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 .
Response to Amendment
The amendment filed 2/17/2026 has been entered. Amended Claims 16 and 33 have been noted in addition to canceled Claims 31-32 and new Claims 38-39. Claims 16-30, 33 and 36-39 are currently pending.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“an ignition mechanism for generating a heat source” (Claim 16)
“an actuating means for activating the ignition mechanism” (Claim 16)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
“an ignition mechanism for generating a heat source” (from Claim 16) is being interpreted as a mechanism comprising a wheel, a flint and a gas valve, and equivalents thereof
“an actuating means for activating the ignition mechanism” (from Claim 16) is being interpreted as a lever, and equivalents thereof
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, 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.
Claims 16-30, 33 and 36-39 are rejected under 35 U.S.C. 103 as being unpatentable over Wilkinson (US 4,176,773) in view of Lazaroff et al. (US 2006/0081639 A1) (hereinafter “Lazaroff”), Nakashima et al. (US 2017/0088737 A1) (hereinafter “Nakashima”), Fischer et al. (US 2010/0234494 A1) (hereinafter “Fischer”) and Tahta et al. (US 2014/0349846 A1) (hereinafter “Tahta”).
Regarding Claim 16, Wilkinson teaches of a handheld lighter (32) for igniting a combustible material (“butane”) (see at least Col. 2 lines 33-61 and Fig. 2) comprising:
an ignition mechanism for generating a heat source (ignition mechanism comprising “wheel 44”, “flint” and “valve” that releases “gas”) (see at least Col. 2 lines 33-61 and Fig. 2);
an actuating means for activating the ignition mechanism (actuating means comprising “gas lever 46”); and
a metallic shield (“metal shield 38”) positioned adjacent to the ignition mechanism and at a distance to the ignition mechanism such that the metallic shield is heated by the heat source when the handheld lighter is operated (see at least Col. 2 lines 33-61 and Fig. 2).
Wilkinson fails to explicitly teach that the metallic shield comprises a thermochromic coating wherein the thermochromic coating is configured to change color in response to an increase of the temperature of the metallic shield to a first temperature of about 60 °C or above and to change color in response to a decrease of the temperature of the metallic shield to a second temperature which is about 1 to about 20 °C below the first temperature.
Lazaroff seeks to solve the same problem of the inventor of being able to warn a user when a metallic portion of a handheld product becomes too hot to touch (see at least Abstract and Fig. 1) and discloses a relatable handheld product (10) with a metallic portion (12) that becomes hot during use (see at least [0029], [0041], Claim 35 and Fig. 1). Lazaroff teaches that the metallic portion (12) that becomes hot during use comprises a thermochromic coating (“coating” containing “thermochromic material”) (see at least [0029]-[0032] and Fig. 1), wherein the thermochromic coating is configured to change color in response to an increase of the temperature of the metallic portion to a first temperature of about 60 °C or above (e.g. “65 °C”) and to change color in response to a decrease of the temperature of the metallic shield to a second temperature which is about 1 to about 20 °C below the first temperature (e.g., “2-4 °C” less than the first temperature which is within the claimed range) (see at least [0038] and Fig. 1). Lazaroff teaches that coating the metallic portion that becomes hot during use with a thermochromic coating provides the advantage of providing a “visual indication to the user” of whether or not the surface of the heated metallic portion is “unsafe to touch” (see at least [0034] and Fig. 1).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the apparatus taught by Wilkinson by coating the existing metallic portion that becomes heated during use (i.e., the existing metallic shield) with a thermochromic coating based on the teachings of Lazaroff, wherein the thermochromic coating is configured to change color in response to an increase of the temperature of the metallic shield to a first temperature of about 60 °C or above and to change color in response to a decrease of the temperature of the metallic shield to a second temperature which is about 1 to about 20 °C below the first temperature as is also taught by Lazaroff. Doing so would have provided means for providing a visual indication to the user of whether or not the surface of the heated metallic portion is unsafe to touch thereby enhancing safety of the apparatus. Note that such modification would have necessarily resulted in the metallic shield comprising a thermochromic coating as claimed.
Furthermore, Wilkinson (and Lazaroff) fail to explicitly teach that the thermochromic coating comprises “(a) an electron-donative organic compound (component (a)), (b) an electron-accepting compound (component (b)), and (c) a reaction medium enabling a reversible electron transfer reaction between the components (a) and (b) above the melting or softening point of the reaction medium (component (c))”, wherein, “during the decrease of the temperature of the metallic shield to the second temperature, component (c) surrounds and isolates component (a) and component (b)”.
