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 .
Response to Amendment
Withdrawn Objections/Rejections
The 35 U.S.C. 103 rejections of claims 7, 11-12 over the primary reference of Kitazawa are withdrawn due to Applicant’s amendment in the response filed on October 29, 2025.
New Rejections
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa (US 5,595,700).
Regarding claim 7, Kitazawa teaches a core for writing, drawing and/or painting implements (pencil leads, item 7, col 3, lines 33-43), comprising: at least one binder; at least one wax; at least one coloring substance; and at least one filler (coloring agent, item 7, col 3, lines 33-43), wherein the core is a colored pencil core (color pencil lead, item 7, col 3, lines 33-43), wherein the at least one coloring substance is a color pigment (coloring … pigment, col 5, lines 3-5), wherein the at least one binder is unsubstituted hydroxypropyl cellulose (HPC) (item 4, col 3, lines 12-16). Kitazawa fails to give an example where the content of hydroxypropyl cellulose is within the claimed range of 16 to 28 weight%.
However, Kitazawa teaches that the unsubstituted hydroxypropyl cellulose (HPC) is a species of a group of cellulose derivatives that are suitable for use as the binder material (cellulose derivatives such as carboxymethyl cellulose, cellulose acetate, col 4, lines 38-42). Kitazawa teaches in working examples, that an exemplary lower limit of a content of cellulose derivative used as the binder material is 6 weight% (carboxymethyl cellulose, Example 1, col 6, lines 54-60), and that an exemplary upper limit of a content of cellulose derivative used as the binder material is 40 weight% (cellulose acetate, Example 3, col 8, lines, 20-25), such that a content of the cellulose derivative, and hence the HPC binder in this case, is within an obvious to try range having a lower limit of 6 weight% and an upper limit of 40 weight%, which contains the claimed range of 16 to 28 weight%. Kitazawa teaches that the content of cellulose derivative binder is varied for the purpose of providing the core for writing, drawing and/or painting implements, with the desired combination of bending strength, pointed end strength and smooth writing performance (col 2, lines 45-52, col 4, lines 38-51), thus establishing the content of cellulose derivative binder, and hence the HPC binder in this case, as a result-effective variable.
Accordingly, in the absence of a clear showing to the contrary, it would have been routine experimentation by, and hence obvious to one of ordinary skill in the art at the time, to have optimized a content of the HPC binder, from one that is within an obvious to try range of 6 to 40 weight%, to one that is within a narrower more focused range of 16 to 28 weight%, in the core for writing, drawing and/or painting implements of Kitazawa, in order to obtain the desired combination of bending strength, pointed end strength and smooth writing performance, as taught by Kitazawa.
In addition, Kitazawa teaches a working example in which the core comprises a content of the fillers of 35 weight% (Talc, Example 3, col 8, lines 20-25) which is within the claimed range of 9 to 50 weight%.
In addition, Kitazawa teaches in the same working example, that the core further comprises the coloring substance in a content of 20 weight% (pigment, Example 3, col 8, lines 20-25) which is outside the upper limit of the claimed range of 1.5 to 14 weight%, and hence fails to teach the claimed range.
However, although Kitazawa does not include in the working example, a content of the wax after the core has been impregnated with the wax (Example 3, col 8, lines 20-25), Kitazawa does so in the comparative example (calcium stearate, Comparative Example 4, col 8, lines 42-48), in which the working step of impregnating the core with the wax is omitted since the wax is included with the other ingredients in the starting core composition (col 5, lines 33-37). Kitazawa teaches that the content of the coloring substance is decreased to 15 weight% (Comparative Example 4, col 8, lines 42-48) which is just outside the upper limit of the claimed range of 1.5 to 14 weight%, to accommodate a content of the wax after the core has been impregnated with the wax (col 5, lines 33-37), for the purpose of providing the core for writing, drawing and/or painting implements, with the desired combination of bending strength, pointed end strength and smooth writing performance (col 2, lines 45-52, col 4, lines 38-51), thus establishing the content of the coloring substance as a result-effective variable.
Therefore, in an absence of a clear showing to the contrary, it would have been routine experimentation by, and hence obvious to one of ordinary skill in the art at the time, to have adjusted the content of the coloring substance in the core for writing, drawing and/or painting implements of Kitazawa, from 15 weight%, to one that is within a range of 1.5 to 14 weight%, to accommodate a content of the wax after the core has been impregnated with the wax, in order to obtain the desired combination of bending strength, pointed end strength and smooth writing performance, as taught by Kitazawa.
