DETAILED ACTION
Pending Claims
Claims 1-3 and 16-32 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 Objections
Claim 29 is objected to because of the following informalities: the language “and mixtures thereof” should be removed because it is redundant. Specifically, the language “at least one slip agent and/or at least one wax” already embraces “mixtures thereof”. Appropriate correction is required.
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 30 and 32 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.
Regarding claim 30, claim 30 recites the limitation "the at least one slip agent and/or at least one wax" in the polymer-based extrudable lead or refill according to claim 1. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 32, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 32 recites the broad recitation “a writing, drawing and/or painting tool”, and the claim also recites “advantageously a pencil” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-3, 18, 19, 21, 22, 27, 31, and 32 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ito et al. (JP 2007-262295 A).
Regarding claims 1-3, 18, 19, 21, 22, and 27, Ito et al. disclose: (1 & 3) a polymer-based extrudable material (Abstract; paragraphs 0047-0048; Example 8 in Table 1) comprising:
a binder comprising a mixture of polylactide with poly(butylene succinate) (PBS) (Example 8 in Table 1: “PLA” and “PBS”), and
at least one filler (Example 8 in Table 1: “GrA” as “scaly graphite”;
(18) wherein the total amount of PBS is at least 2 wt. %, based on the total weight of the material (Example 8 in Table 1: approximately 21%);
(19) wherein the total amount of said polylactide is of 5-48 wt. %, based on the total weight of the material (Example 8 in Table 1: approximately 42%);
(21) wherein the weight ratio between polylactide and PBS is of 0.2 to 20 (Example 8 in Table 1: 2); (22) wherein the weight ratio between polylactide and PBS is of 0.5 to 10 (Example 8 in Table 1: 2); and
(27) wherein the total amount of the at least one filler is of 5-50 wt. %, based on the total weight of the material (Example 8 in Table 1: approximately 37%).
Ito et al. fail to explicitly disclose: (1-3) at least one polymer having a flexural modulus inferior to the flexural modulus of polylactide (2) having a flexural modulus < 3000 MPa measured according to the standard ISO 178:2019. Rather, the exemplary embodiment of Ito et al. includes poly(butylene succinate) (PBS), which is presented in claim (3). Accordingly, the poly(butylene succinate) (PBS) appears to satisfy the instantly claimed inferior flexural modulus.
Ito et al. fail to explicitly disclose: (1) at least one coloring agent. Rather, the exemplary embodiment of Ito et al. includes scaly graphite as a filler. The black filler simultaneously satisfies the instantly claimed at least one filler and at least one coloring agent.
Lastly, the recitation “lead or refill for writing, drawing and/or painting tools” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In the instant case, the preamble merely recites the intended use of the material, wherein the prior art can meet this future limitation by merely being capable of such intended use. The material of Ito et al. appears to be inherently capable of performing this intended use because it satisfies all of the material/chemical limitations of claimed invention. At the very least, the material of Ito et al. appears to be obviously capable of performing this intended use because it satisfies all of the material/chemical limitations of claimed invention.
Regarding claim 31, the recitation “color lead or refill for writing, drawing and/or painting tools” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In the instant case, the preamble merely recites the intended use of the material, wherein the prior art can meet this future limitation by merely being capable of such intended use. The material of Ito et al. appears to be inherently capable of performing this intended use because it satisfies all of the material/chemical limitations of claimed invention. At the very least, the material of Ito et al. appears to be obviously capable of performing this intended use because it satisfies all of the material/chemical limitations of claimed invention.
Regarding claim 32, Ito et al. fail to disclose that their pelletized material or molded article thereof (see paragraph 0049) is: (32) a writing, drawing and/or painting tool comprising the lead or a refill. However, it has been found that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case the pelletized material and molded article of Ito et al. appears to be inherently capable of performing this intended use because it satisfies all of the material/chemical limitations of claimed invention. At the very least, the pelletized material and molded article of Ito et al. appears to be obviously capable of performing this intended use because it satisfies all of the material/chemical limitations of claimed invention.
Claims 23-26 and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (JP 2007-262295 A).