Nakashima discloses a relatable “thermochromic” coating and apparatus for applying the same to any desired “target surface” (see at least Abstract, [0076] and Figs. 1, 3). Nakashima teaches that the thermochromic coating comprises an electron-donative organic compound (“Component (A)”), an electron-accepting compound (“Component (B)”), and a reaction medium enabling a reversible electron transfer reaction between the components (a) and (b) above the melting or softening point of the reaction medium (“Component (C)”) (see at least Abstract, [0063], [0283] and Figs. 1, 3); wherein the thermochromic coating is configured to change color in response to an increase of temperature to a first temperature of about 60 °C or above (see at least [0067]-[0074] and Fig. 1) and to change color in response to a decrease of the temperature to a second temperature below the first temperature (see at least [0067]-[0074] and Fig. 1). Nakashima also teaches that, during the decrease of the temperature to the second temperature, component (c) surrounds and isolates component (a) and component (b) (Note that in light of the specification, component (c) surrounding and isolating component (a) and component (b) is being interpreted as component (c) being in the form of a solvent at temperatures above the second temperature such that component (a) and component (b) each become a solute within the solvent wherein component (c) in solvent form thereby surrounds and isolates each of component (a) and component (b). In the instant case, Nakashima teaches that component (c) is a “solvent” at temperatures above the second temperature that performs the same function of color change in the same fashion. Thus, component (c) in solvent form at temperatures above the second temperature (which necessarily includes during a decrease of the temperature to the second temperature temperature) necessarily surrounds and isolates component (a) and component (b) to achieve the function of color change (see at least [0503]-[0505] and Figs. 1-2). Nakashima accordingly meets this limitation as claimed.). Nakashima teaches that a thermochromic coating of this type is advantageous because, inter alia, even if an image formed by the coating “is left to stand in an unintendedly high temperature environment, the image is not decolored and remains visible” (see at least [0039]-[0042] and Fig. 1).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have further modified the combined apparatus taught by configuring the existing thermochromic coating to comprise an electron-donative organic compound (“Component (A)”), an electron-accepting compound (“Component (B)”), and a reaction medium (“Component (C)”) enabling a reversible electron transfer reaction between the components (A) and (B) above the melting or softening point of the reaction medium wherein the reaction medium becomes a solvent as is taught by Nakashima. Doing so would have enabled an image formed by the coating to remain visible even if the coating was subject to an unintendedly high temperature environment. Note that such modification would have necessarily resulted in the thermochromic coating of the combined apparatus comprising the composition as claimed.
Furthermore, Wilkinson (in addition to Lazaroff and Nakashima) fails to explicitly that component (c) includes a nucleation agent, wherein the nucleation agent increases a speed of the color change relative to a thermochromic coating without the nucleation agent.
Fischer discloses a relatable reversibly thermochromic composition that can be applied to a desired object as e.g., a “coating” and used in a variety of applications (see at least [0003], [0094]-[0096]). The thermochromic composition comprises a reaction medium component (“carrier material” that may include, inter alia, “solvent” or “wax”) (see at least [0077], [0087] and [0103]) that includes a nucleation agent (“further additives” in the form of “nucleating agents”), wherein the nucleation agent increases a speed of the color change relative to a thermochromic coating without the nucleation agent (as is evident from at least the disclosure that “The system according to this invention does not have these disadvantages as the used compounds may have a greater photostability and less or no retarding of the color change” - see [0003]) (see at least [0003], [0094]-[0096], [0101]-(#11) and Claim 10). Accordingly, Fischer teaches that incorporating a nucleation agent provides the benefits of enhancing nucleation to thereby contribute to, inter alia, “greater photostability and less or no retarding of the color change” (see at [0003] and [0094]-[0096]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have further modified the combined apparatus by configuring the existing reaction medium component (c) of the thermochromic coating to include a nucleation agent that increases a speed of the color change relative to a thermochromic coating without the nucleation agent based on the teachings of Fischer. Doing so would have enhanced nucleation and thereby contributed to, inter alia, greater photostability and less or no retarding of the color change. Note that such modification would have necessarily resulted in component (c) of the combined apparatus including a nucleation agent as claimed.
Furthermore, Wilkinson (in addition to Lazaroff, Nakashima and Fischer) fail to explicitly teach that the thermochromic coating is in the form of a label affixed onto the metallic shield with an adhesive.
