DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 25 Jun 2026 has been entered.
Response to Arguments
Applicant’s arguments, see pg. 7, filed 25 Jun 2026, with respect to the 35 U.S.C. 112(b) rejection have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejection of 26 Mar 2026 has been withdrawn in view of the amended claim.
Applicant’s arguments, see pg. 7-11, filed 25 Jun 2026, with respect to the 35 U.S.C. 103 rejections have been considered but are moot because the new ground of rejection does not rely on the prior rejection of record for any teaching or matter specifically challenged in the argument.
Status of Claims
Claims 1, 3-10, and 12-17 are currently under examination. Claims 2 and 11 have been cancelled since the Final Office Action of 26 Mar 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Amended claim 4 recites “The marking apparatus of claim 3, further comprising: an additional spring element that is configured to position the liquid conductor automatically in the delivery position.” A review of the original specification, however, does not disclose “an additional spring element that is configured to position the liquid conductor automatically in the delivery position.” In particular, amended claim 4 now depends on claim 3, which already recites “a spring element that is configured to position the liquid conductor automatically back in the standby position”. Thus, the recitation of “additional spring element” in claim 4 suggests the claimed invention comprising two spring elements. However, the original specification discloses only a single spring element configured to position the liquid conductor between the standby position and the delivery position (see Fig. 2-3, 5: spring element 74 and [0019]-[0021], [0059], [0064]-[0065]).
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 3-9 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.
Claim 1 recites the limitations “the longitudinal body of an axial guide” and “the longitudinal body of the marking apparatus”. The antecedent basis for each of “the longitudinal body” is unclear: it is unclear whether these longitudinal bodies are the same or different. Claims 3-9 inherit the deficiency by the nature of their dependency on claim 1. For the purposes of the examination, a broadest reasonable interpretation is being given to “the longitudinal body of an axis guide” to be “the longitudinal body on an axis guide”.
Claim 4 recites the limitation “an additional spring element that is configured to position the liquid conductor automatically in the delivery position”. As noted in the 35 U.S.C. 112(a) rejection above, a review of the original specification discloses “additional spring element” to be the same “spring element” recited in claim 3, to which claim 4, depends. Therefore, it is unclear whether “additional spring element” in claim 4 should read “the spring element” or otherwise. For the purposes of the examination, the limitation in claim 4 is being given a broadest reasonable interpretation as “the spring element that is further configured to position the liquid conductor automatically in the delivery position” as supported by the original specification of the instant application.
Claim 5 recites the limitation “such a way that the liquid conductor takes up liquid from the liquid reservoir”. It is unclear whether “liquid” in the limitation is the same or different from “liquid” also recited in line 2 of claim 5. Claims 6-7 inherit the deficiency by the nature of their dependency on claim 5. For the purposes of the examination, the limitation is being given a broadest reasonable interpretation as “such a way that the liquid conductor takes up the liquid from the liquid reservoir”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Bielecki et al. (US PG Pub No. 2006/0216103) – hereinafter referred to as Bielecki – in view of Griffin (US Patent No. 6972022, provided by the Applicant in the IDS of 19 Jul 2023) and Nambu et al. (US Patent No. 4916170), which is incorporated fully by Griffin (see Col 4, lines 19-22 of Griffin: “U.S. Pat. No. 4,916,170 issued to Nambu et al., hereby incorporated by reference as if fully set forth herein”).
Regarding claim 1, Bielecki discloses a marking apparatus for applying a liquid (at least Fig. 1-5: utensil 10 and [0020]: ink flows onto writing surface when utensil 10 is being used), the marking apparatus comprising:
a longitudinal body (Fig. 1-4 and [0017]: utensil 10 including casing 16 disposed along a longitudinal axis A) and a delivery opening at an end of the longitudinal body (Fig. 1-4 and [0017]: nose 18 at distal end 12 to allow tip 34 to extend out);
a liquid conductor (Fig. 2-4: tip 34) disposed within the longitudinal body on an axial guide (Fig. 2-4: tip 34 disposed along longitudinal axis A and within inner passage 46 and casing 16); and
an actuation element (Fig. 1-4: actuator 30) that is arranged laterally on the longitudinal body of the marking apparatus (Fig. 1-4 and [0017]: actuator 30 slidably disposed on barrel 20 of casing 16), is movable parallel to the axial guide (Fig. 3-4 and [0027]: actuator 30 moved along a path substantially parallel to axis A to move utensil 10 between the stored position and the writing position), and controls a delivery of the liquid to the delivery opening (Fig. 3-4 and [0027]: actuator 30 moves utensil 10 between the stored position and the writing position; [0017]: tip 34 extends out the nose 18 when the writing utensil 10 is in the writing position and is stored inside the noise 18 in a stored position),
wherein the liquid conductor (Fig. 3-4: tip 34) is movable on the axial guide (Fig. 3-4: inner passage 46) by the laterally arranged actuation element (Fig. 1-4: actuator 30) from a standby position withdrawn into an inside of the marking apparatus to a delivery position projecting to or beyond the delivery opening (Fig. 1-4 and [0017]: actuator 30 moves tip 34 extending out from nose 18 in a writing position and storing tip 34 inside the nose 18 in a stored position; [0019]: inner passage 46 along and through which tip 34 travels as it is being extended and retracted).
