DETAILED ACTION
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Summons (U.S. Publication 2011/0174836) in view of Donlon (U.S. Publication 2022/0010148).
Regarding claim 1, Summons teaches a colorant cartridge having a known volume of a colorant (figures 11 and 18, container 12 is taught as a cartridge in paragraph 39, paragraph 41 teaches the base solution 18 with liquid or dry colorant), the colorant cartridge having a nozzle (item 20), and a mixer (item 10 is considered capable of being shaken, as taught in paragraph 51 which is considered reading on mixing), wherein the mixer mixes the colorant and a stain (paragraph 41 teaches a colorant and paragraph 47 teaches a stain) and a residual volume of material (paragraph 7 which teaches a skin which is later expelled from the dispensing container and not considered part of the know volume). Regarding claim 1, Summons is silent to a stain container having a known volume of stain, the known volume including a known discharge volume and a known residual volume of the cartridge, and a nozzle aligned over an opening of the stain container discharging material into the stain container. Regarding claim 1, Donlon teaches a stain container having a known volume of stain (paragraph 71 and figure 5, item 402 is the container, item 404 is a stain), the known volume including a discharge volume and a known residual volume of the cartridge (see item 504 which is considered reading on a cartridge, item 506 markings allow for known volume of material and residual material left in the container), the known volume of a stain and known discharge volume being preselected to be combined with one another to produce a specific color of the stain (item 506 markings and item 404 are considered having known volumes based on the color target, see paragraph 89), a nozzle is aligned over an opening of the stain container and discharges material into the stain container (item 504 has a nozzle at its end aligned with the opening item 402). Regarding claim 1, it would have been obvious to one of ordinary skill in the art prior to the effective filling date of the claimed invention to dispense the material from the dispenser of Summons into the container of Donlon to allow for storage of paint material.
Regarding claim 2, Summons is silent to the stain being unpigmented. Regarding claim 2, Donlon teaches relatively unpigmented clear base, and base paints and stains in order to allow for accept much larger quantity of added colorant at the point of sale (paragraph 3). Regarding claim 2, absent any unexpected results, it would have been obvious prior to the effective filling date of the claimed invention to modify the relatively unpigmented stain to completely unpigmented stain in order to allow for more color options (see Donlon paragraph 3) since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. In re Karlson, 136 USPQ 184.
Regarding claim 3, Summons teaches wherein the colorant has a viscosity sufficient to maintain particles suspended in the colorant cartridge (paragraph 55 teaches a relatively high viscosity and paragraph 41 teaches dry colorant which is considered reading on particles suspende4d in the base solution).
Regarding claim 4, Summons teaches wherein the colorant has a viscosity sufficient such that the colorant does not leak from an open nozzle (paragraph 55 teaches relatively high viscosity which is described as non-sagging and teaches the nozzle dispenses the material is desired which is considered not leaking).
Regarding claim 5, Summons teaches wherein the colorant nozzle is sealed (paragraph 44 nozzle 20 sealed with laminated foil).
Regarding claim 6, Summons teaches wherein the colorant cartridge nozzle is sealed by a seal selected from the group of seals consisting of a cap or a foil (paragraph 44 nozzle 20 sealed with laminated foil).
Regarding claim 7, Summons teaches wherein the colorant cartridge comprises a cylindrical wall and a movable bottom wherein moving the movable bottom from a distal end to a proximal end causes the colorant to discharge from the nozzle (paragraph 54 item 17 bottom wall may be advanced in either direction, paragraph 39 teaches a cylindrical cartridge).
Regarding claim 8, Summons teaches a caulking gun configured to hold the colorant cartridge and engage the movable bottom and to move the movable bottom from the distal end to the proximal end (paragraph 56 teaches a caulking gun configured to item 12, paragraph 54 teaches a moving bottom wall).