Tahta discloses a relatable hand held metallic item (“kitchenware” that may be “steel”) (see at least [0027] and Fig. 3) that has a thermochromic coating (“thermochromic ink”) applied thereto via a label with an adhesive (“Hot melt sticker”) (see at least [0029]-[0030] and Fig. 3). Tahta teaches that such a label, inter alia, enables “correct adhesion” of the thermochromic coating onto the metallic surface and has minimal “degradation” (see at least [0029], [0037] and Fig. 3).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have further modified the combined apparatus by configuring the existing thermochromic coating to be in the form of a label affixed onto the existing metallic shield with an adhesive as is taught by Tahta. Doing so would have ensured correct adhesion and minimal degradation. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 17, Wilkinson also teaches that the heat source is a gas flame and wherein the metallic shield (38) is a wind shield (see at least Col. 2 lines 33-61 and Fig. 2).
Regarding Claim 18, Nakashima also teaches that the thermochromic coating that would be used in the combined apparatus comprises core-shell microcapsules (“microcapsules”) (see at least [0081]-[0085]), wherein the core-shell microcapsules comprise a core component and a shell component, wherein the core component comprises the electron-donative organic compound (component (a)), the electron-accepting compound (component (b)), and the reaction medium for enabling a reversible electron transfer reaction between the components (a) and (b) above the melting or softening point of the reaction medium (component (c)) and wherein the shell component comprises an organic polymer (see at least [0063], [0081]-[0085], [0283] and [0546]).
Regarding Claim 19, Lazaroff (in addition to Nakashima) teaches that the thermochromic coating that would be used in the combined apparatus is configured to change from a colored state to a discolored state in response to an increase of the temperature of the metallic portion (which would be the metallic shield in the combined apparatus) to the first temperature of about 60 °C or above (see at least [0038] of Lazaroff and the rejection for Claim 16 above).
Regarding Claim 20, Nakashima also teaches that the melting or softening point of the component (c) that would be used in the combined apparatus remains substantially unchanged after cyclic exposure of the metallic shield to 10 cycles of heating the metallic shield until the metallic shield has reached a temperature of above the melting or softening point of the component (c) followed by cooling the metallic shield to a temperature below the melting or softening point of the component (c) (see at least Abstract, [0063]-[0074], [0283], Figs. 1, 3 of Nakashima and the rejection for Claim 16 above and note that the coating remains substantially unchanged for all cycles of use which includes “10 cycles”).
Regarding Claim 21, Wilkinson, Lazaroff, Nakashima, Fischer and Tahta teach the handheld lighter of claim 16 (see the rejection for Claim 16) and Nakashima also teaches that the reaction medium (C) for enabling a reversible electron transfer reaction between the components (a) and (b) that would be used in the combined apparatus can comprise a waxy material (“wax”) with a certain melting point (“melting point”) (see at least [0063], [0283], [0520], [0655] and the rejection for Claim 16 above).
Nakashima fails to explicitly teach that the waxy material has a melting point of between about 60°C and about 95°C. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have simply adjusted the existing waxy material and its respective melting point to have a melting point of between about 60°C and about 95°C 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.
(“[W]here 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); See also In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”).
In the instant case, Nakashima teaches that the reaction medium (C) for enabling a reversible electron transfer reaction between the components (a) and (b) that would be used in the combined apparatus can comprise a waxy material (“wax”) with a certain melting point (“melting point”) (see at least [0063], [0283], [0520], [0655] and the rejection for Claim 16 above) - thus the general conditions of the claim are disclosed in the prior art. The magnitude of the melting point is a result effective variable that would have been readily changeable in the combined apparatus. As is disclosed by Nakashima, component (C) is “a reaction medium causing reversibly an electron transfer reaction between the Component (A) and the Component (B) in a specific temperature range” (see at least [0028], [0283] and Fig. 1). Thus, a higher desired specific temperature range will require a relatively higher melting point and vice-versa (see at least [0028], [0283] and Fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have simply adjusted the existing waxy material and its respective melting point in the combined apparatus, depending on the specific temperature range needed/desired, to have a melting point of between about 60°C and about 95°C as claimed 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. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 22, Wilkinson, Lazaroff, Nakashima, Fischer and Tahta teach the handheld lighter of claim 16 (see the rejection for Claim 16) and Nakashima also teaches that the reaction medium (C) for enabling a reversible electron transfer reaction between the components (a) and (b) that would be used in the combined apparatus can comprise a waxy material (“wax”) with a certain melting point (“melting point”) (see at least [0063], [0283], [0520], [0655] and the rejection for Claim 16 above).