Bielecki does not disclose:
the liquid being optically visible, visible to magnetic resonance, or optical visible and visible to magnetic resonance to a patient in a magnetic resonance tomograph; and
the longitudinal body with material visible to magnetic resonance.
Griffin and Nambu in the same field of marking apparatus, however, teach:
a liquid that is optically visible, visible to magnetic resonance, or optically visible and visible to magnetic resonance to a patient in a magnetic resonance tomograph (Col 4, lines 11-27 of Griffin: coloring agent 32 of non-magnetic hydrogel for nuclear magnetic resonance imaging diagnostic purposes, a fluorescent composition, a combination of any of these); and
a longitudinal body with material visible to magnetic resonance (Col 4, lines 42-54 of Nambu: vessel of dispersed contrast medium and non-magnetic materials that do not hinder the NMR diagnosis).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Bielecki to include Griffin’s optically visible or magnetic resonance visible liquid and Nambu’s longitudinal body with material visible to magnetic resonance. One of ordinary skill in the art would have combined the elements as claimed, for example, by modifying the material compositions of Bielecki’s liquid and longitudinal body as suggested by Griffin and Nambu. The combination would have yielded a reasonable expectation of success since Bielecki, Griffin, and Nambu are all directed to a marking apparatus. The motivation for the combination would have been to allow the marking apparatus be visible under magnetic resonance imaging to be used for magnetic resonance imaging diagnostic purposes (Col 4, lines 11-27 of Griffin).
Regarding claim 3, Bielecki in view of Griffin and Nambu discloses all limitations of claim 1, as discussed above, and Bielecki further discloses:
a spring element (Fig. 4: valve spring 68) that is configured to position the liquid conductor automatically back in the standby position (Fig. 4 and [0022]: valve spring 68 biases urging the utensil 10 towards the stored position, thus tip 34 is stored inside the nose 18).
Regarding claim 4, Bielecki in view of Griffin and Nambu discloses all limitations of claim 3, as discussed above, and Bielecki further discloses:
the spring element (Fig. 3: valve spring 68) that is configured to position the liquid conductor automatically in the delivery position (Fig. 3 and [0028]: force of valve spring 68 can overcome the force of actuator spring 126 and push the reservoir holder 56 towards the distal end, thus tip 34 extends out from the nose 18).
Regarding claim 5, Bielecki in view of Griffin and Nambu discloses all limitations of claim 1, as discussed above, and Bielecki further discloses:
wherein the longitudinal body (Fig. 3-4: casing 16) includes a liquid reservoir (Fig. 3-4: reservoir 54) for accommodating the liquid ([0020]: reservoir 54 contains the ink),
wherein the liquid reservoir (Fig. 3-4: reservoir 54) is configured to be coupled to the delivery opening at the end of the longitudinal body in such a way that the liquid conductor takes up the liquid from the liquid reservoir (Fig. 3 and [0020]: writing tip 34 is connected to reservoir 54 and ink flows from reservoir 54 through the tip 34 and onto the writing surface through nose 18 when the utensil 10 is being used).
It is noted that a broadest reasonable interpretation has been given to “wherein the liquid reservoir is configured to be coupled to the delivery opening at the end of the liquid longitudinal body in such a way that the liquid conductor takes up liquid from the liquid reservoir” in view of Fig. 2 of the instant application, which discloses the liquid reservoir coupled to the delivery opening via the liquid conductor in such a way that the liquid conductor takes up liquid from the liquid reservoir to the delivery opening.