Regarding claims 23-26, the teachings of Ito et al. are as set forth above and incorporated herein. The cited exemplary embodiment of Ito et al. fails to disclose: (23) wherein the at least one filler is selected in the group consisting of mineral filler; (24) wherein the at least one filler is a clay; (25) wherein the at least one filler is selected in the group consisting of montmorillonite, bentonite, kaolin and mixtures thereof; and (26) wherein the at least one filler is kaolin. However, the general teachings of Ito et al. contemplate the use of other additives (see paragraph 0040). These include talc and kaolin, which act as inorganic crystal nucleating materials (see paragraph 0040).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Ito et al. with the instantly claimed filler because: (a) the general teachings of Ito et al. contemplate the use of other additives; and (b) the other additives of Ito et al. include talc and kaolin, which act as inorganic crystal nucleating materials.
Regarding claim 28, the teachings of Ito et al. are as set forth above and incorporated herein. The cited exemplary embodiment of Ito et al. includes approximately 37 wt.% of scaly graphite (see Example 8 in Table 1). Accordingly, this example fails to disclose: (28) wherein the total amount of the at least one coloring agent is of 1-30 wt. %, based on the total weight of the material. However, the other exemplary embodiments of Ito et al. include lower amounts of scaly graphite, such as approximately 17 wt.% in Example 2.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Ito et al. with the instantly claimed amount of coloring agent (1-30 wt. %) because: (a) the cited exemplary embodiment of Ito et al. includes approximately 37 wt.% of scaly graphite; and (b) the other exemplary embodiments of Ito et al. include lower amounts of scaly graphite, such as approximately 17 wt.% in Example 2.
Regarding claim 29, the teachings of Ito et al. are as set forth above and incorporated herein. The cited exemplary embodiment of Ito et al. fails to disclose: (29) wherein it contains at least one slip agent and/or at least one wax. However, the general teachings of Ito et al. contemplate the use of other additives (see paragraph 0040). These include lubricants (see paragraph 0040), corresponding to slip agents.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Ito et al. with the at least one instantly slip agent and/or at least one wax because: (a) the general teachings of Ito et al. contemplate the use of other additives; and (b) the other additives of Ito et al. include lubricants, corresponding to slip agents.
Regarding claim 30, the teachings of Ito et al. are as set forth above and incorporated herein. Ito et al. fail to disclose: (30) wherein the total amount of the at least one slip agent and/or at least one wax is of 3-40 wt. %, based on the total weight of the material. Rather, they disclose that they are provided “as long as the additives do not significantly impair the properties of the composition” (see paragraph 0040). This suggests that the additive amount of their lubricant is recognized as a result effective variable, where a sufficient amount is added to provide the lubricating property, so long as the overall properties of the composition are not significantly impaired. In light of this, it has been found that, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation,” – In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); and “A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation,” –In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Ito et al. with the instantly claimed amount (3-40 wt. %) of at least one slip agent and/or at least one wax because: (a) the general teachings of Ito et al. contemplate the use of other additives; (b) the other additives of Ito et al. include lubricants; (c) Ito et al. disclose that they are provided “as long as the additives do not significantly impair the properties of the composition;” (d) the teaching of Ito et al. suggests that the additive amount of their lubricant is recognized as a result effective variable, where a sufficient amount is added to provide the lubricating property, so long as the overall properties of the composition are not significantly impaired; (e) it has been found that, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation;” and (f) it has been found that, “A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.”
Claims 1-3, 16-22, and 27-32 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 102391631 A).
Regarding claims 1-3, 16, 18, 21, and 22, Wang et al. disclose: (1, 3 & 16) a polymer-based extrudable material (Abstract; paragraph 0031) comprising: a binder comprising a mixture of polylactide with a starch based polymer (Abstract; paragraphs 0013, 0014, 0018 & 0019);
(18) wherein the total amount of said starch based polymer is at least 2 wt. %, based on the material (paragraph 0014);
(21) wherein the weight ratio between polylactide and starch based polymer is of 0.2 to 20 (paragraph 0037; see also paragraphs 0013-0014); and (22) wherein the weight ratio between polylactide and starch based polymer is of 0.5 to 10 (paragraph 0037; see also paragraphs 0013-0014).