Nakashima fails to explicitly teach that the waxy material has a melting point of between about 60°C and about 85°C. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have simply adjusted the existing waxy material and its respective melting point to have a melting point of between about 60°C and about 85°C 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.
(“[W]here 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); See also In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”).
In the instant case, Nakashima teaches that the reaction medium (C) for enabling a reversible electron transfer reaction between the components (a) and (b) that would be used in the combined apparatus can comprise a waxy material (“wax”) with a certain melting point (“melting point”) (see at least [0063], [0283], [0520], [0655] and the rejection for Claim 16 above) - thus the general conditions of the claim are disclosed in the prior art. The magnitude of the melting point is a result effective variable that would have been readily changeable in the combined apparatus. As is disclosed by Nakashima, component (C) is “a reaction medium causing reversibly an electron transfer reaction between the Component (A) and the Component (B) in a specific temperature range” (see at least [0028], [0283] and Fig. 1). Thus, a higher desired specific temperature range will require a relatively higher melting point and vice-versa (see at least [0028], [0283] and Fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have simply adjusted the existing waxy material and its respective melting point in the combined apparatus, depending on the specific temperature range needed/desired, to have a melting point of between about 60°C and about 85°C as claimed 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. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 23, Wilkinson, Lazaroff, Nakashima, Fischer and Tahta teach the handheld lighter of claim 16 (see the rejection for Claim 16) and Nakashima also teaches that the reaction medium (C) for enabling a reversible electron transfer reaction between the components (a) and (b) that would be used in the combined apparatus can comprise a waxy material (“wax”) with a certain melting point (“melting point”) (see at least [0063], [0283], [0520], [0655] and the rejection for Claim 16 above).
Nakashima fails to explicitly teach that the waxy material has a melting point of between about 65°C and about 80°C. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have simply adjusted the existing waxy material and its respective melting point to have a melting point of between about 65 °C and about 80 °C 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.
(“[W]here 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); See also In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”).
In the instant case, Nakashima teaches that the reaction medium (C) for enabling a reversible electron transfer reaction between the components (a) and (b) that would be used in the combined apparatus can comprise a waxy material (“wax”) with a certain melting point (“melting point”) (see at least [0063], [0283], [0520], [0655] and the rejection for Claim 16 above) - thus the general conditions of the claim are disclosed in the prior art. The magnitude of the melting point is a result effective variable that would have been readily changeable in the combined apparatus. As is disclosed by Nakashima, component (C) is “a reaction medium causing reversibly an electron transfer reaction between the Component (A) and the Component (B) in a specific temperature range” (see at least [0028], [0283] and Fig. 1). Thus, a higher desired specific temperature range will require a relatively higher melting point and vice-versa (see at least [0028], [0283] and Fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have simply adjusted the existing waxy material and its respective melting point in the combined apparatus, depending on the specific temperature range needed/desired, to have a melting point of between about 65 °C and about 80 °C as claimed 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. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 24, Nakashima also teaches that the reaction medium for enabling a reversible electron transfer reaction between the components (a) and (b) that would be used in the combined apparatus can comprise a wax (“wax”) via (at least) its included thickener (see at least [0028]-[0030], [0063], [0502]-[0520], [0655] and the rejection for Claim 16 above).
Regarding Claim 25, Nakashima also teaches that the reaction medium (C) for enabling a reversible electron transfer reaction between the components (a) and (b) above the melting or softening point of the reaction medium (c) that would be used in the combined apparatus may be in the form of (at least) eicosanol (“eicosyl alcohol”) (see at least [0173]-[0175]).
Regarding Claim 26, Nakashima also teaches that the electron-donative organic compound that would be used in the combined apparatus may be in the form of (at least) fluorane (“fluoran compound”) (see at least [0087]-[0090]).
Regarding Claim 27, Lazaroff (at least) also teaches that the thermochromic coating of the combined apparatus may further comprise a non-thermosensitive colorant (as is the case when “a first coating of paint in a conventional manner” is applied that comprises one or more symbols (57)) (see at least [0042]-[0043] and Figs. 5A-5B).
Regarding Claim 28, Lazaroff (at least) also teaches that the thermochromic coating of the combined apparatus may further be configured to depict one or more symbols (57) in response to an increase of the temperature of the metallic portion (which would be the metallic shield in the combined apparatus) to the first temperature of about 60 °C or above (as is the case when “a first coating of paint in a conventional manner” is applied that comprises one or more symbols (57)) (see at least [0038], [0042]-[0043] and Figs. 5A-5B).