Summons is silent to the language of claim 9. Regarding claim 9, Donlon teaches a container containing 5-gallon containers (paragraph 50) and relatively unpigmented stain in order to allow for larger quantities of colorant to be added (paragraph 3). Regarding claim 9, it would have been obvious to one of ordinary skill in the art prior to the effective filling date of the claimed invention to dispense the material from the dispenser of Summons into the 5-gallon container of Donlon to allow for storage of paint material. Regarding claim 9, absent any unexpected results, it would have been obvious prior to the effective filling date of the claimed invention to modify the relatively unpigmented stain to completely unpigmented stain in order to allow for more color options (see Donlon paragraph 3) since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. In re Karlson, 136 USPQ 184.
Regarding claim 10, Summons teaches a custom tint (paragraph 4). Regarding claim 10, Summons is silent to the 5-gallon container and enough colorant to cause a tint in said container. Regarding claim 10, Donlon teaches a 5-gallon container (paragraph 50). Regarding claim 10, it would have been obvious to one of ordinary skill in the art prior to the effective filling date of the claimed invention to dispense the material from the dispenser of Summons into the 5-gallon container of Donlon to allow for storage of paint material. Regarding claim 10, absent any unexpected results it would have been obvious to change the size of the size of the colorant cartridge in order to obtain the desired color since it is well settled that it is an obvious matter of design choice to change the general shape or size of a known element in the absence of a disclosed non-obvious advantage associated with the change. Gardner vs. TEC Systems Inc., 725 F.2d 1338,1349-50 (Fed. Cir. 1984); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Dailey, 357 F.2d 669, 672 (CCPA 1966).
Regarding claim 11, Summons teaches A method of mixing a colored stain (paragraph 41 mixing, and obtaining the desired color, paragraph 47 teaches a stain) comprising: a colorant cartridge having a movable bottom and a top with a nozzle (figures 11 and 18, paragraph 39 item 12 is described as a cartridge, paragraph 54 teaches a movable bottom, and nozzle item 20); causing the movable bottom of the colorant cartridge to move from a distal end of the colorant cartridge towards the proximal end of the colorant cartridge (paragraph 54 teaches a moving bottom wall); and a residual volume of material (paragraph 7 which teaches a skin which is later expelled from the dispensing container and not considered part of the know volume). Regarding claim 11, Summons is silent to providing a stain container comprising a known volume of stain; aligning the colorant cartridge nozzle over the stain container. Regarding claim 11, Donlon teaches providing a stain container comprising (Figure 5, item 402 and item 404) a known volume of stain (item 506 markings provide a known volume); the colorant cartridge having a known volume including a known discharge volume (see item 504 which is considered reading on a cartridge) and a known residual volume (item 506 markings allow for known volume of material and residual material left in the container, paragraph 8 teaches skinning of the base material which is considered reading on known residual material), the known volume of stain and the known discharge volume being preselected to be combined with one another to produce a specific color of stain (item 506 markings and item 404 are considered having known volumes based on the color target, see paragraph 89), aligning the colorant cartridge nozzle over the stain container (item 504 has a nozzle aligned with the opening of item 402). Regarding claim 11, it would have been obvious to one of ordinary skill in the art prior to the effective filling date of the claimed invention to dispense the material from the dispenser of Summons into the container of Donlon to allow for storage of paint material.
Regarding claim 12, Summons teaches comprising removing a seal from the nozzle (paragraph 44 teaches a laminated foil seal for the nozzle 22 which would inherently have to be moved before dispensing). Regarding claim 12, Summons is silent to providing a stain container. Regarding claim 12, Donlon teaches a stain container (Figure 5, item 402 and item 404). Regarding claim 12, it would have been obvious to one of ordinary skill in the art prior to the effective filling date of the claimed invention to dispense the material from the dispenser of Summons into the container of Donlon to allow for storage of paint material.
Regarding claim 13, Summons is silent to the stain being unpigmented. Regarding claim 13, Donlon teaches relatively unpigmented clear base, and base paints and stains in order to allow for accept much larger quantity of added colorant at the point of sale (paragraph 3). Regarding claim 13, absent any unexpected results, it would have been obvious prior to the effective filling date of the claimed invention to modify the relatively unpigmented stain to completely unpigmented stain in order to allow for more color options (see Donlon paragraph 3) since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. In re Karlson, 136 USPQ 184.