Regarding claim 6, Bielecki in view of Griffin and Nambu discloses all limitations of claim 5, as discussed above, and Bielecki further discloses:
a valve (Fig. 3-4: valve 36) that is arranged between the liquid reservoir and the delivery opening (Fig. 3-4: valve 36 between reservoir 54 and opening end on nose 18) and is configured to influence a flow of the liquid between the liquid reservoir and the delivery opening depending on an actuation of the actuation element (Fig. 3-4 and [0018]-[0019]: valve door 44 of valve 36 bears in a closed position when the tip 34 is in the stored position and rotates outward to an open position to allow the tip 34 to extend out the nose 18 when the utensil 10 is in the writing position; [0020]: writing tip 34 is connected to reservoir 54 and ink flows from reservoir 54 through the tip 34 and onto the writing surface through nose 18 when the utensil 10 is being used).
Regarding claim 7, Bielecki in view of Griffin and Nambu discloses all limitations of claim 5, as discussed above, and Bielecki further discloses:
a conveying apparatus (Fig. 3-5: actuator spring 126) for the liquid (Fig. 3-5 and [0028]: actuator spring 126 bears against the rear face 80 of refill tube 76), wherein the conveying apparatus is configured, with an actuation of the actuation element, to convey liquid from the liquid reservoir to the delivery opening ([0028]: actuator spring 126 bias the actuator 30 away from the reservoir holder 56, but the compression of actuator spring 126 pushes reservoir holder 56 towards the distal end 12 as seen in FIG. 3).
Regarding claim 9, Bielecki in view of Griffin and Nambu discloses all limitations of claim 1, as discussed above, and Bielecki further discloses:
wherein the actuation element (Fig. 1-4: actuator 30) is arranged in a middle along a longitudinal extent of the longitudinal body (Fig. 1-4: actuator 30 in the middle between distal end 12 and proximal end 14).
Claims 1, 5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (CN112590425A, a copy of machine translation relied upon attached to this Office action) – hereinafter referred to as Han – in view of Griffin and Nambu.
Regarding claim 1, Han discloses a marking apparatus for applying a liquid (at least Fig. 2-4 and [36]: pen tip 23 extends into ink bag 22 and retracts or extends out of pen housing 21), the marking apparatus comprising:
a longitudinal body (Fig. 2-4: pen housing 21) and a delivery opening at an end of the longitudinal body (Fig. 2-4 and [36]: pen tip 23 retracts or extends out of the pen housing 21 at an end of pen housing 21);
a liquid conductor (Fig. 2-4: pen tip 23) disposed within the longitudinal body on an axial guide (Fig. 3 and [36]: pen tip 23 disposed within hollow interior bounded by walls of pen housing 21); and
an actuation element (Fig. 2-4: sliding adjustor 24) that is arranged laterally on the longitudinal body of the marking apparatus (Fig. 2-4: sliding adjustor 24 laterally arranged on pen housing 21), is movable parallel to the axial guide (Fig. 2-4 and [41]: sliding adjustor 24 comprising shifting block 241 sliding with along sliding groove 213), and controls a delivery of the liquid to the delivery opening (Fig. 2-4 and [36]: pen tip 23 retracts or extends out of pen housing 21 via sliding adjustor 24, and tail of pen tip 23 extends into the ink bag),
wherein the liquid conductor (Fig. 2-4: pen tip 23) is movable on the axial guide by the laterally arranged actuation element from a standby position withdrawn into an inside of the marking apparatus to a delivery position projecting to or beyond the delivery opening (Fig. 2-4 and [36]: pen tip 23 retracts or extends out of pen housing 21 via sliding adjustor 24).
Han does not disclose:
the liquid being optically visible, visible to magnetic resonance, or optical visible and visible to magnetic resonance to a patient in a magnetic resonance tomograph; and
the longitudinal body with material visible to magnetic resonance.
