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 .
Response to Arguments
Applicant’s arguments, see pg. 7, filed 04 Dec 2025, with respect to the specification objections have been fully considered and are persuasive. The specification objections of 04 Sep 2025 have been withdrawn in view of the amended specification.
Applicant’s arguments, see pg. 7, filed 04 Dec 2025, with respect to the claim objections have been fully considered and are persuasive. The claim objections of 04 Sep 2025 have been withdrawn in view of the amended claims.
Applicant’s arguments, see pg. 7, filed 04 Dec 2025, with respect to the 35 U.S.C. 112(b) rejections have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejections of 04 Sep 2025 have been withdrawn in view of the amended claims.
Applicant’s arguments, see pg. 8-14, filed 04 Dec 2025, with respect to the 35 U.S.C. 103 rejections have been fully considered but are not persuasive.
Regarding independent claim 1, Applicant first argues, see pg. 8-9, that “the extension and retraction of tip 52 through opening 53 is merely a positional change of the tip, identical to any click-type pen structure. This arrangement does not disclose a laterally arranged actuation element and does not disclose any mechanism that controls delivery of a liquid to the delivery opening. The only element located laterally on the longitudinal body in Figs. 4A-4B is a lever 47.” (see specifically pg. 8). However, the Examiner respectfully disagrees. First, the limitation merely recites “an actuation element that is arranged laterally on the longitudinal body of the marking apparatus and controls a delivery of the liquid to the delivery opening” without defining the term “laterally” and without specifying any mechanism that controls a delivery of a liquid to the delivery opening. Second, Examiner relied on Kadykowski’s shaft 51, which includes button 55, as the claimed actuation element, not tip 52 as Applicant alleges. Kadykowski’s shaft 51 including button 55 extends out of body 46 and is arranged laterally on a side of the longitudinal body of the marking apparatus. Additionally, Kadykowski’s shaft 51 indeed controls a delivery of the liquid to the delivery opening by pushing the push button 55 of shaft 51 (see at least Fig. 4A-B). Therefore, Applicant’s allegation that Kadykowski’s lever 47 being the only element located laterally on the longitudinal body is not persuasive, when the claim does not define the term “laterally” to exclude button 55 of shaft 51 and does not specify a mechanism by which the actuation element controls a delivery of the liquid to the delivery opening.
Applicant secondly argues, see pg. 9-11, that “modification would allow the marking apparatus to be visible under magnetic resonance imaging for diagnostic purposes. See Office Action pg. 8. This rationale does not satisfy the requirements of MPEP §§ 2141 and 2143 and does not constitute a proper articulated motivation to combine under KSR. First, Kadykowski does not pertain to MRI-based marking, MRI-compatible structures, or any imaging-driven improvement … Second, Griffin and Nambu do not provide a teaching that would motivate a person of ordinary skill to modify Kadykowski in the manner proposed … Third, the proposed modification would alter the fundamental mode of operation of Kadykowski, contrary to MPEP § 2143.01 … Fourth, the rationale offered is impressibly based on the probe addressed in the present application rather than a problem recognized in the prior art …” However, the Examiner respectfully disagrees. First, Kadykowski is indeed in the same field of endeavor as the instant application for being directed to a marking appaartus, as Applicant even admits in pg. 9-10: “Kadykowski is directed to wet-tissue marking in a surgical environment”. Further, as Applicant even admits in pg. 10, “Kadykowski concerns intraoperative tissue marking” and various operations known in the art includes magnetic resonance guided operations that one of ordinary skill in the art would modify Kadykowski’s “intraoperative tissue marking” for use during a magnetic resonance guided operation. Second, Griffin indeed explicitly discloses in Col 4, lines 11-27 that its coloring agent 32 includes “a non-magnetic hydrogel for nuclear magnetic resonance imaging diagnostic purposes, a Sterilizable gel ink, a fluorescent composition, a combination of any of these, and a mixture of any of these” and Nambu, incorporated