In addition, Kitazawa teaches that the binder is preferably water-soluble (preferable, col 4, lines 40-50), and is unsubstituted HPC which is water-soluble, as described in Applicant’s specification (HPC is a derivative of cellulose and is soluble in both water, 2nd last para of page 4), such that the core is water-soluble and hence is water-colorable, as defined in the specification (designed to be water-soluble and water-colorable, lines 6-7 of page 5; core has 7 to 45 weight% HPC (binder.1), 5 to 65 weight% fillers, lines 15-20 of page 5; filler is … a mineral filler … talc, second para of page 6).
Regarding claim 11, Kitazawa teaches a method for producing the core (pencil lead, col 8, lines 35-40, binder is at least one selected from … hydroxypropyl cellulose (HPC), item 4, col 3, lines 12-16) comprising forming the core by extrusion (monoaxial screw type extruder, col 8, lines 33-40).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kitazawa as applied to claims 7, 11 above, and further in view of Thies (US 2011/0118383).
Kitazawa teaches a method for producing the core (pencil lead, col 8, lines 35-40, binder is at least one selected from … hydroxypropyl cellulose (HPC), item 4, col 3, lines 12-16) comprising the steps of: mixing (mixed and dispersed, Example 3, col 8, lines 28-29) and granulating all components of the core to a core granulate (pelleted, Example 3, col 8, line 60); extruding the core granules in an extruder through a mouthpiece to form core strands (extruded through a monoaxial screw type extruder, Example 3, col 8, lines 28-29), the above steps being carried out without using water (methyl ethyl ketone is added in the absence of water, Example 3, col 8, lines 20-30).
Kitazawa fails to teach that the step of extruding the core granules in an extruder through a mouthpiece to form core strands, is at a temperature within a range of 100 to 180[Symbol font/0xB0]C to form endless core strands, being silent regarding a temperature during the step of extruding the core granules in an extruder through a mouthpiece to form the core strands, and a length of the core strands; and fails to teach the steps of cooling and solidifying the endless core strands; and cutting the endless core strands to a given length.
However, Kitazawa teaches that the method is for producing the core (pencil lead, col 8, lines 35-40, binder is at least one selected from … hydroxypropyl cellulose (HPC), item 4, col 3, lines 12-16), and that extruded core strands are treated at a temperature of 120[Symbol font/0xB0]C (col 8, lines 34-40) which is within the claimed temperature range of 100 to 180[Symbol font/0xB0]C.
Thies teaches that a method for producing a core (pencil lead ([0032]) comprising a step of mixing and granulating all components of the core to a core granulate (pencil lead granulate [0034]), further comprises a step of extruding the core granules in an extruder through a mouthpiece to form endless core strands (endless pencil lead strands [0035]) at a temperature of 130[Symbol font/0xB0]C ([0035]) which is within the claimed range of 100 to 180[Symbol font/0xB0]C; followed by a step of cooling and solidifying the endless core strands ([0036]); and a step of cutting the endless core strands to a given length (required pencil length [0037]), the above steps being carried out without using water (absence of water in the entire reference), for the purpose of providing a working high-production manufacturing method.
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have provided a step of extruding the core granules in an extruder through a mouthpiece to form endless core strands at a temperature that is within a range of 100 to 180[Symbol font/0xB0]C, as the step of extruding the core granules in an extruder through a mouthpiece to form core strands, followed by a step of cooling and solidifying the endless core strands and a step of cutting the endless core strands to a given length, the above steps being carried out without using water, in the method for producing the core of Kitazawa, in order to obtain the desired working high-production manufacturing method, as taught by Thies.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that although Kitazawa does disclose a number of different cellulose derivatives, including hydroxypropyl cellulose, there is absolutely no teaching provided regarding the content of hydroxypropyl cellulose.