Wang et al. fail to explicitly disclose: (1-3 & 16) at least one polymer having a flexural modulus inferior to the flexural modulus of polylactide (2) having a flexural modulus < 3000 MPa measured according to the standard ISO 178:2019. Rather, Wang et al. disclose the use of starch based polymers, which are presented in claim (3 & 16). Accordingly, the starch based polymers appear to satisfy the instantly claimed inferior flexural modulus.
Wang et al. fail to explicitly disclose: (1) at least one filler and (1) at least one coloring agent. Rather, they disclose the use of an antistatic agent (see paragraph 0015), which can be expanded graphite (see paragraph 0021). The selection of the (black) expanded graphite would have simultaneously satisfied the instantly claimed at least one filler and at least one coloring agent.
Therefore, the teachings of Wang et al. obviously embrace formulations satisfying the instantly claimed presence of at least one filler and at least one coloring agent because: (a) Wang et al. disclose the use of an antistatic agent; (b) the antistatic agent of Wang et al. can be expanded graphite; and (c) the selection of the (black) expanded graphite would have simultaneously satisfied the instantly claimed at least one filler and at least one coloring agent.
Lastly, the recitation “lead or refill for writing, drawing and/or painting tools” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In the instant case, the preamble merely recites the intended use of the material, wherein the prior art can meet this future limitation by merely being capable of such intended use. The material of Wang et al. appears to be capable of performing this intended use because it obviously satisfies all of the material/chemical limitations of claimed invention.
Regarding claim 17, the teachings of Wang et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (17) wherein the total amount of the mixture of polylactide and starch based polymer is of 20-50 wt. %, based on the total weight of the material. Rather, the combined amount of these materials can be low as 30% (see paragraphs 0013-0014). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the material of Wang et al. with instantly claimed mixture amount (20-50 wt%) of polylactide and starch based polymer because: (a) the combined amount of these materials in Wang et al. can be low as 30%; and (b) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claims 19 and 20, the teachings of Wang et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (19) wherein the total amount of said polylactide is of 5-48 wt. %, based on the total weight of the material; and (20) wherein the total amount of said polylactide is of 20-30 wt. %, based on the total weight of the material. Rather, they disclose a range of 20-80% (see paragraph 0013). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the material of Wang et al. with instantly claimed amounts of polylactide (5-48 wt. % or 20-30 wt. %) because (a) Wang et al. disclose a range of 20-80%; and (b) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claims 27 and 28, the teachings of Wang et al. are as set forth above and incorporated herein. They fail to disclose: (27) wherein the total amount of the at least one filler is of 5-50 wt. %, based on the total weight of the material; and (28) wherein the total amount of the at least one coloring agent is of 1-30 wt. %, based on the total weight of the material. Rather, they disclose the use of an expanded graphite as an anti-static agent, which simultaneously satisfies the instantly claimed materials. In addition, Wang et al. disclose that their anti-static agent is provided in an amount of 1-10% (see paragraph 0015). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the material of Wang et al. with the instantly claimed amount of filler (5-50 wt. %) and/or coloring agent (1-30 wt. %) because: (a) Wang et al. disclose the use of an expanded graphite as an anti-static agent, which simultaneously satisfies the instantly claimed materials; (b) Wang et al. disclose that their anti-static agent is provided in an amount of 1-10%; and (c) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claims 29 and 30, the teachings of Wang et al. are as set forth above and incorporated herein. Wang et al. fail to explicitly disclose: (29) wherein it contains at least one slip agent and/or at least one wax; (30) wherein the total amount of the at least one slip agent and/or at least one wax is of 3-40 wt. %, based on the total weight of the material. Rather, they disclose the use of a plasticizer (see paragraph 0016), which can be a fatty acid monoglyceride (see paragraph 0020). In light of this, Applicant identifies glycerol esters as suitable slip agents (see page 11 of the instant specification). Furthermore, Wang et al. disclose that the plasticizer is provided in an amount of 1-5%. In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to formulate the material of Wang et al. with the instantly claimed slip agent (and amount thereof) because: (a) Wang et al. disclose the use of a plasticizer, which can be a fatty acid monoglyceride; and (b) Applicant identifies glycerol esters as suitable slip agents. Furthermore: (c) Wang et al. disclose that the plasticizer is provided in an amount of 1-5%; and (d) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 31, the recitation “color lead or refill for writing, drawing and/or painting tools” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In the instant case, the preamble merely recites the intended use of the material, wherein the prior art can meet this future limitation by merely being capable of such intended use. The material of Wang et al. appears to be capable of performing this intended use because it obviously satisfies all of the material/chemical limitations of claimed invention.
