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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-12, and 19-21 are 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.
The original disclosure does not container any support for the limitation “the ink of the refill component does not include the metal and X-ray detectable material such that the refill component or fragment thereof is rendered metal and X-ray detectable by the metal and X-ray detectable material included in the walls of the refill component regardless of whether the refill component includes ink in the reservoir”.
The only mention in the original disclosure of the presence/absence of metal and X-ray detectable material in the ink is on page 8 of the specification, which says “In addition to the metal detectable material being added to the walls of the reservoir of the internal component or refill it is possible that the ink may also include a material which renders the same detectable by X ray or metal detection apparatus when the component is within the detection range of the apparatus.” This is not a statement that the ink does not include the metal or X-ray detectable material.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 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.
Claim(s) 1, 4-5, 7-12, and 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Otsubo (US 9365732) in view of Masuda (US 2014/0291178) and Boyd (US 8847930).
Regarding claim 1, Otsubo teaches a writing implement comprising: a refill component (1) comprising a reservoir (20) holding ink (5); wherein the refill component is separate from and selectively removeable from a housing and provided with location means (10) to allow the same to be selectively located within a housing and removeable from the same, the refill component extending along at least part of a longitudinal axis of a housing, the reservoir is defined by walls (2) of the refill component, and the walls include at least one material detectable by metal and X-ray detection apparatus (resin mixed with aluminum powder, col. 16, ll. 1-11) when the refill component or fragment thereof is within a detection range of the detection apparatus, and wherein the at least one material used to form the walls of the refill component is a plastic material with a quantity of metal and X-ray detectable material located therein (aluminum powder, col. 16, ll. 1-11), wherein the detectable material is spread throughout the plastics material in a ‘substantially uniform dispersal’ such that the internal component or a fragment of the internal component which may be detached from the internal component is ‘detectable’ (“a resin having mixed therein an aluminum powder” implies a substantially uniform material) when the internal component is not inside a housing to be replaced by a user in use or during use of the writing instrument, wherein the ink of the refill component does not include the metal and X-ray detectable material (aluminum is listed as an optional pigment in col. 5, ll. 14-29, but there is no other mention of aluminum in the ink composition) such that the refill component or fragment thereof is rendered metal and X-ray detectable by the metal and X-ray detectable material included in the walls of the refill component regardless of whether the refill component includes ink in the reservoir.
Otsubo does not teach an unsealed housing having at at least one end thereof, an opening through which a portion of the refill component substantially located within the housing passes so as to allow ink held in the reservoir in the internal component to be supplied from the reservoir and applied to a surface via the portion while the housing is held by a user; wherein the internal component is separate from the housing, or that the metal and X-ray detectable material is included in the wall of the internal component in a powder form and a particle size of the majority of the powder is below 200 microns and above 1 micron and the quantity of the powder quantity is between 3% and 6% of the volume of the refill component.
Boyd teaches an unsealed housing (14) having at at least one end thereof, an opening (24) through which a portion of a refill component (13) substantially located within the housing passes so as to allow ink held in the reservoir in the internal component to be supplied from the reservoir and applied to a surface via the portion while the housing is held by a user; wherein the refill component is separate and selectively removeable from the housing (Fig. 17).
Masuda teaches a resin composition with aluminum powder, wherein the aluminum powder is provided for inclusion in the wall of the internal component in a powder form, and a particle size of a majority of the powder is below 200 microns and above 1 micron (5-200 microns, ¶0060).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have combined the internal component of Otsubo with the housing of Boyd, wherein doing so would merely be a matter of using a known pen refill with a known pen in a conventional manner.
Furthermore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have used the resin composition taught by Masuda, including a metal and/or X-ray detectable material in a powder form, and a particle size of a majority of the powder is below 200 microns and above 1 micron as the wall of Otsubo’s internal component, wherein doing so would merely be a matter of selecting a known material suitable for use as a tube container.
Masuda discloses that the concentration of the aluminum needs to be optimized to provide oxygen absorbing ability without increasing the viscosity too much (¶0078). As seen in Masuda, the concentration of aluminum is disclosed to be a result effective variable in that it directly affects both the ability of the material to absorb oxygen and the workability of the material in forming. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify the device of Otsubo by making the concentration of aluminum powder be between 3% and 6% of the volume of the refill component as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 4, the combination of Otsubo, Masuda, and Boyd teaches the refillable writing implement according to claim 1 wherein the at least one detectable material is provided in a ‘sufficient quantity’ to render the writing implement detectable by the detection apparatus when the said refill component is located in the housing.
Regarding claim 5, the combination of Otsubo Masuda, and Boyd teaches the refillable writing implement according to claim 1 wherein the at least one detectable material is a metal or a metal alloy which is of a type which can be detected by metal detection apparatus (Otsubo, aluminum).
Regarding claim 7, the combination of Otsubo Masuda, and Boyd teaches the refillable writing implement according to claim 1 wherein the portion of the refill component includes a means to allow a controlled flow of ink from the reservoir onto the surface when the portion of the internal component is contacted onto the surface (ball 11).
Regarding claim 8, the combination of Otsubo Masuda, and Boyd teaches the refillable writing implement according to claim 7 but does not teach that at the end of the implement opposing said portion of the internal component there is provided a cap locatable with a retraction mechanism to allow the refill component to be linearly movable with respect to the housing between an extended, in-use position and a retracted, storage position.
Boyd teaches an implement with a cap (42) locatable with a retraction mechanism (44) to allow said refill component to linearly movable with respect to the housing between an extended, in-use position and a retracted, storage position.
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have provided the internal component of Otsubo with an implement comprising a cap locatable with a retraction mechanism to allow said internal component to linearly movable with respect to the housing between an extended, in-use position and a retracted, storage position for the purpose of protecting the pen tip when not in use.
