Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8,13-19,22-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “nonpermanent dye” in clams 1-8,13-19,22-23 is a relative term which renders the claim indefinite. The term “nonpermanent dye” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For a dye being permanent or nonpermanent, it is depends on what it is applied to.
The term “nonpermanent ink” in clams 1,3-8, 13,15-17,19 and 22-23 is a relative term which renders the claim indefinite. The term “nonpermanent ink” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8,13-19 and 22-23 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US5909978A(US’978), and further in view of US5507865A(US’865).
Regarding claims 1--2, 13-14, and 22-23, US’978 discloses a marking pen comprising an ink reservoir containing a cartridge saturated with an ink deposed in an elongate body and a nib made of compressed fibers, but bound tightly with resin into a hard porous structure. The nib is inserted through the circular opening in the distal end of the barrel and penetrates axially into the cartridge so that the pores of the nib are in capillary communication with the pores of the cartridge. See col. 1, line 54 to col.2, line 10 and Figures 1-4.
But it is silent about the ink as applicants set forth in the instant application.
US’865 discloses an aqueous ink comprising at least a water-soluble dye (examples thereof include the acid dyes, direct dyes, and basic dyes enumerated in the Color Index, and further include the water-soluble dyes known as colorants for aqueous inks. Preferred of these are azo dyes and phthalocyanine dyes), water, a basic amino acid and a water-soluble organic solvent such as DMSO. Said amino acid is selected from lysine and arginine. Said basic amino acid is from 0.01 to 20% by weight based on the total amount of said aqueous ink. Said water-soluble dye is from 0.1 to 20% by weight based on the total amount of said aqueous ink. Said water-soluble organic solvent is from 1 to 40% by weight based on the total amount of said aqueous ink. See claims 1-8, col. 2, lines 47-55, col. 4, lines 32-55. Thus, the water content is 98.89-20 by weight. No thickener is used. Thus, the aqueous solvent comprises overlapping range of the claimed percent by weight of polar aprotic solvent(s). Thus, the aqueous polar aprotic solvent comprising 30 to 90 percent by weight of dimethyl sulfoxide, wherein polar aprotic solvent, water, and dye comprise 95% or more of the ink composition.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to us ink composition of US’865 in the pen of US’978 motivated by the fact that US’865 discloses that such ink is usable in applications such as writing utensils (e.g., fountain pens, felt pens, ball-point pens employing aqueous ink, and marking felt pens employing aqueous ink) and ink-jet recording. See col. 4, line 65 to col. 5, line 1.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 3, US’865 discloses an aqueous ink comprising at least a water-soluble dye, water, a basic amino acid and a water-soluble organic solvent such as DMSO.
Regarding claims 4 and 15, US’865 discloses an aqueous ink comprising at least a water-soluble dye, water, a basic amino acid arginine (fragrance) and a water-soluble organic solvent such as DMSO.
Regarding claim 5, US’865 discloses an aqueous ink comprising at least a water-soluble dye, water, a basic amino acid arginine(fragrance) and a water-soluble organic solvent such as DMSO.
Regarding claims 6 and 16, US’865 discloses an aqueous ink comprising at least a water-soluble dye, water, a basic amino acid and a water-soluble organic solvent such as DMSO. Said amino acid is selected from lysine and arginine. Said basic amino acid is from 0.01 to 20% by weight based on the total amount of said aqueous ink. Said water-soluble dye is from 0.1 to 20% by weight based on the total amount of said aqueous ink. Said water-soluble organic solvent is from 1 to 40% by weight based on the total amount of said aqueous ink. Thus, the water content is 98.89-20 by weight.
Regarding claims 7, US’865 discloses an aqueous ink comprising at least a water-soluble dye, water, a basic amino acid and a water-soluble organic solvent such as DMSO. Said amino acid is selected from lysine and arginine. Said basic amino acid is from 0.01 to 20% by weight based on the total amount of said aqueous ink. Said water-soluble dye is from 0.1 to 20% by weight based on the total amount of said aqueous ink. Said water-soluble organic solvent is from 1 to 40% by weight based on the total amount of said aqueous ink. Thus, the water content is 98.89-20 by weight.