Griffin and Nambu in the same field of marking apparatus, however, teach:
a liquid that is optically visible, visible to magnetic resonance, or optically visible and visible to magnetic resonance to a patient in a magnetic resonance tomograph (Col 4, lines 11-27 of Griffin: coloring agent 32 of non-magnetic hydrogel for nuclear magnetic resonance imaging diagnostic purposes, a fluorescent composition, a combination of any of these); and
a longitudinal body with material visible to magnetic resonance (Col 4, lines 42-54 of Nambu: vessel of dispersed contrast medium and non-magnetic materials that do not hinder the NMR diagnosis).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Han to include Griffin’s optically visible or magnetic resonance visible liquid and Nambu’s longitudinal body with material visible to magnetic resonance. One of ordinary skill in the art would have combined the elements as claimed, for example, by modifying the material compositions of Han’s liquid and longitudinal body as suggested by Griffin and Nambu. The combination would have yielded a reasonable expectation of success since Han, Griffin, and Nambu are all directed to a marking apparatus. The motivation for the combination would have been to allow the marking apparatus be visible under magnetic resonance imaging to be used for magnetic resonance imaging diagnostic purposes (Col 4, lines 11-27 of Griffin).
Regarding claim 5, Han in view of Griffin and Nambu discloses all limitations of claim 1, as discussed above, and Han further discloses:
wherein the longitudinal body (Fig. 2-4: pen housing 21) includes a liquid reservoir (Fig. 3: ink bag 22) for accommodating the liquid ([36]: ink bag 22 for supplying ink to pen tip 23),
wherein the liquid reservoir (Fig. 3: ink bag 22) is configured to be coupled to the delivery opening at the end of the longitudinal body in such a way that the liquid conductor takes up the liquid from the liquid reservoir (Fig 3 and [36]: tail of pen tip 23 extends into ink bag 22 and pen tip 23 delivers the ink by extracting out of the pen housing 21).
It is noted that a broadest reasonable interpretation has been given to “wherein the liquid reservoir is configured to be coupled to the delivery opening at the end of the liquid longitudinal body in such a way that the liquid conductor takes up liquid from the liquid reservoir” in view of Fig. 2 of the instant application, which discloses the liquid reservoir coupled to the delivery opening via the liquid conductor in such a way that the liquid conductor takes up liquid from the liquid reservoir to the delivery opening.
Regarding claim 8, Han in view of Griffin and Nambu discloses all limitations of claim 1, as discussed above, and Han further discloses:
wherein the actuation element (Fig. 2-4: sliding adjustor 24) is arranged at one end of the longitudinal body at which the delivery opening is located (Fig. 2-4: sliding adjustor 24 at end of pen housing 21 at which pen tip 23 retracts or extends out of the pen housing 21).
Claims 10, 12-15, and 17 are rejected are rejected under 35 U.S.C. 103 as being unpatentable over Bielecki in view of Nambu.
Regarding claim 10, Bielecki discloses a system (at least Fig. 1-5) comprising:
a marking apparatus (Fig. 1-5: utensil 10) comprising:
a longitudinal body (Fig. 1-5 and [0017]: utensil 10 including casing 16 disposed along a longitudinal axis A) and a delivery opening at an end of the longitudinal body (Fig. 1-4 and [0017]: nose 18 at distal end 12 to allow tip 34 to extend out);
a liquid conductor (Fig. 2-4: tip 34) disposed within the longitudinal body on an axial guide (Fig. 2-4: tip 34 disposed along longitudinal axis A and within inner passage 46 and casing 16); and
an actuation element (Fig. 1-4: actuator 30) that is arranged laterally on the longitudinal body of the marking apparatus (Fig. 1-4 and [0017]: actuator 30 slidably disposed on barrel 20 of casing 16), is movable parallel to the axial guide (Fig. 3-4 and [0027]: actuator 30 moved along a path substantially parallel to axis A to move utensil 10 between the stored position and the writing position), and is configured to control a delivery of the liquid to the delivery opening (Fig. 3-4 and [0027]: actuator 30 moves utensil 10 between the stored position and the writing position; [0017]: tip 34 extends out the nose 18 when the writing utensil 10 is in the writing position and is stored inside the noise 18 in a stored position),
wherein the liquid conductor (Fig. 3-4: tip 34) is movable on the axial guide (Fig. 3-4: inner passage 46) by the laterally arranged actuation element (Fig. 1-4: actuator 30) from a standby position withdrawn into an inside of the marking apparatus to a delivery position projecting to or beyond the delivery opening (Fig. 1-4 and [0017]: actuator 30 moves tip 34 extending out from nose 18 in a writing position and storing tip 34 inside the nose 18 in a stored position; [0019]: inner passage 46 along and through which tip 34 travels as it is being extended and retracted); and
a liquid reservoir (Fig. 3-4: reservoir 54), wherein the liquid reservoir (Fig. 3-4: reservoir 54) and the marking apparatus (Fig. 1-4: casing 16, tip 34, and actuator 30) are configured to be coupled to the delivery opening at the end of the longitudinal body in such a way that the liquid conductor takes up the liquid from the liquid reservoir (Fig. 3 and [0020]: writing tip 34 is connected to reservoir 54 and ink flows from reservoir 54 through the tip 34 and onto the writing surface through nose 18 when the utensil 10 is being used).