by Griffin, indeed explicitly discloses in Col 4, lines 42-54 that its vessel containing the coloring agent is of “such a material (that) does not hinder the NMR diagnosis, use of magnetic materials”. Therefore, one of ordinary skill in the art would be motivated by the disclosure of Griffin and Nambu to modify Kadykowski’s intraoperative tissue marker to have the longitudinal body with material visible to magnetic resonance and with 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. Examiner notes that it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning of Applicant’s claimed invention. But as long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Thirdly, Applicant alleges a bodily incorporation of Griffin and Nambu into Kadykowski to argue “the proposed modification would alter the fundamental mode of operation of Kadykowski” (see pg. 10 of Applicant’s arguments). The test for obviousness under 35 U.S.C. 103 is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). In view of Griffin and Nambu, one of ordinary skill in the art would modify the material composition of Kadykowski’s longitudinal body and liquid for delivery to be both visible to a magnetic resonance, not bodily incorporate Griffin and Nambu into Kadykowski, as Applicant alleges. See MPEP 2144.07. Lastly, as noted above, claim 1 was rejected under 35 U.S.C. 103 and it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning of Applicant’s claimed invention. But as long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As noted above, Griffin and Nambu teach material compositions for a longitudinal body and a liquid for delivery to be visible under at least magnetic resonance to modify Kadykowski that is not visible under magnetic resonance, and such modification, as one of ordinary skill in the art would recognize, would allow Kadykowski’s intraoperative marker for use during a magnetic resonance guided operation. See the 35 U.S.C. 103 rejection to claim 1 below.
Regarding independent claim 10, Applicant argues, see pg. 11, that “Claim 10 recites similar limitations (as Claim 1 recites) and is allowable over the cited references for similar reasons … The Examiner’s rationale that both are “marking apparatuses” is overly generic and insufficient under KSR, and the motivation relies improperly on the applicant’s disclosure rather than on teachings in the prior art”. However, the Examiner respectfully disagrees at least for the reasons explained above for claim 1. Further, Applicant appears to acknowledge that both the instant application and at least Kadykowski are directed to “marking apparatuses” yet does not reasonably consider material modification of Kadykowski’s marking apparatus in view of Griffin and Nambu, which disclose a known magnetic resonance material that is utilized in a marking apparatus. See MPEP 2144.07.
Regarding dependent claim 2, Applicant argues, see pg. 12, that “Kadykowski discloses only a felt-tip element that passively wicks dye by capillary action and is extended or retracted solely for exposure or retraction, not regulating liquid flow”. However, the Examiner respectfully disagrees. The limitation “a liquid conductor that is arranged movably in the delivery opening and by the actuation element from a delivery position, in which the liquid conductor is configured to deliver the liquid to the delivery opening onto a surface of the patient, into a standby position, in which no delivery of the liquid at the surface of the patient located at the delivery opening takes place” recited in claim 2 does not distinguish over Kadykowski’s marking tip 52 that is also arranged movably in the delivery opening (Fig. 4A-B: marking tip 52 arranged movable relative to opening 53) and by the actuation element (Fig. 4A-B: shaft 51) from a delivery position (Fig. 4B), in which the marking tip 52 is configured to deliver the liquid to the delivery opening 53 onto a surface of the patient, into a standby position (Fig. 4A), in which no delivery of the liquid at the surface of the patient located at the delivery opening 53 takes place since marking tip 52 is contained within tube 46 (Fig. 4B; [0021]: retraction and extension of shaft 51 and tip 52 through and from opening 53). Applicant appears to merely argue that Kadykowski does not disclose the limitation in claim 2 without reasonably considering the actual claim language of claim 2. See the 35 U.S.C. 103 rejection to claim 2 below.