Regarding claim 8, US’865 discloses an aqueous ink comprising at least a water-soluble dye, water, a basic amino acid and a water-soluble organic solvent such as DMSO. Said amino acid is selected from lysine and arginine. Said basic amino acid is from 0.01 to 20% by weight based on the total amount of said aqueous ink. Said water-soluble dye is from 0.1 to 20% by weight based on the total amount of said aqueous ink. Said water-soluble organic solvent is from 1 to 40% by weight based on the total amount of said aqueous ink. Thus, the water content is 98.89-20 by weight.
Regarding claims 17 and 18, US’978 discloses a marking pen comprising an ink reservoir containing a cartridge saturated with an ink deposed in an elongate body and a nib made of compressed fibers, but bound tightly with resin into a hard porous structure. The nib is inserted through the circular opening in the distal end of the barrel and penetrates axially into the cartridge so that the pores of the nib are in capillary communication with the pores of the cartridge. See col. 1, line 54 to col.2, line 10 and Figures 1-4.
But it is silent about the ink as applicants set forth in the instant application.
US’865 discloses an aqueous ink comprising at least a water-soluble dye, water, a basic amino acid (examples thereof include the acid dyes, direct dyes, and basic dyes enumerated in the Color Index, and further include the water-soluble dyes known as colorants for aqueous inks. Preferred of these are azo dyes and phthalocyanine dyes) and a water-soluble organic solvent such as DMSO and dimethylformamide. Said amino acid is selected from lysine and arginine. Said basic amino acid is from 0.01 to 20% by weight based on the total amount of said aqueous ink. Said water-soluble dye is from 0.1 to 20% by weight based on the total amount of said aqueous ink. Said water-soluble organic solvent is from 1 to 40% by weight based on the total amount of said aqueous ink. The concentration of these water-soluble organic solvents in the aqueous ink is usually from 1 to 40% by weight. See claims 1-8 and col. 4, lines 32-55. Thus, the water content is 98.89-20 by weight. No thickener is used. Substituting some parts of DMSO with dimethylformamide for the same purpose is known in the art. Thus, the aqueous solvent can comprise 65 to 85 percent by weight of polar aprotic solvent(s), wherein 70 to 80 percent by weight of the polar aprotic solvent(s) is dimethyl sulfoxide, wherein polar aprotic solvent(s), water, and dye comprise 95% or more of the ink composition.
Thus, the aqueous solvent comprises overlapping range of the claimed percent by weight of polar aprotic solvent(s). Thus, the aqueous polar aprotic solvent comprising 30 to 90 percent by weight of dimethyl sulfoxide, wherein polar aprotic solvent, water, and dye comprise 95% or more of the ink composition.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to us ink composition of US’865 in the pen of US’978 motivated by the fact that US’865 discloses that such ink is usable in applications such as writing utensils (e.g., fountain pens, felt pens, ball-point pens employing aqueous ink, and marking felt pens employing aqueous ink) and ink-jet recording. See col. 4, line 65 to col. 5, line 1.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 19, US’865 discloses an aqueous ink comprising at least a water-soluble dye, water, a basic amino acid arginine (fragrance) and a water-soluble organic solvent such as DMSO.
Response to Arguments
Applicant's arguments filed 02/18/2026 have been fully considered but they are not persuasive.
The applicant argues that there is no motivation to combine the marking pen of US'978 with the ink-jet printer ink of US'865.
The Examiner respectfully submits that it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to us ink composition of US’865 in the pen of US’978 motivated by the fact that US’865 discloses that such ink is usable in applications such as writing utensils (e.g., fountain pens, felt pens, ball-point pens employing aqueous ink, and marking felt pens employing aqueous ink) and ink-jet recording. See col. 4, line 65 to col. 5, line 1. The Examiner respectfully submits that surgical pen is a writing utensil.
The applicant argues that there is simply no nexus between the requirements of the surgical marking pen disclosed in US'978, and the non-bronzing ink-jet printer ink disclosed by US'865.
The Examiner respectfully submits that surgical pen is a writing utensil.