Regarding claim 32, Wang et al. fail to disclose that their molded article thereof (see paragraph 0031) is: (32) a writing, drawing and/or painting tool comprising the lead or a refill. However, it has been found that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case the molded article of Wang et al. appears to be capable of performing this intended use because it obviously satisfies all of the material/chemical limitations of claimed invention.
Claims 1-3, 17-24, and 27-32 are rejected under 35 U.S.C. 103 as being unpatentable over Herbolsheimer (US 2017/0015858 A1) in view of Leidner et al. (US 2002/0025995 A1).
Regarding claims 1-3, 23, and 28-32, Herbolsheimer discloses: (1) a polymer-based extrudable lead or refill for writing, drawing and/or painting tools (Abstract; paragraphs 0021, 0022, 0027 & 0039-0046) comprising:
a binder (paragraph 0034),
at least one filler (paragraphs 0024 & 0026),
at least one coloring agent (paragraphs 0025, 0026 & 0033);
(23) wherein the at least one filler is selected in the group consisting of mineral filler (paragraphs 0024 & 0026);
(28) wherein the total amount of the at least one coloring agent is of 1-30 wt. %, based on the total weight of the lead or refill (paragraph 0021: see “0-30%”);
(29) wherein it contains at least one slip agent and/or at least one wax; and mixtures thereof (paragraphs 0021, 0022, 0027 & 0035); (30) wherein the total amount of the at least one slip agent and/or at least one wax is of 3-40 wt. %, based on the total weight of the lead or refill (paragraphs 0021, 0022 & 0027: see “2-25%”, “4-20%”, “2-20%”);
(31) wherein it is a color lead or refill (paragraphs 0023 & 0026); and
(32) a writing, drawing and/or painting tool comprising the lead or a refill (paragraph 0046).
Herbolsheimer fails to explicitly disclose: (1) a binder comprising a mixture of polylactide with at least one polymer having a flexural modulus inferior to the flexural modulus of polylactide; (2) wherein the at least one polymer having a flexural modulus inferior to the flexural modulus of polylactide has a flexural modulus < 3000 MPa measured according to the standard ISO 178:2019; and (3) wherein the polymer having a flexural modulus inferior to the flexural modulus of polylactide is selected from the group consisting of polyethylene (PE), poly(butylene adipate-co-terephtalate) (PBAT), poly(butylene succinate) (PBS), a starch-based polymer and a mixture thereof. Rather, he discloses as least one polymeric binder selected from a list of materials including polylactide and polyolefins (see paragraph 0034). In light of this, Leidner et al. demonstrate that polyethylene is recognized in the art as suitable polyolefin binder for a pencil lead composition (see Abstract; paragraph 0037). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention provide the instantly claimed binder mixture as the binder material in the pencil lead composition of Herbolsheimer because: (a) Herbolsheimer discloses as least one polymeric binder selected from a list of materials including polylactide and polyolefins; (b) Leidner et al. demonstrate that polyethylene is recognized in the art as suitable polyolefin binder for a pencil lead composition; and (c) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claim 17, the combined teachings of Herbolsheimer and Leidner et al. are as set forth above and incorporated herein. Herbolsheimer fails to explicitly disclose: (17) wherein the total amount of the binder is of 20-50 wt. %, based on the total weight of the lead or refill. Rather, he discloses ranges of 10-40% and 12-30% (see paragraphs 0021, 0022 & 0027). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the at before the effective filing date of the claimed invention to provide the instantly claimed amount (20-50 wt. %) of binder in the material resulting form the combined teachings of {Herbolsheimer and Leidner et al.} because: (a) Herbolsheimer discloses ranges of 10-40% and 12-30%; and (b) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claims 18-20, the combined teachings of Herbolsheimer and Leidner et al. are as set forth above and incorporated herein. The combined teachings fail to explicitly disclose: (18) wherein the total amount of polyethylene (said at least one polymer having a flexural modulus inferior to the flexural modulus of polylactide) is at least 2 wt. %, based on the total weight of the lead or refill; (19) wherein the total amount of said polylactide is of 5-48 wt. %, based on the total weight of the lead or refill; and (20) wherein the total amount of said polylactide is of 20-30 wt. %, based on the total weight of the lead or refill. Rather, the combined teachings disclose that the overall binder accounts for 10-40% by weight of the material. This embraces an equal parts blends of