Regarding Claim 29, Lazaroff (at least) also teaches that the thermochromic coating of the combined apparatus may further be configured to depict one or more symbols or a color (57) in response to an increase of the temperature of the metallic shield to the first temperature of about 60 °C or above, wherein the one or more symbols or color are formed by a non-thermosensitive colorant (“a first coating of paint in a conventional manner”) (see at least [0038], [0042]-[0043] and Figs. 5A-5B); wherein the thermochromic coating is configured to at least partially disguise the one or more symbols or color formed by the non-thermosensitive colorant at the second temperature of the metallic shield that is below about 60 °C (see at least [0038], [0042]-[0043] and Figs. 5A-5B); and wherein the thermochromic coating is configured to change from a colored state to a decolored state in response to an increase of the temperature of the metallic shield to the first temperature of about 60 °C or above (see at least [0038], [0042]-[0043] and Figs. 5A-5B).
Regarding Claim 30, Lazaroff (at least) also teaches that the thermochromic coating of the combined apparatus may comprises at least two layers (a first layer (57) comprising “a first coating of paint in a conventional manner” in addition to the second layer of the thermochromic coating), wherein an inner layer comprises the non-thermosensitive colorant (first layer (57) comprising “a first coating of paint in a conventional manner”) and an outer layer comprises the components (a), (b) and (c) (the outer layer is the thermochromic coating and, in the combined apparatus, the thermochromic coating would necessarily comprise the components (a), (b) and (c) as is taught by Nakashima in the combined apparatus) (see at least [0063] of Nakashima and the rejection for Claim 16 above).
Regarding Claim 33, Wilkinson teaches of a handheld lighter (32) for igniting a combustible material (“butane”) in addition to a method for preparing the same (see at least Col. 2 lines 33-61 and Fig. 2) comprising:
providing an ignition mechanism for generating a heat source (ignition mechanism comprising “wheel 44”, “flint” and “valve” that releases “gas”) (see at least Col. 2 lines 33-61 and Fig. 2);
an actuating means for activating the ignition mechanism (actuating means comprising “gas lever 46”); and
a metallic shield (“metal shield 38”) positioned adjacent to the ignition mechanism and at a distance to the ignition mechanism such that the metallic shield is heated by the heat source when the handheld lighter is operated (see at least Col. 2 lines 33-61 and Fig. 2).
Wilkinson fails to explicitly teach that the metallic shield comprises an applied thermochromic coating wherein the thermochromic coating is configured to change color in response to an increase of the temperature of the metallic shield to a first temperature of about 60 °C or above and to change color in response to a decrease of the temperature of the metallic shield to a second temperature which is about 1 to about 20 °C below the first temperature
Lazaroff seeks to solve the same problem of the inventor of being able to warn a user when a metallic portion of a handheld product becomes too hot to touch (see at least Abstract and Fig. 1) and discloses a relatable handheld product (10) with a metallic portion (12) that becomes hot during use and of a method for using the same (see at least [0029], [0041], Claim 35 and Fig. 1). Lazaroff teaches that the metallic portion (12) that becomes hot during use comprises a thermochromic coating (“coating” containing “thermochromic material”) (see at least [0029]-[0032] and Fig. 1), wherein the thermochromic coating is configured to reversibly change color in response to an increase of the temperature of the metallic portion to a first temperature of about 60 °C or above (e.g. “65 °C”) and to reversibly change color in response to a decrease of the temperature of the metallic shield to a second temperature which is about 1 to about 20 °C below the first temperature (e.g., “2-4 °C” less than the first temperature which is within the claimed range) (see at least [0038] and Fig. 1). Lazaroff teaches that coating the metallic portion that becomes hot during use with a thermochromic coating provides the advantage of providing a “visual indication to the user” of whether or not the surface of the heated metallic portion is “unsafe to touch” (see at least [0034] and Fig. 1).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the method/apparatus taught by Wilkinson by coating the existing metallic portion that becomes heated during use (i.e., the existing metallic shield) with a thermochromic coating based on the teachings of Lazaroff, wherein the thermochromic coating is configured to reversibly change color in response to an increase of the temperature of the metallic shield to a first temperature of about 60 °C or above and to reversibly change color in response to a decrease of the temperature of the metallic shield to a second temperature which is about 1 to about 20 °C below the first temperature as is also taught by Lazaroff. Doing so would have provided means for providing a visual indication to the user of whether or not the surface of the heated metallic portion is unsafe to touch thereby enhancing safety of the apparatus. Note that such modification would have necessarily resulted in the metallic shield comprising a thermochromic coating as claimed.