Regarding dependent claim 3, Applicant argues, see pg. 12, that “The cited references do not teach a spring element configured to automatically return a liquid conductor to a standby position. Although Kadykowski discloses a spring in a retractable pen-type mechanism, that spring operates solely to toggle exposure of a felt tip and does not act on any liquid conductor or regulate liquid delivery.” However, the Examiner respectfully disagrees. The limitation “a spring element that is configured to position the liquid conductor automatically back in the standby position” in claim 3 does not specify an algorithm for automatically positioning the liquid conductor back in the standby position. Therefore, a broadest reasonable interpretation has been given to the limitation to include Kadykowski’s spring 56 that is configured to automatically position marking tip 52 back in the standby position (Fig. 4A) when the push button 55 is pressed from a delivery position (Fig. 4B): spring 56 is responsive to push button 55 in automatically positioning the marking tip 52 into the standby position. Applicant may consider specifying the algorithm by which the claimed spring element is configured to position the liquid conductor automatically back in the standby position in view of the specification of the instant application to overcome at least Kadykowski.
Regarding dependent claim 4, Applicant argues, see pg. 12-13, that “Kadykowski’s spring 56 does not actuate any liquid-delivery structure and performs only the mechanical function of extending or retracting a felt-tip writing element”. However, the Examiner respectfully disagrees. The limitation “an additional spring element that is configured to position the liquid conductor automatically in the delivery position” in claim 4 does not specify an algorithm for automatically positioning the liquid conductor in the delivery position. Therefore, a broadest reasonable interpretation has been given to the limitation to include Kadykowski’s spring 56 that is configured to automatically position marking tip 52 in the delivery position (Fig. 4B) when the push button 55 is pressed from a standby position (Fig. 4A): spring 56 is responsive to push button 55 in automatically positioning the marking tip 52 into the delivery position. Applicant may consider specifying the algorithm by which the claimed spring element is configured to position the liquid conductor automatically in the delivery position in view of the specification of the instant application to overcome at least Kadykowski. Further, as Applicant even appears to admit, Kadykowski’s marking tip 52 is “a felt-tip writing element” configured to deliver an ink (see at least claim 2 of Kadykowski: marking tip comprising a methylene blue felt tip), thus Kadykowski’s marking tip 52 indeed is a “liquid-delivery structure”.
Regarding dependent claim 5 as well as claims 6-7 which depend on claim 5, Applicant’s arguments, see pg. 13-14, have been considered but are moot because the new ground of rejection in view of the amended claim 5 does not rely on the prior rejection of record for any teaching or matter specifically challenged in the argument. See the new ground of 35 U.S.C. 103 rejections of claims 5-7 below.
Regarding dependent claim 8, Applicant argues, see pg. 14, that “In Kadykowski, the only liquid-related structures (felt tip and push-button mechanism) are located at opposite ends of the device, and the laterally positioned lever actuates gas rather than liquid.” However, the Examiner respectfully disagrees. Kadykowski’s shaft 51 reads on the claimed actuation element as recited in claim 1, see Examiner’s response to Applicant’s arguments against claim 1 above, and Kadykowski’s shaft 51 is also arranged at one end of the longitudinal body of tube 46 at which the delivery opening 53 is located as shaft 51 extends across and through tube 46 (see Fig. 4A-B). Applicant is advised to reasonably consider the claimed limitation in view of Kadykowski as Examiner noted in the prior art rejection, rather than alleging components of Kadykowski which the Examiner does not rely on as the claimed components and further arguing that the alleged components fail to disclose the claimed limitations.
Regarding dependent claim 9, Applicant argues, see pg. 14, that “While Kadykowski’s lever 47 is located along the body, that lever actuates only gas flow and does not regulate liquid delivery as required by claim 1.” However, the Examiner respectfully disagrees. Again, Kadykowski’s shaft 51 reads on the claimed actuation element as recited in claim 1, see Examiner’s response to Applicant’s arguments against claim 1 above, and Kadykowski’s shaft 51 is also arranged in a middle along a longitudinal extend of the longitudinal body (tube 46) as shaft 51 extends across and through tube 46 (see Fig. 4A-B). Again, Applicant is advised to reasonably consider the claimed limitation in view of Kadykowski as Examiner noted in the prior art rejection, rather than alleging components of Kadykowski which the Examiner does not rely on as the claimed components and further arguing that the alleged components fail to disclose the claimed limitations.
