt. %.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claim 12, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. As discussed above, Craig discloses stearic acid.
Regarding claim 13, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the writing composition comprises myristyl myristate in the amount of about 2 to about 5 wt. % (Column 10 – Table II). Furthermore, the writing composition comprises the wax known under the tradename KESTER WAX K80D22 in the amount of about 1 to about 4 wt.%.
While the reference does not identify KESTER WAX K80D22 as a di-C20-40 alkyl dimer dilinoleate, attention is directed to Examples 4 to 7 (Column 13) which utilize a wax known under the tradename KESTER WAX K82D. This wax is this identical to the wax disclosed in the instant Specification as corresponding to di- C20-40 alkyl dimer dilinoleate.
From the discussion above, the reference discloses the combination of myristyl myristate and di- C20-40 alkyl dimer dilinoleate in an amount of about 3 to about 9 wt. %, within the recited range of about 0.1 to about 10 wt. %
Regarding claim 14, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the lipids, i.e. stearic acid, paraffin wax, carnauba wax, etc., are present in the amount of about 98 to about 85 wt. % (Column 10 – Table II), overlapping the recited range of about 90 to about 95 wt. %.
Kaiser discloses that the amount of the leuco dye is about 0.5 to about 6 wt. % (Column 3 Lines 6-10), overlapping the recited range of about 0.1 to about 5 wt. %.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claim 15, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Kaiser et al discloses that the amount of the antioxidant known under the tradename TINUVIN is utilized in the amount of about 2 wt. %, within the recited range of about 0.1 to about 10 wt. %.
Regarding claim 16, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the writing composition comprises a filler in the amount of about 5 to about 15 wt. % (Column 9 Lines 5-9), within the recited range of about 3 to about 25 wt. %.
Regarding claim 17, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig further discloses that the lipids, i.e. stearic acid, paraffin wax, carnauba wax, etc., are present in the amount of about 98 to about 85 wt. % (Column 10 – Table II), overlapping the recited range of about 77 to about 93 wt. %.
Kaiser discloses that the amount of the leuco dye is about 0.5 to about 6 wt. % (Column 3 Lines 6-10), overlapping the recited range of about 0.1 to about 5 wt. %, while antioxidants such as those known under the tradename TINUVIN are utilized in the amounts of about 2 wt. %, within the recited range of about 0.5 and about 3 wt. %.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claim 18, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the writing composition comprises a filler in the amount of about 5 to about 15 wt. % (Column 9 Lines 5-9), within the recited range of about 5 to about 20 wt. %.
Regarding claim 19, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses a crayon, i.e. a writing instrument, comprising the disclosed writing composition (Abstract).
Regarding claim 20, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the crayons are molded from the disclosed writing composition (Column 13 Lines 43-45). Although, the reference does not explicitly disclose that the crayons are produced via injection molding, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Craig meets the requirements of the claimed composition, the reference clearly meet the requirements of present claims.
Regarding claim 23, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses a crayon, i.e. a writing instrument (Abstract).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Craig (US 6,033,464), Kaiser et al (US 6,124,377), and Von Der Fecht et al (US 2005/0053636) as applied to claims 1-6, 8-9, 11-20, and 23 above and in view of Miller (US 5,352,282).
The discussion with respect to Craig, Kaiser et al, and Von Der Fecht et al as set forth in Paragraph 7 above is incorporated here by reference.
Regarding claim 6, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. However, Craig does not disclose that the writing composition comprises an anti-microbial or a fungicide preservative.
Miller discloses a color changing composition comprising a preservative such as a fungicide, i.e. a preservative, that is added to the composition in order to maintain the shelf life of the composition (Abstract and Column 8 Lines 64-68).
Given that both Craig and Miller are drawn to color changing compositions, and given that Craig does not explicitly prohibit other ingredients, in light of the particular advantages provided by the use and control of the fungicide as taught by Miller, it would therefore have been obvious to one of ordinary skill in the art to include such preservatives in the composition disclosed by Craig in order to maintain the shelf life of the writing composition with a reasonable expectation of success.