Furthermore, Wilkinson (and Lazaroff) fail to explicitly teach that the thermochromic coating comprises “(a) an electron-donative organic compound (component (a)), (b) an electron-accepting compound (component (b)), and (c) a reaction medium enabling a reversible electron transfer reaction between the components (a) and (b) above the melting or softening point of the reaction medium (component (c))”, wherein, “during the decrease of the temperature of the metallic shield to the second temperature, component (c) surrounds and isolates component (a) and component (b)”.
Nakashima discloses a relatable “thermochromic” coating and apparatus for applying the same to any desired “target surface” in addition to a method for using the same (see at least Abstract, [0076] and Figs. 1, 3). Nakashima teaches that the thermochromic coating comprises an electron-donative organic compound (“Component (A)”), an electron-accepting compound (“Component (B)”), and a reaction medium enabling a reversible electron transfer reaction between the components (a) and (b) above the melting or softening point of the reaction medium (“Component (C)”) (see at least Abstract, [0063], [0283] and Figs. 1, 3); wherein the thermochromic coating is configured to change color in response to an increase of the temperature of the metallic shield to a first temperature of about 60 °C or above (see at least [0067]-[0074] and Fig. 1) and to change color in response to a decrease of the temperature to a second temperature below the first temperature (see at least [0067]-[0074] and Fig. 1). Nakashima also teaches that, during the decrease of the temperature to the second temperature, component (c) surrounds and isolates component (a) and component (b) (Note that in light of the specification, component (c) surrounding and isolating component (a) and component (b) is being interpreted as component (c) being in the form of a solvent at temperatures above the second temperature such that component (a) and component (b) each become a solute within the solvent wherein component (c) in solvent form thereby surrounds and isolates each of component (a) and component (b). In the instant case, Nakashima teaches that component (c) is a “solvent” at temperatures above the second temperature that performs the same function of color change in the same fashion. Thus, component (c) in solvent form at temperatures above the second temperature (which necessarily includes during a decrease of the temperature to the second temperature temperature) necessarily surrounds and isolates component (a) and component (b) to achieve the function of color change (see at least [0503]-[0505] and Figs. 1-2). Nakashima accordingly meets this limitation as claimed.). Nakashima teaches that a thermochromic coating of this type is advantageous because, inter alia, even if an image formed by the coating “is left to stand in an unintendedly high temperature environment, the image is not decolored and remains visible” (see at least [0039]-[0042] and Fig. 1).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have further modified the combined method/apparatus taught by configuring the existing thermochromic coating to comprise an electron-donative organic compound (“Component (A)”), an electron-accepting compound (“Component (B)”), and a reaction medium enabling a reversible electron transfer reaction between the components (A) and (B) above the melting or softening point of the reaction medium (“Component (C)”) as is taught by Nakashima. Doing so would have enabled an image formed by the coating to remain visible even if the coating was subject to an unintendedly high temperature environment. Note that such modification would have necessarily resulted in the thermochromic coating of the combined apparatus comprising the composition as claimed in addition to the method of use as claimed.
Furthermore, Wilkinson (in addition to Lazaroff and Nakashima) fails to explicitly that component (c) includes a nucleation agent, wherein the nucleation agent increases a speed of the color change relative to a thermochromic coating without the nucleation agent.
Fischer discloses a relatable reversibly thermochromic composition that can be applied to a desired object as e.g., a “coating” and used in a variety of applications and of a method for using the same (see at least [0003], [0094]-[0096]). The thermochromic composition comprises a reaction medium component (“carrier material” that may include, inter alia, “solvent” or “wax”) (see at least [0077], [0087] and [0103]) that includes a nucleation agent (“further additives” in the form of “nucleating agents”), wherein the nucleation agent increases a speed of the color change relative to a thermochromic coating without the nucleation agent (as is evident from at least the disclosure that “The system according to this invention does not have these disadvantages as the used compounds may have a greater photostability and less or no retarding of the color change” - see [0003]) (see at least [0003], [0094]-[0096], [0101]-(#11) and Claim 10). Accordingly, Fischer teaches that incorporating a nucleation agent provides the benefits of enhancing nucleation to thereby contribute to, inter alia, “greater photostability and less or no retarding of the color change” (see at [0003] and [0094]-[0096]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have further modified the combined method by configuring the existing reaction medium component (c) of the thermochromic coating to include a nucleation agent that increases a speed of the color change relative to a thermochromic coating without the nucleation agent based on the teachings of Fischer. Doing so would have enhanced nucleation and thereby contributed to, inter alia, greater photostability and less or no retarding of the color change. Note that such modification would have necessarily resulted in component (c) of the combined method including a nucleation agent as claimed.