Applicant is respectfully apprised that Kitazawa teaches that the unsubstituted hydroxypropyl cellulose (HPC) is a species of a group of cellulose derivatives that are suitable for use as the binder material (cellulose derivatives such as carboxymethyl cellulose, cellulose acetate, col 4, lines 38-42). Kitazawa teaches in working examples, that an exemplary lower limit of a content of cellulose derivative binder is 6 weight% (carboxymethyl cellulose, Example 1, col 6, lines 54-60) and that an exemplary upper limit of cellulose derivative binder is 40 weight% (cellulose acetate, Example 3, col 8, lines, 20-25), such that a content of the HPC binder is within an obvious to try range having a lower limit of 6 weight% and an upper limit of 40 weight%, which contains the claimed range of 16 to 28 weight%. Kitazawa teaches that the content of cellulose derivative binder is varied for the purpose of providing the core for writing, drawing and/or painting implements, with the desired combination of bending strength, pointed end strength and smooth writing performance (col 2, lines 45-52, col 4, lines 38-51), thus establishing the content of HPC binder as a result-effective variable.
Accordingly, in the absence of a clear showing to the contrary, it would have been routine experimentation by, and hence obvious to one of ordinary skill in the art at the time, to have optimized a content of the HPC binder, from one that is within an obvious to try range of 6 to 40 weight%, to one that is within a narrower range of 16 to 28 weight%, in the core for writing, drawing and/or painting implements of Kitazawa, in order to obtain the desired combination of bending strength, pointed end strength and smooth writing performance, as taught by Kitazawa.
Applicant argues that when viewing the various examples provided by Kitazawa, different amounts of cellulose derivatives are required depending on which cellulose derivative is being used, such that the 6 weight % and 40 weight% of other derivatives gives no indication of how much hydroxypropyl cellulose should be used.
Applicant is respectfully apprised that Kitazawa discloses hydroxypropyl cellulose specifically as part of the group of cellulose derivatives suitable for use as binders in the core for writing, drawing and/or painting implements, such that the exemplary lower limit of 6 weight % and the exemplary upper limit of 40 weight% are the most obvious upper and lower weight % values of a range to try, to optimize for the purpose of providing the desired combination of bending strength, pointed end strength and smooth writing performance, taught by Kitagawa.
Applicant argues that there is nothing that indicates that the binding agents are directly interchangeable in the same concentrations.
Applicant is respectfully apprised that Kitazawa discloses hydroxypropyl cellulose specifically as part of the group of cellulose derivatives suitable for use as binders in the core for writing, drawing and/or painting implements, such that the exemplary lower limit of 6 weight % and the exemplary upper limit of 40 weight% are the most obvious upper and lower weight % values of a range to try, to optimize for the purpose of providing the desired combination of bending strength, pointed end strength and smooth writing performance, taught by Kitagawa.
Applicant argues that determining the correct amount of 16 to 28 weight% is well beyond routine experimentation.
Applicant is respectfully apprised that Kitazawa discloses hydroxypropyl cellulose specifically as part of the group of cellulose derivatives suitable for use as binders in the core for writing, drawing and/or painting implements, such that the exemplary lower limit of 6 weight % and the exemplary upper limit of 40 weight% are the most obvious upper and lower values of a range of the hydroxypropyl cellulose weight% to try, to optimize for the purpose of providing the desired combination of bending strength, pointed end strength and smooth writing performance, as taught by Kitagawa.
Accordingly, in the absence of a clear showing to the contrary, it would indeed have been routine experimentation by, and hence obvious to one of ordinary skill in the art at the time, to have optimized a content of the cellulose derivative binder, which is the HPC binder in this case, from one that is within an obvious to try range of 6 to 40 weight%, to one that is within a narrower more focused range of 16 to 28 weight%, in the core for writing, drawing and/or painting implements of Kitazawa, in order to obtain the desired combination of bending strength, pointed end strength and smooth writing performance, as taught by Kitazawa.
Applicant has not demonstrated using comparative data that the narrower range of 16 to 28 weight%, for the hydroxypropyl cellulose binder, provides unexpectedly superior results for the core for writing, drawing and/or painting implements, that takes the narrower range out of the realm of routine experimentation.
Applicant’s arguments regarding the secondary reference of Thies are directed towards the valid use of Kitazawa as the primary reference, and are addressed above.
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 should be directed to Sow-Fun Hon whose telephone number is (571)272-1492. The examiner is on a flexible schedule but can usually be reached during a regular workweek between the hours of 10:00 AM and 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Aaron Austin, can be reached at (571)272-8935. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782