Regarding claim 7, the combined disclosures of the combined disclosures of Craig, Kaiser et al, Von Der Fecht et al, and Miller teach all the claim limitations as set forth above. Additionally, Miller discloses that the amount of the fungicide is about 0.1 to about 5.0 wt.%, within the recited range of about 0.05 to about 5 wt. % (Column 8 Lines 65-68 and Column 9 Lines 1-6).
Claims 21-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Craig (US 6,033,464), Kaiser et al (US 6,124,377), and Von Der Fecht et al (US 5,351,281) as applied to claims 1-6, 8-9, 11-20, and 23 above and in view of Wong (US 6,290,413).
The discussion with respect to Craig, Kaiser et al, and Von Der Fecht et al as set forth in Paragraph 7 above is incorporated here by reference.
Regarding claims 21-22, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the marking composition is in the form of a crayon. However, the reference does not disclose that the crayon is encased within a paper sheath as recited in the present claims.
Wong discloses that a conventional crayon is a stick of colored wax with a paper cover on the outside of the crayon to prevent the crayon from getting the use’s hand dirty. Accordingly, the reference discloses a crayon, i.e. a writing instrument, which is encased in paper sheath as recited in the present claims.
In view of this teaching, it would have been obvious to one of ordinary skill in the art use a paper sheath to encase the crayon disclosed by Craig as doing so would amount to nothing more than use of known element for crayon for its intended use, in a known environment to accomplish entirely expected results.
Regarding claim 24, the combined disclosures of Craig, Kaiser et al, and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Craig discloses that the marking composition is in the form of a crayon. However, the reference does not disclose that the crayon is encased within a paper sheath as recited in the present claims.
Wong discloses that a conventional crayon is a stick of colored wax with a paper cover on the outside of the crayon to prevent the crayon from getting the use’s hand dirty. Accordingly, the reference discloses a crayon, i.e. a writing instrument, which is encased in paper sheath as recited in the present claims.
In view of this teaching, it would have been obvious to one of ordinary skill in the art use a paper sheath to encase the crayon disclosed by Craig as doing so would amount to nothing more than use of known element for crayon for its intended use, in a known environment to accomplish entirely expected results.
Claims 1-12 and 14-24 are rejected under 35 U.S.C. 103 as being unpatentable over Allison et al (US 2019/0077175) in view of Von Der Fecht et al (US 2005/0053636)
Regarding claim 1, Allison et al discloses a writing composition capable of undergoing color development which brought into contact with a specific substrate (Abstract). The writing composition comprises at least one leuco dye (Abstract); one of more lipids including waxes such as microcrystalline wax, fatty acids, and fatty acid esters ( [0006] and [0017]).
The reference teaches all the claim limitations as set forth above; however, the reference does not disclose that the writing composition comprises synthetic beeswax as recited in the present claim.
Von Der Fecht et al discloses natural and synthetic waxes such as microcrystalline and synthetic beeswax ([0043]). In view of Von Der Fecht‘s recognition that microcrystalline and synthetic beeswax are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute microcrystalline with synthetic beeswax and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Regarding claim 2, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing composition comprises additives such as antioxidants ([0006]).
Regarding claim 3, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing composition comprises a mineral filler ([0015]).
Regarding claim 4, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. As discussed above, Allisson et al discloses that the filler is a mineral filler.
Regarding claim 5, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the mineral filler is calcium carbonate ([0015]).
Regarding claim 6, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing composition comprises additives such as scents and fungicides ([0023]-[0024]).
Regarding claim 7, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that fungicide is present in the composition in the amount from about 0.054 to about 5 %, identical to that recited in the present claim ([0023]).
Regarding claim 8, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing composition comprises scents in the amount of about 0.05 to about 5 wt. %, identical to that recited in the present claim ([0023]).
Regarding claim 9, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing composition comprises paraffin wax ([0018]).
Regarding claim 10, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing composition comprises paraffin wax in the amount of about 15 to about 45 wt. % ([0018]), overlapping the recited range of about 20 to about 50 wt. %. Microcrystalline wax is present in the amount from about 5 to about 20 wt. % ([0018]), overlapping the recited range of about 0.1 to about 10 wt. %.