Furthermore, Wilkinson (in addition to Lazaroff, Nakashima and Fischer) fail to explicitly teach that the thermochromic coating is in the form of a label applied to the metallic shield with an adhesive.
Tahta discloses a relatable hand held metallic item (“kitchenware” that may be “steel”) (see at least [0027] and Fig. 3) that has a thermochromic coating (“thermochromic ink”) applied thereto via a label with an adhesive (“Hot melt sticker”) and of a method for applying the same (see at least [0029]-[0030] and Fig. 3). Tahta teaches that such a label, inter alia, enables “correct adhesion” of the thermochromic coating onto the metallic surface and has minimal “degradation” (see at least [0029], [0037] and Fig. 3).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have further modified the combined method by configuring the existing thermochromic coating to be in the form of a label that is applied onto the existing metallic shield with an adhesive as is taught by Tahta. Doing so would have ensured correct adhesion and minimal degradation. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 36, Wilkinson, Lazaroff, Nakashima, Fischer and Tahta teach the handheld lighter of Claim 16 (see the rejection for Claim 16) but fail to explicitly teach of an embodiment wherein component (a) is made of “2-(2,4-dimethylphenylamino)-3-methyl-6-diethylaminofluoran”.
However, merely configuring the existing electron donative compound of component (a) of the combined apparatus to be formed specifically out of “2-(2,4-dimethylphenylamino)-3-methyl-6-diethylaminofluoran” as opposed to any other comparable material would have been an obvious matter of design choice.
To support a conclusion that a claim is directed to obvious subject matter, i.e., that a feature is an obvious matter of design choice, an Examiner must present a ‘convincing line of reasoning’ as to why one of ordinary skill in the art would have found the claimed feature to have been obvious. Ex parte Clapp, 227 U.S.P.Q. 972, 973 (BPAI 1985). When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned ‘convincing line of reasoning.’ Ex parte Clapp, 227 U.S.P.Q. at 973.
It is apparent from Applicant’s specification that configuring component (a) to be made of “2-(2,4-dimethylphenylamino)-3-methyl-6-diethylaminofluoran” is not critical to the invention and that specifically using “2-(2,4-dimethylphenylamino)-3-methyl-6-diethylaminofluoran” for component (a) as opposed to any other comparable material does not serve any advantage, particular purpose, or solve a stated problem since the specification and the claims disclose that several other comparable materials can be used to form the electron donative compound of component (a) that work equally as well, one of which is “fluorane” (see e.g., Claim 26 of the instant application). Furthermore, it is evident that that the prior art would have performed equally as well as the claimed invention since the prior art teaches of Nakashima also teaches that the electron-donative organic compound that would be used in the combined apparatus may be in the form of (at least) fluorane (“fluoran compound”) (see at least [0087]-[0090]) which the instant application discloses as a comparable alternative to “2-(2,4-dimethylphenylamino)-3-methyl-6-diethylaminofluoran” that fulfills the same purpose equally as well (as is evident from at least Claim 26 of the instant application).
Therefore, it would have been prima facie obvious to modify the combined apparatus by configuring the existing electron donative compound of component (a) of the combined apparatus to be formed out of “2-(2,4-dimethylphenylamino)-3-methyl-6-diethylaminofluoran” as claimed since such modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 37, Wilkinson, Lazaroff, Nakashima, Fischer and Tahta teach the handheld lighter of Claim 36 (see the rejection for Claim 36) but fail to explicitly teach of an embodiment wherein component (c) is made of 1-eicosnal.
However, merely configuring the existing reaction medium of component (c) of the combined apparatus to be formed specifically out of “1-eicosnal” as opposed to any other comparable material would have been an obvious matter of design choice.