Status of Claims
Claims 1-17 are currently under examination. No claim has been cancelled, added, nor withdrawn since the Non-Final Office Action of 04 Sep 2025.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 4 is 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 4 recites the amended limitation “an additional spring element that is configured to position the liquid conductor automatically in the delivery position”. Claim 4 is currently recited to depend on claim 2, which does not recite any spring, yet claim 4 recites “an additional spring element”. It is unclear whether claim 4 should depend on claim 3, which recites “a spring element”, or otherwise, thus the metes and bounds of claim 4 is unclear in view of the amended limitation. For purposes of the examination, the limitation is being given a broadest reasonable interpretation as “a spring element that is configured to position the liquid conductor automatically in the delivery position”.
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 1-4 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kadykowski (US PG Pub No. 2018/0042694) 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, Kadykowski discloses a marking apparatus for applying a liquid (at least Fig. 4A-B), the marker apparatus comprising:
a longitudinal body (Fig. 4A-B: tubular body 46) with a delivery opening at an end of the longitudinal body (Fig. 4A-B: opening 53); and
an actuation element (Fig. 4A-B: shaft 51 including button 55) that is arranged laterally on the longitudinal body of the marking apparatus (Fig. 4A-B: button 55 of shaft 51 on a side of tubular body 46) and controls a delivery of the liquid to the delivery opening (Fig. 4A-B and [0021]: marking tip 52 of shaft 51 is extended through and retracted from opening 53 by the extension and retraction of shaft 51; [0018]: marking tip delivers dye or ink from reservoir within the cylindrical body).
Kadykowski does not disclose:
the liquid is optically visible, visible to magnetic resonance, or optically 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, teaches:
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 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 Kadykowski 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, as noted above in the Response to arguments, by modifying the material compositions of Kadykowski’s liquid and longitudinal body as suggested by Griffin and Nambu. The combination would have yielded a reasonable expectation of success since Kadykowski, 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 2, Kadykowski in view of Griffin and Nambu discloses all limitations of claim 1, as disclosed above, and Kadykowski further discloses:
a liquid conductor (Fig. 4A-B: marking tip 52) that is arranged movably in the delivery opening (Fig. 4A-B: opening 53) and by the actuation element (Fig. 4A-B: shaft 51) from a delivery position (Fig. 4B), in which the liquid conductor is configured to deliver the liquid to the delivery opening onto a surface of the patient, into a standby position (Fig. 4A), in which no delivery of the liquid at the surface of the patient located at the delivery opening takes place (Fig. 4A-B and [0021]: retraction and extension of shaft 51 and tip 52 through and from opening 53).
Regarding claim 3, Kadykowski in view of Griffin and Nambu discloses all limitations of claim 2, as disclosed above, and Kadykowski further discloses:
a spring element (Fig. 4A-B: spring 56) that is configured to position the liquid conductor (Fig. 4A-B: marking tip 52) automatically back in the standby position ([0021]: spring 56 used to selectably extend or retract marking tip 52 through opening 53).
Regarding claim 4, Kadykowski in view of Griffin and Nambu discloses all limitations of claim 2, as disclosed above, and Kadykowski further discloses:
an additional spring element that is configured to position the liquid conductor automatically in the delivery position ([0021]: spring 56 used to selectably extend or retract marking tip 52 through opening 53).
Regarding claim 8, Kadykowski in view of Griffin and Nambu discloses all limitations of claim 1, as disclosed above, and Kadykowski further discloses:
wherein the actuation element (Fig. 4A-B: shaft 51) is arranged at one end of the longitudinal body at which the delivery opening is located (Fig. 4A-B: shaft 51 extending from opening 53 through the middle of tubular body 46 to the other end at button 55).
Regarding claim 9, Kadykowski in view of Griffin and Nambu discloses all limitations of claim 1, as disclosed above, and Kadykowski further discloses:
wherein the actuation element (Fig. 4A-B: shaft 51) is arranged in a middle along a longitudinal extent of the longitudinal body (Fig. 4A-B: shaft 51 extending from opening 53 through the middle of tubular body 46 to the other end at button 55).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kadykowski in view of Griffin and Nambu, as applied to claim 1 above, and further in view of Kaempf (US PG Pub No. 2004/0146335) – hereinafter referred to as Kaempf.