As discussed above, Von Der Fecht et al discloses that natural and synthetic waxes such as microcrystalline and synthetic beeswax are equivalent and interchangeable. Accordingly, the combined disclosures of Allison et al and Von Der Fecht et al disclose a writing composition comprising synthetic beeswax in the amount from about 5 to about 20 wt. %, overlapping the recited range of about 0.1 to about 10 wt. %.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claim 11, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing composition comprises fatty acid in the amount of about 25 and 45 wt. %, within the recited range of about 20 about 50 wt. % ([0019]).
Regarding claim 12, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the fatty acid is stearic acid ([0019]).
Regarding claim 14, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the leuco dye comprises about 0.1 to about 5 wt. % of the writing composition ([0016]), identical to that recited in the present claims; the lipid comprises about 75 to 95 wt. % of the writing composition ([0017]), within the recited range of about 60 to about 95 wt. %.
Regarding claim 15, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the amount of the antioxidant is about 0.05 to about 5 wt. % ([0023]), overlapping the recited range of about 0.1 to about 10 wt. %.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claim 16, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing composition comprises a filler in the amount of about 3 to 15 wt. % ([0015]), within the recited range of about 3 to about 25 wt. %.
Regarding claim 17, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the leuco dye comprises about 0.5 to about 3 wt. % of the writing composition ([0016]), identical to that recited in the present claims; the lipid comprises about 77 to 93 wt. % ([0017]), identical to that recited in the present claims; and the amount of the antioxidant is about 0.05 to about 5 wt. % ([0023]), overlapping the recited range of about 0.5 to about 5 wt. %.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claim 18, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing composition comprises a filler in the amount of about 3 to 15 wt. % ([0015]), overlapping the recited range of about 5 to about 20 wt. %.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Regarding claim 19, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses a writing instrument comprising the disclosed writing composition (Abstract).
Regarding claim 20, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing instrument is produced via injection molding ([0026]).
Regarding claim 21, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing instrument in wrapped in a supportive sheath ([0026]).
Regarding claim 22, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the sheath is made of paper ([0026]).
Regarding claim 23, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing instrument is a crayon, i.e. in a crayon shape ([0026]).
Regarding claim 24, the combined disclosures of Allison et al and Von Der Fecht et al teach all the claim limitations as set forth above. Additionally, Allison et al discloses that the writing instrument in wrapped in a supportive paper sheath ([0026]).
Response to Arguments
Applicant's arguments filed 4/25/2025 have been fully considered but they are not persuasive.
Applicants argue that none of Craig, Kaiser, Miller, and Wang teaches or suggests such limitation in as-amended Claim 1. However, in the rejections set forth above, the deficiencies of Craig are remedied by Von Der Fecht et al which discloses that beeswax and synthetic waxes such as synthetic beeswax are equivalent and interchangeable.
Applicants argue that claim 1 has been amended to recite the limitation of "at least one premature color masking agent comprising titanium dioxide", and therefore, all as-amended claims in the present application are fully, explicitly supported in the written description of Allison. However, it is significant to noted that Page 6 of the as-filed parent application (Application No. 15/976,181) discloses that:
“[t]itanium dioxide masks or disguises premature development of color to prevent development of stains or marks on any surfaces other than that of the substrate”
and the parent application does not disclose that the premature color masking agent comprises titanium dioxide as recited in the present claims. That is, the parent application discloses that the titanium dioxide is the premature color masking agent, and not that the premature color masking agent comprises titanium dioxide. By reciting that the premature color masking agent comprises titanium dioxide, the premature color masking agent recited in claim 1 is open to the inclusion of additional ingredients which is simply not disclosed in the parent application. Rather, a fair reading of the parent application reveals that titanium dioxide is the color masking agent.
It is further significant to note that the parent application does not disclose “synthetic beeswax” as recited in instant claim 1. While the parent application discloses waxes such as paraffin wax, microcrystalline wax, soy wax, any disclosure of “synthetic beeswax” is conspicuous by its absence in the parent application.