To support a conclusion that a claim is directed to obvious subject matter, i.e., that a feature is an obvious matter of design choice, an Examiner must present a ‘convincing line of reasoning’ as to why one of ordinary skill in the art would have found the claimed feature to have been obvious. Ex parte Clapp, 227 U.S.P.Q. 972, 973 (BPAI 1985). When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned ‘convincing line of reasoning.’ Ex parte Clapp, 227 U.S.P.Q. at 973.
It is apparent from Applicant’s specification that configuring component (c) to be made of “1-eicosnal” is not critical to the invention and that specifically using “1-eicosnal” for component (c) as opposed to any other comparable material does not serve any advantage, particular purpose, or solve a stated problem since the specification and the claims disclose that several other comparable materials can be used to form the reaction medium of component (c) that work equally as well, one of which is “eicosonal” (see e.g., Claim 25 of the instant application). Furthermore, it is evident that that the prior art would have performed equally as well as the claimed invention since the prior art teaches of Nakashima also teaches that the reaction medium (c) that would be used in the combined apparatus may be in the form of (at least) eicosonal (“eicosyl alcohol”) (see at least [0087]-[0090]) which the instant application discloses as a comparable alternative to “1-eicosnal” that fulfills the same purpose equally as well (as is evident from at least Claim 25 of the instant application).
Therefore, it would have been prima facie obvious to modify the combined apparatus by configuring the existing reaction medium of component (c) of the combined apparatus to be formed specifically out of “1-eicosnal” as claimed since such modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 38: Wilkinson, Lazaroff, Nakashima, Fischer and Tahta teach the handheld lighter of Claim 16 (see the rejection for Claim 16) and Nakashima also teaches that component (a) that would be used in the combined apparatus includes at least one electron-donative organic compound (“Component (A)” - see at least Abstract, [0063], [0283] and Figs. 1, 3) to adjust a perceived color impression (see at least Abstract, [0063], [0283], Figs. 1, 3 and the rejection for Claim 16 above) but fails to explicitly teach that component (a) includes a plurality of electron-donative organic compounds to adjust a perceived color impression.
However, Lazaroff of the combined apparatus also teaches of including a plurality of color creating compounds to adjust a perceived color impression (“multiple coatings of paint containing thermochromic materials to represent a series of color changes”) (see at least [0029], [0042] and Figs. 1, 4) and that doing so, inter alia, enables the representation of “a series of color changes” for a more aesthetically pleasing and/or useful product (see at least [0029], [0042] and Figs. 1, 4).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have further modified the combined apparatus by configuring the existing component (a) that would be used in the combined apparatus at taught by Nakashima to include multiple color creating compounds as opposed to only one, which would necessarily include multiple of the existing electron-donative organic compounds already taught by Nakashima, to adjust the perceived color impression as is further taught by Lazaroff. Doing so would have enabled the representation of a series of color changes for a more aesthetically pleasing and/or useful product. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 39: In the combination of Wilkinson, Lazaroff, Nakashima, Fischer and Tahta as presented above, component (b) already taught by Nakashima (“Component (B)” - see at least Abstract, [0063], [0283] and Figs. 1, 3) would necessarily include a plurality of electron-accepting compounds to adjust the perceived color impression to cooperate with the corresponding multiple electron-donative organic compounds (a) already taught by the combined apparatus to thereby facilitate color change of each of the multiple colors (see the rejection for Claim 38 above). Note that each compound (a) needs to match with a corresponding compound (b) for each color and that the combined apparatus teaches of “a series of color changes” (as further taught by Lazaroff in the combined apparatus - see at least [0029], [0042] Figs. 1, 4 and the rejection for Claim 38 above). Thus, the combination of Wilkinson, Lazaroff, Nakashima, Fischer and Tahta would have necessarily resulted in existing component (b) including a plurality of electron-accepting compounds to adjust the perceived color impression of the multiple colors and would have accordingly resulted in the invention as claimed.
Response to Arguments
The arguments filed 2/17/2026 have been fully considered but are not moot in light of the new grounds of rejection necessitated by the claim amendments.
It is recommended that Applicant further amend the claims to include additional structural elements and/or features that are not present in any of the cited prior art (if any exist) to endeavor to overcome the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following prior art is considered relevant to this application in terms of structure and use:
Chan (US 2018/0116461 A1)
Shikumar et al. (US 2019/0100656 A1)
Wesley (US 2003/0000450 A1)
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.
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/BENJAMIN W JOHNSON/Examiner, Art Unit 3762 5/22/2026
/HELENA KOSANOVIC/Supervisory Patent Examiner, Art Unit 3762
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