polylactide and polyethylene accounting for up to 20% of polylactide and 20% of polyethylene. In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, the material resulting from the combined teachings of Herbolsheimer and Leidner et al. would have obviously embraced the instantly claimed amounts of polylactide and polyethylene because: (a) the combined teachings disclose that the overall binder accounts for 10-40% by weight of the material; (b) this embraces an equal parts blends of polylactide and polyethylene accounting for up to 20% of polylactide and 20% of ethylene; and (c) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claims 21 and 22, the combined teachings of Herbolsheimer and Leidner et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (21) wherein the weight ratio between polylactide and said at least one polymer having a flexural modulus inferior to the flexural modulus of polylactide, is of 0.2 to 20; and (22) wherein the weight ratio between polylactide and said at least one polymer having a flexural modulus inferior to the flexural modulus of polylactide, is of 0.5 to 10. Rather, the blends suggested by the combined teachings obviously embrace all relative amounts of these materials, including an equal parts blend, corresponding to a ratio of 1.
Regarding claim 24, the combined teachings of Herbolsheimer and Leidner et al. are as set forth above and incorporated herein. Herbolsheimer contemplates various fillers including phyllosilicates (see paragraph 0024). However, he fails to explicitly disclose: (24) wherein the at least one filler is a clay. However, the supporting teaching of Leidner et al. demonstrate that clay is recognized in the art as a suitable filler for this type of lead material (see paragraph 0043). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the lead material resulting from the combined teachings of Herbolsheimer and Leidner et al. with a clay filler because: (a) Herbolsheimer contemplates various fillers including phyllosilicates; (b) the supporting teaching of Leidner et al. demonstrate that clay is recognized in the art as a suitable filler for this type of lead material; and (c) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claim 27, the combined teachings of Herbolsheimer and Leidner et al. are as set forth above and incorporated herein. They fail to explicitly disclose: (27) wherein the total amount of the at least one filler is of 5-50 wt. %, based on the total weight of the lead or refill. Rather, Herbolsheimer discloses a “remainder” of fillers (see paragraphs 0021, 0022 & 0027). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the material resulting from the combined teachings of Herbolsheimer and Leidner et al. with the instantly claimed amount (5-50 wt. %) of filler because: (a) Herbolsheimer discloses a “remainder” of fillers; and (b) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Claims 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Herbolsheimer (US 2017/0015858 A1) in view of Leidner et al. (US 2002/0025995 A1) and Hashimoto et al. (US 2004/0016366 A1).
Regarding claims 25 and 26, the combined teachings of Herbolsheimer and Leidner et al. are as set forth above and incorporated herein. Herbolsheimer contemplates various fillers including phyllosilicates (see paragraph 0024). The supporting teachings of Leidner et al. demonstrate that clay is recognized in the art as a suitable filler for this type of lead material. However, they fail to explicitly disclose: (25) wherein the at least one filler is selected in the group consisting of montmorillonite, bentonite, kaolin and mixtures thereof; and (26) wherein the at least one filler is kaolin.
Hashimoto et al. disclose a related pencil lead material (see Abstract). They demonstrate that kaolin (clay) is recognized in the art as a suitable filler for this type of pencil lead material (see paragraph 0032). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the material resulting from the combined teachings of Herbolsheimer and Leidner et al. with a kaolin filler because: (a) Herbolsheimer contemplates various fillers including phyllosilicates; (b) the supporting teachings of Leidner et al. demonstrate that clay is recognized in the art as a suitable filler for this type of lead material; (c) Hashimoto et al. disclose a related pencil lead material and demonstrate that kaolin (clay) is recognized in the art as a suitable filler for this type of pencil lead material; and (d) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
International Search Report
The international search report cited three X-references. All three references have been considered.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Hirata et al. (JP 10-212400 A).
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
December 13, 2025