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 .
Claim Objections
Claim 13 is objected to because of the following informality:
• In claim 13, the phrase “an range” should be changed to “a range”.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, 9, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deguchi et al. (JP-2006124581-A), with reference to the included machine translation (hereinafter referred to as “Deguchi”).
Regarding claims 1 and 9, Deguchi teaches a pencil lead, comprising: a black porous fired lead body comprising graphite, wherein, impregnated in pores thereof, the porous fired lead body comprises octyldodecyl erucate, oleyl oleate, octyldodecyl oleate, isopropyl palmitate, 2-ethylhexyl palmitate, and/or propylene glycol monooleate (see Deguchi at pg. 1, para. 1, teaching a pencil lead made of a fired core containing graphite; also see Deguchi at pg. 2, para. 4, teaching the pencil core as being impregnated with an oil containing a fatty acid ester; also see Deguchi at pg. 3, para. 1, teaching isopropyl palmitate as a suitable fatty acid ester; also see Deguchi at pg. 2, para. 5, teaching the pencil lead as having a black color).
Regarding claims 4 and 13, see Deguchi at Abstract, teaching the impregnating oil as containing a fatty acid ester and a liquid polyolefin resin; also see Deguchi at pg. 5, para. 9, teaching an example, Example 12, in which the mixing ratio of the fatty acid ester to the resin in the oil is 70:30; thus, Deguchi reasonably suggests, via their example embodiments, the use of their fatty acid ester in an amount of 70% in the oil; this value falls within the claimed range(s).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Deguchi, as applied to claim 1 above, and further in view of Chemical Book (“2-Ethylhexyl Palmitate.” ChemicalBook, 29 Oct. 2011) (hereinafter referred to as “ChemicalBook”).
Regarding claim 10, while Deguchi teaches the pencil lead according to claim 1 outlined above, Deguchi fails to explicitly teach the pencil lead, wherein impregnated in pores thereof, the porous fired lead body comprises the 2-ethylhexyl palmitate.
However, Deguchi teaches the fatty acid ester which may be used to impregnate their oil to have the following formula (see untranslated Deguchi at pg. 3):
PNG
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215
457
media_image1.png
Greyscale
[AltContent: textbox (R1: an alkyl group having 5 to 17 carbon atoms)]
[AltContent: textbox (R2: an alkyl group having 1 to 18 carbon atoms)]
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media_image2.png
133
1430
media_image2.png
Greyscale
2-ethylhexyl palmitate is known to have the following formula (see ChemicalBook at pg. 1):
[AltContent: textbox (2-ethylhexyl palmitate)]
2-ethylhexyl palmitate reads on the formula for the fatty acid ester taught by Deguchi, where R1 is 15 and R2 is 8.
In this case, 2-ethylhexyl palmitate is a known fatty acid ester that reads on the formula for the fatty acid ester taught by Deguchi, and thus, one of ordinary skill would have a reasonable expectation of success of using 2-ethylhexyl palmitate as the fatty acid ester in Deguchi.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use 2-ethylhexyl palmitate as the fatty acid ester in Deguchi, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Regarding claim 12, while Deguchi teaches the pencil lead according to claim 1 outlined above, Deguchi fails to explicitly teach the pencil lead wherein, impregnated in pores thereof, the porous fired lead body comprises at least two of octyldodecyl erucate, oleyl oleate, octyldodecyl oleate, isopropyl palmitate, 2-ethylhexyl palmitate, and/or propylene glycol monooleate.
However, the use of 2-ethylhexylpalmitate as the fatty acid ester of Deguchi is obvious over ChemicalBook, as outlined in the claim 11 rejection above, which is incorporated herein. Moreover, Deguchi teaches isopropyl palmitate as a suitable fatty acid ester (see Deguchi at pg. 3, para. 1).
In this case, both isopropyl palmitate and 2-ethylhexyl palmitate are used for the same purpose, as a fatty acid ester impregnating material in the pencil lead of Deguchi. Furthermore, their combination would form a material that would also be used as a fatty acid ester impregnating material.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use both 2-ethylhexyl palmitate and isopropyl palmitate as the fatty acid ester in the pencil lead of Deguchi, because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
Claims 1-6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ishizuka et al. (JP-2005187682-A), with reference to the included machine translation (hereinafter referred to as “Ishizuka”), in view of Kitazawa (JP-2002179975-A), with reference to the included machine translation (hereinafter referred to as “Kitazawa”).