Regarding claim 5, Kadykowski in view of Griffin and Nambu discloses all limitations of claim 1, as disclosed above, and Kadykowski does not disclose:
wherein the longitudinal body includes a liquid reservoir for accommodating the liquid,
wherein the liquid reservoir 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 liquid from the liquid reservoir.
Kaempf, however, in the same field of endeavor in supplying a liquid to a liquid conductor teaches:
a longitudinal body (Fig. 3: shaft 30) including a liquid reservoir (Fig. 3: cap closure 10 including fluid storage means 12) for accommodating the liquid (Fig. 3 and [0024]: fluid is received and stored within fluid storage means 12 of closure cap 10),
wherein the liquid reservoir (Fig. 3: cap closure 10 including fluid storage means 12) is configured to be coupled to a delivery opening (Fig. 3: opening 30e of shaft 30) at the end of the longitudinal body (Fig. 3: shaft 30) in such a way that the liquid conductor takes up liquid from the liquid reservoir ([0027]: when the closure cap 10 is fitted on, the capillary tip 32 comes into fluid-conducting contact into a recess 12 a, of a configuration corresponding to the shape of the tip 32, in the fluid storage means 12 of the closure cap 10).
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 Kadykowski to include a liquid reservoir within the longitudinal body in view of Kaempf. One of ordinary skill in the art would have combined the elements as claimed, for example, by providing a liquid reservoir configured to engage with a liquid conductor, as disclosed by Kaempf. The combination would have yielded a reasonable expectation of success, since Kadykowski and Kaempf are directed to delivering a liquid using a liquid conductor. The motivation for the combination would have been to supply a liquid to the liquid conductor as needed ([0009] of Kaempf).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kadykowski in view of Griffin, Nambu, and Kaempf, as applied to claim 5 above, and further in view of Roh et al. (US PG Pub No. 2019/0082810) – hereinafter referred to as Roh.
Regarding claim 6, Kadykowski in view of Griffin, Nambu, and Kaempf discloses all limitations of claim 5, as discussed above, and Kadykowski does not disclose:
a valve that is arranged between the liquid reservoir and the delivery opening 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.
Roh, however, in the same field of endeavor in supplying a liquid to a liquid conductor teaches:
a valve (Fig. 2, 4: dispensing port 42; [0027]: dispensing port 42 in applicator 38 provided as a valve-like cut or slit) that is arranged between a liquid reservoir (Fig. 2: reservoir 12 in vial 4) and a delivery opening (Fig. 2: delivery channel 44; [0015]: delivery channel at distal end 34 of rod 30) and is configured to influence a flow of the liquid between the liquid reservoir and the delivery opening (Fig. 2, 4 and [0027]: dispensing port 42 in applicator 38 to avoid or minimize contamination of substance 101 by substance 102 contained within tubular body 52, or vice versa) depending on an actuation of an actuation element (Fig. 2, 4 and [0015]: bottom end 22 of cap 6 is adapted to be received on and engage the neck 16 of vial 4 via threads 26, 28, thus applicator 38 is actuated into vial 4).
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 Kadykowski to include a valve between a liquid reservoir and a delivery opening in view of Roh. One of ordinary skill in the art would have combined the elements as claimed, for example, by providing a valve between a liquid reservoir and a delivery opening, as disclosed by Roh. The combination would have yielded a reasonable expectation of success, since Kadykowski and Roh are directed to delivering a liquid using a liquid conductor. The motivation for the combination would have been to avoid or minimize contamination between a liquid being supplied to a liquid conductor and other internal components of the longitudinal body ([0027] of Roh), especially since Kadykowski is configured to deliver a gas, in addition to the liquid, through the longitudinal body.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kadykowski in view of Griffin, Nambu, and Kaempf, as applied to claim 5 above, and further in view of Schmidauer et al. (DE 19702617, a copy of machine translation relied upon attached to this Office action) – hereinafter referred to as Schmidhauer.
