Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-11 and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dunlap (US 6059477) in view of Kirita (US 6659672).
Regarding claim 1, Dunlap teaches a nib (10) for a writing instrument, the nib comprising: a self-supporting monolithic fibrous nib body (10) comprising an upper writing portion (20) being configured to deliver ink to a writing surface, and a lower portion (22) in communication with the upper writing portion, wherein the upper writing portion has a first width and the lower portion has a tapering width that decreases from the first width to a second width (at 22), wherein a first notch (38, 40) is disposed on a posterior side of the fibrous nib body and a second notch (42, 44) is disposed on an anterior side of the fibrous nib body, wherein the first notch and the second notch define a boundary between the lower portion of the fibrous nib body and the upper writing portion of the fibrous nib body (Fig. 1).
Dunlap does not teach a at least one elongated beam, a void in a two-dimensional plane bounded by the at least one elongated beam, the void being surrounded by fibrous material of the fibrous nib body, wherein the void allows observation of the writing surface therethrough, wherein the upper writing portion of the fibrous nib body comprises a writing beam superior to the void, wherein each side of the void is equidistant from the at least one elongated beam, the writing beam and an inferior piece of the upper writing portion such that the void is substantially the same shape as the upper writing portion, wherein the writing beam bridges the void along a superior side thereof and is integrally joined at opposite ends to the at least one elongated beam, and wherein the writing beam, the at least one elongated beam, and the inferior piece of the upper writing portion together enclose the void within the upper portion of the writing instrument and are each of substantially uniform width.
Kirita teaches an elongated beam (13) and a void (17) in a two-dimensional plane bounded by at least one elongated beam (sides of 12), wherein the void allows observation of the writing surface therethrough (col. 2, ll. 22-27), wherein the upper writing portion of the fibrous nib body comprises a writing beam (13) superior to the void, wherein each side of the void is equidistant from the at least one elongated beam, the writing beam and an inferior piece of the upper writing portion such that the void is substantially the same shape as the upper writing portion (Fig. 9b), wherein the writing beam bridges the void along a superior side thereof and is integrally joined at opposite ends to the at least one elongated beam (Fig. 9b), and wherein the writing beam, the at least one elongated beam, and the inferior piece of the upper writing portion together enclose the void within the upper portion of the writing instrument and are each of substantially uniform width (Fig. 9b.
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have to have modified the nib of Dunlap to include void in a two-dimensional plane bounded by at least one elongated beam, wherein the void allows observation of the writing surface therethrough, wherein the upper writing portion of the fibrous nib body comprises a writing beam superior to the void, wherein each side of the void is equidistant from the at least one elongated beam, the writing beam and an inferior piece of the upper writing portion such that the void is substantially the same shape as the upper writing portion, wherein the writing beam bridges the void along a superior side thereof and is integrally joined at opposite ends to the at least one elongated beam, and wherein the writing beam, the at least one elongated beam, and the inferior piece of the upper writing portion together enclose the void within the upper portion of the writing instrument and are each of substantially uniform width as taught by Kirita for the purpose of enabling a user to view the opposite side of the pen tip (Kirita, col. 2, ll. 22-27). It is noted that this combination would result in the void being surrounded by the fibrous material of the fibrous nib body of Dunlap.
Regarding claim 3, the combination of Dunlap and Kirita teaches the nib of claim 1, wherein the fibrous nib body comprises a plurality of fibers and a resin (Dunlap, col. 3, ll. 52-56).
Regarding claim 4, the combination of Dunlap and Kirita teaches the nib of claim 1, wherein the first notch and the second notch extend into the fibrous nib body from 0.1 mm to 1.5 mm (Dunlap, 0.030 inches, which is equal to 0.762 mm; col. 4, ll. 20-22).
Regarding claim 5, the combination of Dunlap and Kirita teaches the nib of claim 1, wherein the lower portion of the fibrous nib body and the upper writing portion of the fibrous nib body are substantially equal in area (Dunlap, Fig. 1).
Regarding claim 6, the combination of Dunlap and Kirita teaches the nib of claim 1, but does not teach that the lower portion of the fibrous nib body has an area greater than the upper writing portion of the fibrous nib body.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have modified the nib of Dunlap such that the lower portion of the fibrous nib body has an area greater than the upper writing portion of the fibrous nib body because Applicant has not disclosed that the relative sizes of the upper and lower portions provide an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Dunlap' s nib and the applicant' s invention to perform equally well with either the equal upper and lower portions taught by Dunlap or the claimed lower portion of the fibrous nib body that has an area greater than the upper writing portion of the fibrous nib body because both nibs are equally capable of applying liquid held in a reservoir to a surface.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the nib of Dunlap to obtain the invention as specified in claim 6 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Dunlap and Kirita.