Regarding claims 1, 2, 4-6, and 13, Ishizuka teaches a pencil lead, comprising: a black porous fired lead body comprising graphite (see Ishizuka at pg. 1, para. 1, teaching a pencil lead; also see Ishizuka at pg. 2, para. 5, teaching the pencil lead as being fired; also see Ishizuka at pg. 2, para. 7 and pg. 3, para. 6, teaching the pencil lead as containing graphite as a colorant and as being porous; also see Ishizuka at pg. 2, para. 4, teaching the pencil lead as producing a “dark” handwriting, i.e., black; it necessarily follows that since the colorant is taught by Ishizuka to be graphite, that the porous body is black as claimed).
While Ishizuka teaches the pencil lead outlined above, Ishizuka fails to teach the pencil lead wherein, impregnated in pores thereof, the porous fired lead body comprises octyldodecyl erucate (regarding claims 1 and 6), wherein jojoba oil, which is a mixture containing the octyldodecyl erucate, is impregnated in the pores of the porous fired lead body (regarding claim 2), wherein the octyldodecyl erucate is comprised in an amount of 60 mass% or greater in an oil impregnating the pores of the porous fired lead body (regarding claim 4), and wherein the jojoba oil is present in an amount of 60 mass% or greater in an oil impregnating the pores of the porous fired lead body (regarding claim 5) (60-80 mass%, regarding claim 13).
However, Kitazawa teaches a fired pencil lead, and further teaches the lead may be impregnated with jojoba oil (see Kitazawa at pg. 2, para. 10 and pg. 6, para. 2). Kitazawa further teaches an example using an impregnating oil containing jojoba oil and beeswax in a ratio of 8:2 (jojoba oil:beeswax) (see Kitazawa at pg. 8, para. 4). Thus, Kitazawa reasonably suggests the use of an impregnating oil containing jojoba oil in an amount of 80 mass% in the impregnating oil (8/(2 + 8) • 100 = 80%).
Ishizuka teaches their pencil lead may be impregnated with an oil (see Ishizuka at pg. 3, para. 8).
In this case, an impregnating oil containing 80 mass% of jojoba oil is a known impregnating material suitable for use in a pencil lead (as exemplified by Kitazawa at pg. 6, para. 2 and pg. 8, para. 4), and thus its use as the impregnating oil in the pencil lead of Ishizuka would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use an impregnating oil containing 80 mass% of jojoba oil (i.e., octyldodecyl erucate) as the impregnating oil in the pencil lead of Ishizuka, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Regarding claim 3, see Ishizuka at pg. 2, para. 5-6, teaching the pencil lead as containing a terpene resin; also see Ishizuka at pg. 3, para. 3, teaching the terpene resin may include a terpene phenol copolymer, i.e., a terpene phenolic resin.
Allowable Subject Matter
Claims 7, 8, and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
With respect to claims 7, 8, and 11, the prior art fails to teach or suggest a pencil lead, comprising: a black porous fired lead body wherein, impregnated in pores thereof, the porous fired lead body comprises oleyl oleate, octyldodecyl oleate, or propylene glycol monooleate.
The closest prior art includes Deguchi et al. (JP-2006124581-A), Ishizuka (JP-2005187682-A), and Kitazawa (JP-2002179975-A). While Deguchi, Ishizuka, and Kitazawa teach most of the claimed limitations (see claim 1 rejections above), all fail to teach the pencil lead, wherein, impregnated in pores thereof, the porous fired lead body comprises oleyl oleate, octyldodecyl oleate, or propylene glycol monooleate. Neither oleyl oleate, octyldodecyl oleate, nor propylene glycol monooleate read on the formula for the fatty acid ester taught by Deguchi (see pg. 3 of untranslated Deguchi and the formula shown at pg. 5 of the present Office Action). Further, the prior art does not teach or suggest the use of such compounds as impregnating materials for pencil leads. Accordingly, one of ordinary skill in the art would not be drawn to such compounds as an impregnating material in either the compositions of Ishizuka or Deguchi. Consequently, claims 7, 8, and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Yoshimori et al. (JP-2007031589-A) teach a pencil lead (see Yoshimori at Abstract).
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731