Regarding claim 7, Kadykowski in view of Griffin, Nambu, and Kaempf discloses all limitations of claim 5, as discussed above, and Kadykowski does not disclose:
a conveying apparatus for the liquid, wherein the conveying apparatus is configured, with an actuation of the actuation element: to convey liquid from the liquid reservoir to the delivery opening.
Schmidhauer, however, in the same field of endeavor in supplying a liquid to a liquid conductor teaches:
a conveying apparatus (Fig. 4: spring 34) for the liquid (Fig. 4: ink 35”), wherein the conveying apparatus (Fig. 4: spring 34) is configured, with an actuation ([40]: axial movement of suction wick 33 would actuate instrument 2 that is coupled to the suction wick axially), to convey liquid from a liquid reservoir (Fig. 4: tank 3) to a delivery opening (Fig. 4: opening 32; [40]: tip is seated on suction wick 33 which is axially moved by spring 34 and is designed to be connected to ink 35” to maintain a capillary operative connection between ink 35” and instrument 2 at all times).
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 Kadykowski to include a conveying apparatus to convey liquid from a liquid reservoir in view of Schmidhauer. One of ordinary skill in the art would have combined the elements as claimed, for example, by providing a conveying apparatus to convey liquid from a liquid reservoir, as disclosed by Schmidhauer. The combination would have yielded a reasonable expectation of success, since Kadykowski and Schmidhauer are directed to delivering a liquid using a liquid conductor. The motivation for the combination would have been to ensure an appropriate liquid supply to a liquid conductor ([40] of Schmidhauer).
Claims 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kadykowski in view of Nambu.
Regarding claim 10, Kadykowski discloses a system (at least Fig. 2, 4A-B) comprising:
a marking apparatus (at least Fig. 4A-B) comprising:
a longitudinal body (Fig. 4A-B: tubular body 46) with a delivery opening at an end of the longitudinal body (Fig. 4A-B: opening 53); and
an actuation element (Fig. 4A-B: shaft 51 including button 55) that is arranged laterally on the longitudinal body of the marking apparatus (Fig. 4A-B: button 55 of shaft 51 on a side of tubular body 46) and controls a delivery of the liquid to the delivery opening (Fig. 4A-B and [0021]: marking tip 52 of shaft 51 is extended through and retracted from opening 53 by the extension and retraction of shaft 51; [0018]: marking tip delivers dye or ink from reservoir within the cylindrical body); and
a liquid reservoir (Fig. 2: reservoir 22 and [0018]: felt tip 21 delivers dye or ink from a reservoir 22),
wherein the liquid reservoir and the marking apparatus (Fig. 2: reservoir 22) 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 liquid from the liquid reservoir (Fig. 2 and [0018]: felt tip 21 delivers dye or ink from a reservoir 22 within the cylindrical body through the opening).
It is noted that although the teachings of Kadykowski cited above are taken from different embodiments, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the embodiments as set forth above, because Kadykowski teaches that a wide range of different embodiments that are directed to a marking apparatus, because each of the embodiments add to or subtract from one embodiment that serves as the least common denominator (i.e., the first embodiment), and because each of the embodiments are in the same field of endeavor. One of ordinary skill in the art could have combined the elements as claimed, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for the combination would have been to supply the liquid to the liquid conductor (Fig 2 and [0018] of Kadykowski).
Kadykowski 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 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 Kadykowski 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, as noted above in the Response to arguments, by modifying the material compositions of Kadykowski’s liquid and longitudinal body as suggested by Griffin and Nambu. The combination would have yielded a reasonable expectation of success since both Kadykowski and Nambu are 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 42-54 of Nambu).
Regarding claim 11, Kadykowski in view of Nambu discloses all limitations of claim 10, as disclosed above, and Kadykowski further discloses:
a liquid conductor (Fig. 4A-B: marking tip 52) that is arranged movably in the delivery opening and by the actuation element from a delivery position (Fig. 4B), in which the liquid conductor is configured to deliver the liquid to the delivery opening onto a surface of the patient, into a standby position (Fig. 4A), in which no delivery of the liquid at the surface of the patient located at the delivery opening takes place (Fig. 4A-B and [0021]: retraction and extension of shaft 51 and tip 52 through and from opening 53).