Regarding claim 7, the combination of Dunlap and Kirita teaches the nib of claim 1, but does not teach that the lower portion of the fibrous nib body has an area lesser than the upper writing portion of the fibrous nib body.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have modified the nib of Dunlap such that the lower portion of the fibrous nib body has an area lesser than the upper writing portion of the fibrous nib body because Applicant has not disclosed that the relative sizes of the upper and lower portions provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Dunlap' s nib and the applicant' s invention to perform equally well with either the equal upper and lower portions taught by Dunlap or the claimed lower portion of the fibrous nib body that has an area lesser than the upper writing portion of the fibrous nib body because both nibs are equally capable of applying liquid held in a reservoir to a surface.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the nib of Dunlap to obtain the invention as specified in claim 7 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Dunlap and Kirita.
Regarding claim 8, the combination of Dunlap and Kirita teaches the nib of claim 1, wherein the void is a punched area in the upper writing portion of the fibrous nib body.
The limitation “the void is a punched area” is being interpreted as a product-by-process limitation. As set forth in MPEP 2113, product-by-process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113.
In this case, the void taught by Kirita and the claimed void have the same structure.
Regarding claim 9, the combination of Dunlap and Kirita teaches the nib of claim 1, wherein the fibrous nib body has a thickness of 1 mm to 4 mm (Dunlap, W1 is 0.145 inches, or about 3.7 mm, see col. 3, line 67).
Regarding claim 10, the combination of Dunlap and Kirita teaches the nib of claim 1, wherein the at least one elongated beam of the nib comprises an anterior elongated beam (Kirita, one side of the hole in Fig. 9b) and a posterior elongated beam (Kirita, other side of the hole in Fig. 9b).
Regarding claim 11, the combination of Dunlap and Kirita teaches the nib of claim 10, but does not teach that the void is bordered on an anterior side by the anterior elongated beam having a thickness of 0.5 mm to 1.5 mm, on a posterior side by the posterior elongated beam having a thickness of 0.5 mm to 1.5 mm, and on an inferior side by an inferior piece of the upper writing portion of the fibrous nib body.
At the effective filing date of the claimed invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art to formed the nib of the combination such that the anterior and posterior beams each have a thickness of 0.5 mm to 1.5 mm because Applicant has not disclosed that the size of the anterior and posterior beams provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the device of the combination and the applicant's invention to perform equally well with either the anterior and posterior beams taught by Kirita or the claimed anterior and posterior beams each have a thickness of 0.5 mm to 1.5 mm because both sets of beams are equally capable of supporting and supplying ink to the writing beam.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the combination of Dunlap and Kirita to obtain the invention as specified in claim 11 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Dunlap and Kirita.
Regarding claim 13, the combination of Dunlap and Kirita teaches the nib of claim 11, wherein the writing beam has one or more beveled edges (Dunlap, 24, 28).
Regarding claim 14, the combination of Dunlap and Kirita teaches the nib of claim 11, but does not teach that the writing beam is perpendicular to the at least one elongated beam.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have modified the nib of Dunlap such that the writing surface is perpendicular to the sides of the nib that form the elongated beams because Applicant has not disclosed that the angle of the writing beam provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the combination of Dunlap and Kirita and the applicant' s invention to perform equally well with either the angled writing beam taught by Dunlap or the claimed perpendicular writing beam because both nibs are equally capable of applying ink to a surface.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the nib of Dunlap to obtain the invention as specified in claim 14 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Dunlap and Kirita.
Regarding claim 15, the combination of Dunlap and Kirita teaches the nib of claim 11, wherein the writing beam is positioned at an angle to the perpendicular defined by the at least one elongated beam (Dunlap, Fig. 1).
Regarding claim 16, the combination of Dunlap and Kirita teaches the nib of claim 15, but does not teach that the angle is greater than 0° and less than 45°.
Dunlap teaches an angle of 45° (col. 4, ll. 18-21).