Regarding claim 14, Summons teaches wherein aligning the colorant cartridge comprises placing the colorant cartridge in a caulking gun (paragraph 56 teaches a caulking gun configured to item 12).
Regarding claim 15, Summons teaches wherein causing the movable bottom of the colorant cartridge to move comprises actuating the caulking gun (paragraph 56 teaches a caulking gun configured to item 12, paragraph 54 teaches moving the bottom wall).
Regarding claim 16, Summons teaches a system for coloring a stain (item 10) comprising, and a colorant cartridge having a volume of a colorant (figures 11 and 18, paragraph 39 item 12 is described as a cartridge, and nozzle item 20), the colorant cartridge having a nozzle (item 10), a cylindrical wall (paragraph 39 teaches a cylindrical cartridge and item 12 is in the shape of a cylinder), and a movable bottom wherein moving the movable bottom from a distal end to a proximal end causes the colorant to discharge from the nozzle (paragraph 54 teaches a movable bottom, which is capable of dispensing the material based on how much material is in item 12). Regarding claim 16, Summons is silent to a stain container having a known volume of colorant and the known volume including a discharge volume and a residual volume. Regarding claim 16, Donlon teaches a stain container having a known volume of colorant (figure 5 item 402 and 404) and the known volume including a discharge volume and a known residual volume (item 504 has markings item 506 which can allow for a known volume including how much is discharged and how much is left in item 504), the known volume of stain and the known volume being preselected to be combined with one another to produce a specific color of stain (item 506 markings and item 404 are considered having known volumes based on the color target, see paragraph 89). Regarding claim 16, it would have been obvious to one of ordinary skill in the art prior to the effective filling date of the claimed invention to dispense the material from the dispenser of Summons into the container of Donlon to allow for storage of paint material.
Regarding claim 17, Summons is silent to the stain being unpigmented. Regarding claim 17, Donlon teaches relatively unpigmented clear base, and base paints and stains in order to allow for accept much larger quantity of added colorant at the point of sale (paragraph 3). Regarding claim 17, absent any unexpected results, it would have been obvious prior to the effective filling date of the claimed invention to modify the relatively unpigmented stain to completely unpigmented stain in order to allow for more color options (see Donlon paragraph 3) since it has been held that omission of an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. In re Karlson, 136 USPQ 184.
Regarding claim 18, Summons teaches wherein the colorant has a viscosity sufficient to maintain particles suspended in the colorant cartridge (paragraph 55 teaches a relatively high viscosity and paragraph 41 teaches dry colorant which is considered reading on particles suspende4d in the base solution).
Regarding claim 19, Summons teaches wherein the colorant has a viscosity sufficient such that the colorant does not leak from an open nozzle (paragraph 55 teaches relatively high viscosity which is described as non-sagging and teaches the nozzle dispenses the material is desired which is considered not leaking).
Regarding claim 20, Summons teaches a caulking gun configured to hold the colorant cartridge and engage the movable bottom and to move the movable bottom from the distal end to the proximal end (paragraph 56 teaches a caulking gun configured to item 12, paragraph 54 teaches a moving bottom wall).
Response to Arguments
The drawing objection is withdrawn in light of the amendment to claim 1 removing “a mixer.”
Regarding the claim 1, 11, and 16 rejections under 35 U.S.C. 103, Applicant argues that neither Summons (U.S. Publication 2011/0174836) or Donlon (U.S. Publication 2022/0010148), alone or in combination with one another teach repeatably producing an exact color of stain at a jobsite. However, it is not clear what structure is being used to distinguish the dispensing and mixing operation between the instant application and the art of record. Summons is concerned with a residual volume of fluid (paragraph 7 the skin, which is considered reading on a residual volume, is later expelled). Additionally, Donlon is concerned with the skinning of a base material (paragraph 8) which is considered reading on a residual volume.
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 ANSHU BHATIA whose telephone number is (571)270-7628. The examiner can normally be reached Monday - Friday 11 a.m. to 7:30 p.m..
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/ANSHU BHATIA/Primary Examiner, Art Unit 1774