Regarding claim 12, Kadykowski in view of Nambu discloses all limitations of claim 11, as disclosed above, and Kadykowski further discloses:
a spring element (Fig. 4A-B: spring 56) that is configured to position the liquid conductor (Fig. 4A-B: marking tip 52) automatically back in the standby position ([0021]: spring 56 used to selectably extend or retract marking tip 52 through opening 53).
Regarding claim 13, Kadykowski in view of Nambu discloses all limitations of claim 11, as disclosed above, and Kadykowski further discloses:
a spring element that is configured to position the liquid conductor automatically in the delivery position ([0021]: spring 56 used to selectably extend or retract marking tip 52 through opening 53).
Regarding claim 14, Kadykowski in view of Nambu discloses all limitations of claim 10, as disclosed above, and Kadykowski does not disclose:
a valve that is arranged between the liquid reservoir and the delivery opening 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.
However, Kadykowski discloses in the same embodiment teaches:
a valve (Fig. 4A-B: valve 44) that is arranged between a gas reservoir and the delivery opening (Fig. 4A-B: valve 44 between gas line 41 and opening 53; [0020]: gas line 41 from an external supply) and is configured to influence a flow of a gas between the gas reservoir and the delivery opening depending on an actuation of the actuation element (Fig. 4A-B and [0020]-[0021]: valve 44 selectably releases the gas into an internal opening 45 within tubular body 46, and when marker shaft 51 is extended gas valve 44 closes to prevent gas from being emitted at the distal end).
One of ordinary skill in the art would have been capable of applying the known technique of Kadykowski that uses a valve to influence a flow of fluid between a reservoir and a delivery opening to the known apparatus of Kadykowski for delivering a fluid that was ready for improvement. The results would have been predictable to one of ordinary skill in the art because Kadykowski discloses a fluid marking apparatus configured to deliver both a liquid and a gas, and a liquid and a gas can be interchangeably delivered. Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to apply the known technique Kadykowski that uses a valve to influence a flow of fluid between a reservoir and a delivery opening to the known apparatus of Kadykowski for delivering a fluid in order to produce the predictable improvement of providing an external supply of fluid to the fluid marking apparatus. See MPEP 2143(I)(D).
Regarding claim 15, Kadykowski in view of Nambu discloses all limitations of claim 10, as disclosed above, and Kadykowski further teaches (see claim 14 above):
a conveying apparatus (Fig. 4A-B: spring 54, plunger arm 48, lever 47) for the fluid ([0020]: spring 54, plunger arm 48, and lever 47 for opening and closing gas valve 44),
wherein the conveying apparatus is configured, with an actuation of the actuation element to convey gas from the gas reservoir to the delivery opening ([0020]-[0021]: spring 54, plunger arm 48, and lever 47 control valve 44 for gas flow with extension and retraction of shaft 51).
Regarding claim 16, Kadykowski in view of Nambu discloses all limitations of claim 10, as disclosed above, and Kadykowski further discloses:
wherein the actuation element (Fig. 4A-B: shaft 51) is arranged at one end of the longitudinal body at which the delivery opening is located (Fig. 4A-B: shaft 51 extending from opening 53 through the middle of tubular body 46 to the other end at button 55).
Regarding claim 17, Kadykowski in view of Nambu discloses all limitations of claim 10, as disclosed above, and Kadykowski further discloses:
wherein the actuation element (Fig. 4A-B: shaft 51) is arranged in a middle along a longitudinal extent of the longitudinal body (Fig. 4A-B: shaft 51 extending from opening 53 through the middle of tubular body 46 to the other end at button 55).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wasai et al. (US Patent No. 5929135) discloses actuating an actuation element (Fig. 4-5: clip 21) to control a delivery of a liquid to a delivery opening (Fig. 4-5: tip 12 containing ink); and
Sawa et al. (US Patent No. 8944716) discloses a valve coupled to a liquid reservoir (Fig. 2(a): valve element 20 and ink tank 12).
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.
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/Y.C./Examiner, Art Unit 3797
/ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
03/24/26