Regarding claim 9, the combination of Otsubo, Masuda, and Boyd teaches the refillable writing implement according to claim 8 wherein the retraction mechanism is biased towards the retracted, storage position (Boyd, via spring 17) and includes a locating means (Boyd, 44) to retain the internal component in an in-use position when selected.
Regarding claim 10, the combination of Otsubo, Masuda, and Boyd teaches the refillable writing implement according to claim 1 but does not teach that the housing is provided in a two-part form with engagement means which, when released, allow the two-part form to be separated and allow the refill implement to be replaced when required.
Boyd teaches an implement with a housing (14 and 28) that is provided in a two-part form with engagement means (threads 29 in Fig. 17) which, when released, allow the said parts to be separated and allow the refill component to be replaced when required.
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have used the internal component of Otsubo with the implement of Boyd including a housing that is provided in a two-part form with engagement means which, when released, allow the said parts to be separated and allow the refill component to be replaced when required for the purpose of reducing the air space within the pen housing (Boyd, col. 9, ll. 32-39).
Regarding claim 11, the combination of Otsubo, Masuda, and Boyd teaches the refillable writing implement according to claim 1 but does not teach that the at least one material used to form the said housing and/or the component walls includes an antimicrobial material.
Boyd teaches a writing implement with a housing (20) formed with an antimicrobial material (copper, col. 5, Il. 39-56).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have combined the refill component of Otsubo with the housing of Body including an antimicrobial material for the purpose of enabling the housing to be used as a stylus for touchscreens (Boyd, col. 3, Il. 12-15).
Regarding claim 12, the combination of Otsubo, Masuda, and Boyd teaches the refillable writing implement according to claim 1 wherein the metal detectable and/or X-ray detectable material is mixed with plastics material when the same is in a liquid form, and then the mix is used to form the walls of the reservoir of the internal component.
The limitation “the metal detectable and/or X-ray detectable material is mixed with plastics material when the same is in a liquid form and then the mix is used to form the walls of the said reservoir of the internal component” is being interpreted as a product-by-process limitation. As set forth in MPEP 2113, product-by-process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113.
In this case, the walls of Otsubo would form the claimed reservoir whether the metal was mixed with liquid plastic or not. Otsubo therefore reads on the claim.
Regarding claim 19, the combination of Otsubo, Masuda, and Boyd teaches the refillable writing implement according to claim 18 wherein the particle size is in the range of 50 to 200 microns (Masuda, ¶0060).
Regarding claim 20, the combination of Otsubo, Masuda, and Boyd teaches the refillable writing implement according to claim 19 wherein the particles size is in the range of 50 to 100 microns (Masuda, ¶0060).
Regarding claim 21, the combination of Otsubo, Masuda, and Boyd teaches a refillable writing implement as recited in claim 1 above, but does not teach a set comprising a plurality of refill components.
The difference between the claim and the prior art is providing one refill versus providing a plurality of refills.
It has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). In this case, each of the claimed plurality of refills fulfills the same function and is operated in the same way as the single refill of Otsubo, Masuda, and Boyd.
One of ordinary skill in the art at the effective filing date of the claimed invention would therefore find it obvious to provide the combination of Otsubo, Masuda and Boyd with a plurality of refill components, wherein doing so would merely be a matter of duplication of parts with predictable results.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Otsubo and Masuda as applied to claim 1 above, and further in view of Grothe (US 2009/0318594).
Regarding claim 6, the combination of Otsubo, Masuda, and Boyd teaches the refillable writing implement according to claim 1 but does not teach that the at least one detectable material is a barium material.
Grothe teaches a plastic composite containing a barium material (barium sulfate).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have provided the plastic composite material of Otsubo with barium sulfate as taught by Grothe for the purpose of increasing the flexibility and flexural strength of the composite (Grothe, ¶ 0008).
Response to Arguments
Applicant's arguments filed 06 January 2026 have been fully considered but they are not persuasive.
Applicant argues that Otsubo does not teach including aluminum powder in the walls of the refill to render the refill detectable.
In response, it is noted that Applicant has not pointed out a structural or functional difference between Otsubo’s refill and the claimed refill. The presence of aluminum powder mixed into the polymer must render the refill detectable.
Applicant argues that Otsubo does not teach a refill.
Examiner disagrees. The figures of Otsubo clearly show a refill. Examiner also notes the similarities of shape between the refill in Otsubo’s figures and the refills in Boyd’s figures.
Applicant argues that Masuda teaches that the container must be prepared in an oxygen-less environment and points to paragraph [0103].
Examiner disagrees. Paragraph [0103] in its entirety reads: “Oxygen Absorbing Multilayered Body”, which does not support Applicant’s assertion at all. Furthermore, Applicant appears to misunderstand Masuda’s teaching about the oxygen-absorbing material disadvantageously immediately oxidized and deteriorated in the air and thus may if necessary be stored in water. Masuda teaches merely that the aluminum, before being mixed with the resin, should be stored out of contact with oxygen (see ¶0070-0071). There is no teaching that the final product of a container made of the mix of aluminum and resin should be stored under water.
Applicant argues that Masuda teaches away from the claimed “unsealed housing”.
In response, it is noted that neither Otsubo nor Masuda is relied upon to teach the unsealed housing.
Applicant argues that the art does not teach a refill with 3%-6% of a detectable material by volume.
In response, it is noted that this limitation is being rejected as being a matter of routine optimization.
Applicant argues that the prior art does not teach an ink that does not include the metal and X-ray detectable material.
In response, it is noted that Otsubo does not teach that aluminum is a required component of the ink.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BRADLEY S OLIVER whose telephone number is (571)270-3787. The examiner can normally be reached Monday-Friday, 7-3 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Angwin can be reached at (571)270-3735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754
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