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have changed the angle of the writing beam of Dunlap because Applicant has not disclosed that the particular angle of the writing beam provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Dunlap's nib and the applicant's invention to perform equally well with either the 45° angle taught by Dunlap or the claimed angle that is greater than 0° and less than 45° because both writing beams are equally capable of applying ink to a surface.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the nib of Dunlap to obtain the invention as specified in claim 16 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Dunlap and Kirita.
Regarding claim 17, the combination of Dunlap and Kirita teaches the nib of claim 15, but does not teach that the angle is 9.5°.
Dunlap teaches an angle of 45° (col. 4, ll. 18-21).
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have changed the angle of the writing beam of Dunlap because Applicant has not disclosed that the particular angle of the writing beam provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Dunlap's nib and the applicant's invention to perform equally well with either the 45° angle taught by Dunlap or the claimed angle of 9.5° because both writing beams are equally capable of applying ink to a surface.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the nib of Dunlap to obtain the invention as specified in claim 17 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Dunlap and Kirita.
Regarding claim 18, the combination of Dunlap and Kirita teaches the nib of claim 11, but does not teach that the writing beam extends along a longitudinal axis from 1 mm to 2.5 mm.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have changed the angle of the writing beam of Dunlap and therefore change the length the writing beam extends along the longitudinal axis because Applicant has not disclosed that the length that the writing beam extends along the longitudinal axis provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Dunlap's nib and the applicant's invention to perform equally well with either the writing beam taught by Dunlap or the claimed writing beam that extends along the longitudinal axis from 1 mm to 2.5 mm because both writing beams are equally capable of applying ink to a surface.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the nib of Dunlap to obtain the invention as specified in claim 18 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Dunlap and Kirita.
Regarding claim 19, the combination of Dunlap and Kirita teaches the nib of claim 1, wherein the fibrous nib body has a length of 15 mm to 30 mm (Dunlap teaches a length of 1.15 inches or 29.21 mm, see col. 4, line 1), but does not teach a width of 5 mm to 10 mm.
Dunlap teaches a width W2 of 0.185 inches or 4.699 mm.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have modified the width of the nib of Dunlap because Applicant has not disclosed that the width of the nib provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Dunlap's nib and the applicant's invention to perform equally well with either the nib that is 4.699 mm wide taught by Dunlap or the claimed nib with a width of 5 mm to 10 mm because both nibs are equally capable of applying ink to a surface.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify the nib of Dunlap to obtain the invention as specified in claim 19 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Dunlap and Kirita.
Regarding claim 20, the combination of Dunlap and Kirita teaches a writing instrument, comprising: an elongated body (Dunlap, 48) comprising an ink reservoir (Dunlap, 58); and a nib of claim 1 disposed at an end of the elongated body (Dunlap, Fig. 4), wherein the lower portion of the fibrous nib body is disposed inside the end of the elongated body (Dunlap Fig. 4) and is configured to deliver ink from the ink reservoir to the upper writing portion of the fibrous nib body, the upper writing portion of the fibrous nib body protruding outside of the end of the elongated body (Dunlap, Fig. 4).
Response to Arguments
Applicant's arguments filed 22 July 2026 have been fully considered but they are not persuasive.
Applicant argues that element 13 of Kirita is “a solid pen point positioned at the front of the pen element; it is not a beam that bridges the void and is integrally joined at opposite ends to an elongated beam”.
Examiner disagrees. As noted by Applicant, Kirita teaches that nib 15 and the ink leader 12 are a one-piece structure, which means that the element 13 is integrally joined with the elongated beams at either side of the void. Furthermore, writing part 13 is a beam. Claim terms must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time. In this case, “beam” has the definition of “one of the principal horizontal supporting members (as of a building or ship)” according to merriam-webster.com. Kirita’s writing portion spans the void 17 horizontally and therefore reads on the claimed beam.
Applicant argues that Kirita does not teach or suggest that the material surrounding the void is of substantially uniform width, nor that the window is substantially the same shape as the upper writing portion.
Examiner disagrees. Each of the writing beam, the elongated beams, and the inferior piece of the upper writing portion has a substantially uniform width, as shown in Fig. 9B. Furthermore, Fig. 9B of Kirita clearly shows a void that has a shape that is substantially the same as the shape of the upper writing portion.
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Applicant’s argument that Dunlap does not have any teaching or motivation to add a void is not persuasive because Dunlap is not relied upon to teach the claimed void.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY S OLIVER whose telephone number is (571)270-3787. The examiner can normally be reached Monday-Friday, 7-3 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Angwin can be reached at (571)270-3735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754
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