It is for the above reasons that the instant application has been denied the effective filing date of that earlier parent application.
Applicants point to MPEP 2152.01(8) which states that any claims which are fully supported under 35 U.S.C. § 112 by the earlier parent application have the effective filing date of that earlier parent application. However, for the reasons discussed above, namely the recitations of “at least one premature color masking agent comprising titanium dioxide” and “synthetic beeswax”, the instant application has been denied the effective filing date of that earlier parent application.
Applicants argue that Van Der Fecht does not recognize microcrystalline and synthetic beeswax as being equivalent, and instead, the reference discloses that synthetic beeswax may comprise 5-25% by weight microcrystalline petroleum wax. Paragraph [0045] of Van Der Fecht. However, while Paragraph [0045] of Van Der Fecht may disclose that synthetic beeswax may comprise 5-25% by weight microcrystalline petroleum wax, the fact remains that Paragraph [0043] of the reference discloses waxes including beeswax, microcrystalline wax and synthetic beeswax. To that end it is noted that as set forth in the rejections above, Craig discloses that the writing composition comprises beeswax, while Von Der Fecht et al is utilized for its disclosure that beeswax and synthetic beeswax are equivalent and interchangeable.
Furthermore, Von Der Fecht et a is only used as teaching reference in order to teach beeswax and synthetic beeswax are equivalent and interchangeable. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicants argue that microcrystalline wax and synthetic beeswax are derived from different sources and have different properties, e.g., different melting points as disclosed in the Final Report on the Safety Assessment of Fossil and Synthetic Waxes (Journal of the American College of Toxicology 43-99 (1984) ). However, it is firstly noted that Applicants have not proffered this reference. However, in the interests of compact prosecution, a copy of this reference is found attached to this Office Action.
Secondly, it is noted that while microcrystalline wax and synthetic beeswax may be derived from different sources and may have different properties, the fact remains that Von Der Fecht et al discloses such waxes as equivalent and interchangeable. Thirdly, it is noted that as set forth in the current rejections, Craig discloses that the writing composition comprises beeswax, while Von Der Fecht et al is utilized for its disclosure that beeswax and synthetic beeswax are equivalent and interchangeable.
Finally, it is noted that Applicants have not proffered any evidence, i.e. data, that supports their position that the substitution of one of the waxes disclosed by Craig for synthetic beeswax would affect the instantly claimed composition, i.e. that the waxes are not equivalent and interchangeable in the instantly claimed writing composition. To that end it is it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the interchangeability of beeswax and synthetic beeswax must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Applicants argue that a disclosed by Final Report on the Safety Assessment of Fossil and Synthetic Waxes, microcrystalline wax is a mixture of long-chain, saturated hydrocarbons of high molecular weight and is tough, non-lustrous, and greasy, with high tensile strength and a melting point of 63 °C to 90 °C, while synthetic beeswax is a blend of fatty esters (C32-C62), fatty acids (C15-C35), fatty alcohols (C15-C35), and high molecular weight hydrocarbons (C21-C34) and its properties and methods of analysis mimic the natural product (see Page 92 and Page 80 – Table17); therefore, it would not have been obvious to one of ordinary skill in the art to
substitute microcrystalline with synthetic beeswax in order to arrive at the present invention. However, as set forth in the current rejections Craig discloses that the writing composition comprises beeswax, while Von Der Fecht et al is utilized for its disclosure that beeswax and synthetic beeswax are equivalent and interchangeable.
It is further noted that Applicants have not proffered any evidence, i.e. data, that supports their position that the substitution of one of the waxes disclosed by Craig for synthetic beeswax would affect the instantly claimed composition, i.e. that the waxes are not equivalent and interchangeable in the instantly claimed writing composition. To that end it is it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding the interchangeability of beeswax and synthetic beeswax must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER C. KOLLIAS whose telephone number is (571)-270-3869. The examiner can normally be reached on Monday-Friday, 8:00 AM – 5:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached on 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER C KOLLIAS/Primary Examiner, Art Unit 1786