It is noted that a broadest reasonable interpretation has been given to “wherein the liquid reservoir is configured to be coupled to the delivery opening at the end of the liquid longitudinal body in such a way that the liquid conductor takes up the liquid from the liquid reservoir” in view of Fig. 2 of the instant application, which discloses the liquid reservoir coupled to the delivery opening via the liquid conductor in such a way that the liquid conductor takes up liquid from the liquid reservoir to the delivery opening.
Bielecki does not disclose:
the longitudinal body with material visible to magnetic resonance.
Nambu in the same field of marking apparatus, however, teaches:
a longitudinal body with material visible to magnetic resonance (Col 4, lines 42-54: vessel of dispersed contrast medium and non-magnetic materials that do not hinder the NMR diagnosis).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Bielecki to include Nambu’s longitudinal body with material visible to magnetic resonance. One of ordinary skill in the art would have combined the elements as claimed, for example, by modifying the material composition of Bielecki’s longitudinal body as suggested by Nambu. The combination would have yielded a reasonable expectation of success since Bielecki and Nambu are all directed to a marking apparatus. The motivation for the combination would have been to allow the marking apparatus be visible under magnetic resonance imaging to be used for magnetic resonance imaging diagnostic purposes.
Regarding claim 12, Bielecki in view of Nambu discloses all limitations of claim 10, as discussed above, and Bielecki further discloses:
a spring element (Fig. 4: valve spring 68) that is configured to position the liquid conductor automatically back in the standby position (Fig. 4 and [0022]: valve spring 68 biases urging the utensil 10 towards the stored position, thus tip 34 is stored inside the nose 18).
Regarding claim 13, Bielecki in view of Nambu discloses all limitations of claim 10, as discussed above, and Bielecki further discloses:
a spring element (Fig. 3: valve spring 68) that is configured to position the liquid conductor automatically in the delivery position (Fig. 3 and [0028]: force of valve spring 68 can overcome the force of actuator spring 126 and push the reservoir holder 56 towards the distal end, thus tip 34 extends out from the nose 18).
Regarding claim 14, Bielecki in view of Nambu discloses all limitations of claim 10, as discussed above, and Bielecki further discloses:
a valve (Fig. 3-4: valve 36) that is arranged between the liquid reservoir and the delivery opening (Fig. 3-4: valve 36 between reservoir 54 and opening end on nose 18) and is configured to influence a flow of the liquid between the liquid reservoir and the delivery opening depending on an actuation of the actuation element (Fig. 3-4 and [0018]-[0019]: valve door 44 of valve 36 bears in a closed position when the tip 34 is in the stored position and rotates outward to an open position to allow the tip 34 to extend out the nose 18 when the utensil 10 is in the writing position; [0020]: writing tip 34 is connected to reservoir 54 and ink flows from reservoir 54 through the tip 34 and onto the writing surface through nose 18 when the utensil 10 is being used).
Regarding claim 15, Bielecki in view of Nambu discloses all limitations of claim 10, as discussed above, and Bielecki further discloses:
a conveying apparatus (Fig. 3-5: actuator spring 126) for the liquid (Fig. 3-5 and [0028]: actuator spring 126 bears against the rear face 80 of refill tube 76), wherein the conveying apparatus is configured, with an actuation of the actuation element, to convey liquid from the liquid reservoir to the delivery opening ([0028]: actuator spring 126 bias the actuator 30 away from the reservoir holder 56, but the compression of actuator spring 126 pushes reservoir holder 56 towards the distal end 12 as seen in FIG. 3).
Regarding claim 17, Bielecki in view of Nambu discloses all limitations of claim 10, as discussed above, and Bielecki further discloses:
wherein the actuation element (Fig. 1-4: actuator 30) is arranged in a middle along a longitudinal extent of the longitudinal body (Fig. 1-4: actuator 30 in the middle between distal end 12 and proximal end 14).