The applicant argues that the mere fact that US'865 discloses ink usable in applications such as writing utensils (e.g., fountain pens, felt pens, ball-point pens employing aqueous ink, and marking felt pens employing aqueous ink) and ink-jet recording does not provide any motivation or suggestion to replace the aqueous Gentian violet ink in the surgical marker of the US'978 reference with a permanent "non-bronzing" water soluble ink suitable for use in an ink-jet printer. (See Virtek Vision Int'l ULC v. Assembly Guidance Sys., Inc., 97 F.4th 882, 889 (Fed. Cir. 2024). Other than a general overlay directed to producing a mark, US'978 and US'865 are non-analogous art as applied to an obviousness rejection under 35 U.S.C. § 103.
The Examiner respectfully submits that a reference is not limited to the teaching in its preferred embodiment (A reference is good not only for what it teaches but also for what one of ordinary skill might reasonably infer from the teachings. In re Opprecht 12 USPQ 2d 1235, 1236 (CAFC 1989); In re Bode USPQ 12; In re Lamberti 192 USPQ 278; In re Bozek 163 USPQ 545, 549 (CCPA 1969); In re Van Mater 144 USPQ 421; In re Jacoby 135 USPQ 317; In re LeGrice 133 USPQ 365; In re Preda 159 USPQ 342 (CCPA 1968). In addition, "A reference can be used for all it realistically teaches and is not limited to the disclosure in its preferred embodiments" See In re Van Marter, 144 USPQ 421).
The applicant argues that US'865 is clearly not within the field of the inventor's endeavor and since US'865 is not reasonably pertinent to the problem with which the inventor was involved, US'865 is non-analogous art.
The Examiner respectfully submits that surgical pen is a writing utensil. And US’865 discloses that the ink is suitable for the written utensil.
The applicant argues that US'978 is directed to a highly specialized type of marking pen. In contrast, US'865 merely discloses an ink usable in applications such as writing utensils (e.g., fountain pens, felt pens, ball-point pens employing aqueous ink, and marking felt pens employing aqueous ink) and ink-jet recording. Other than a general overlay directed to producing a mark, US'978 and US'865 are non-analogous art as applied to an obviousness rejection under 35 U.S.C. § 103.
The Examiner respectfully submits that marking pen is a written utensil and US’865 discloses that the ink can be used for written utensils.
In response to applicant's argument that US’865 is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, US;865 discloses that the ink is suitable for the written utensils and marking pen is a written utensil.
The applicant argues that US’865 discloses that the high-pH ink has problems concerning ejection, including the corrosion of nozzles and the ink of a surgical marking pen is applied to human skin, inks having a pH above 7 up to 11 would present safety issues as identified by US'865, rendering such inks unsuitable for use in a surgical marking pen.
The Examiner respectfully submits that US’865 discloses that the pH of the ink can be 7. See col. 5, line 13.
The applicant argues that the permanent "non-bronzing" water soluble ink suitable for use in an ink-jet printer disclosed US'865 is simply not suitable for use in the highly specialized surgical marking pen of US'978.
The Examiner respectfully submits that marking pen is a written utensil and US’865 discloses that the ink can be used for written utensils.
The applicant argues that US'978 discloses a water-soluble ink capable of use in a marking pen for surgical patients i.e., Gentian violet, without requiring the surgical marking ink to have the benefits provided by US'865, and in-fact states this same by exemplifying Gentian violet. As such, US'978 actually dissuades the combination of the two references.
The Examiner respectfully submits that US’978 is not against having additional benefit. The pH of 7 and a stable ink composition is desired in the field.
The applicant argues that the advantages of non-bronzing and reduced corrosion of ink-jet spray nozzles of US'865 serve no purpose in the surgical marking pen of US'978.
The Examiner respectfully submits that marking pen is a written utensil and US’865 discloses that the ink can be used for written utensils.
The applicant argues that surgical marking of skin of a surgical patient must be nonpermanent, the utilization of permanent ink of US’865 in the marking pen of US'978 would destroy the ability to utilize the marking pen of US'978 for surgical marking.
The Examiner respectfully submits that US’865 does not teach only permanent ink alleged by the applicant. US’865 discloses that example dyes include the acid dyes, direct dyes, and basic dyes enumerated in the Color Index, and further include the water-soluble dyes known as colorants for aqueous inks. Preferred of these are azo dyes and phthalocyanine dyes.
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 SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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