Claims 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Han in view of Nambu.
Regarding claim 10, Han discloses a system (at least Fig. 2-4) comprising:
a marking apparatus (at least Fig. 2-4) comprising:
a longitudinal body (Fig. 2-4: pen housing 21) and a delivery opening at an end of the longitudinal body (Fig. 2-4 and [36]: pen tip 23 retracts or extends out of the pen housing 21 at an end of pen housing 21);
a liquid conductor (Fig. 2-4: pen tip 23) disposed within the longitudinal body on an axial guide (Fig. 3 and [36]: pen tip 23 disposed within hollow interior bounded by walls of pen housing 21); and
an actuation element (Fig. 2-4: sliding adjustor 24) that is arranged laterally on the longitudinal body of the marking apparatus (Fig. 2-4: sliding adjustor 24 laterally arranged on pen housing 21), is movable parallel to the axial guide (Fig. 2-4 and [41]: sliding adjustor 24 comprising shifting block 241 sliding with along sliding groove 213), and is configured to control a delivery of the liquid to the delivery opening (Fig. 2-4 and [36]: pen tip 23 retracts or extends out of pen housing 21 via sliding adjustor 24, and tail of pen tip 23 extends into the ink bag),
wherein the liquid conductor (Fig. 2-4: pen tip 23) is movable on the axial guide by the laterally arranged actuation element from a standby position withdrawn into an inside of the marking apparatus to a delivery position projecting to or beyond the delivery opening (Fig. 2-4 and [36]: pen tip 23 retracts or extends out of pen housing 21 via sliding adjustor 24); and
a liquid reservoir (Fig. 3: ink bag 22), wherein the liquid reservoir (Fig. 3: ink bag 22) is configured to be coupled to the delivery opening at the end of the longitudinal body in such a way that the liquid conductor takes up the liquid from the liquid reservoir (Fig 3 and [36]: tail of pen tip 23 extends into ink bag 22 and pen tip 23 delivers the ink by extracting out of the pen housing 21).
It is noted that a broadest reasonable interpretation has been given to “wherein the liquid reservoir is configured to be coupled to the delivery opening at the end of the liquid longitudinal body in such a way that the liquid conductor takes up the liquid from the liquid reservoir” in view of Fig. 2 of the instant application, which discloses the liquid reservoir coupled to the delivery opening via the liquid conductor in such a way that the liquid conductor takes up liquid from the liquid reservoir to the delivery opening.
Han does not disclose:
the longitudinal body with material visible to magnetic resonance.
Nambu in the same field of marking apparatus, however, teaches:
a longitudinal body with material visible to magnetic resonance (Col 4, lines 42-54: vessel of dispersed contrast medium and non-magnetic materials that do not hinder the NMR diagnosis).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Han to include Nambu’s longitudinal body with material visible to magnetic resonance. One of ordinary skill in the art would have combined the elements as claimed, for example, by modifying the material composition of Han’s longitudinal body as suggested by Nambu. The combination would have yielded a reasonable expectation of success since Han and Nambu are all directed to a marking apparatus. The motivation for the combination would have been to allow the marking apparatus be visible under magnetic resonance imaging to be used for magnetic resonance imaging diagnostic purposes.
Regarding claim 16, Han in view of Nambu discloses all limitations of claim 10, as discussed above, and Han further discloses:
wherein the actuation element (Fig. 2-4: sliding adjustor 24) is arranged at one end of the longitudinal body at which the delivery opening is located (Fig. 2-4: sliding adjustor 24 at end of pen housing 21 at which pen tip 23 retracts or extends out of the pen housing 21).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hamilton et al. (US PG Pub No. 2015/0335815) discloses a marking apparatus comprising an actuation element that is arranged laterally on a longitudinal body and is configured to be moveable parallel within the longitudinal body (at least Fig. 4); and
Candela et al. (US PG Pub No. 2014/0369735) discloses a marking apparatus comprising an actuation element that is arranged laterally on a longitudinal body and is configured to be moveable parallel within the longitudinal body (at least Fig. 2-3).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Younhee Choi whose telephone number is (571)272-7013. The examiner can normally be reached M-F 9AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Y.C./Examiner, Art Unit 3797
/ANHTUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
9/27/26
