DETAILED ACTION
Response to Amendments
In response to the amendment received on 07/06/2026:
• Claims 33, 34, and 36-53 are currently pending. Claims 1-32 and 35 are canceled. The rejection of claim 38 under 35 U.S.C. 112(b) is withdrawn in light of the amendments to the claims. All nonstatutory double patenting rejections are withdrawn in light of the terminal disclaimers filed by Applicant.
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 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 33, 36-38, 40-48, 50, 52, and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US-6149721-A) (hereinafter referred to as “Wang”) in view of Mori (JP-2020015891-A), with reference to the included machine translation (hereinafter referred to as “Mori”).
Regarding claims 33 and 46, Wang teaches a writing instrument comprising a non-aqueous writing ink (see Wang at col. 1, lines 29-32, teaching a solvent-based ink suitable for use in a ball point pen; also see claim 15 of Wang, which claims a solvent based pen ink), the non-aqueous writing ink including:
• a solvent and a pH-sensitive water-soluble dye; wherein the solvent is selected from 1,2-propanediol, diethylene glycol, monoethylene glycol and dimethylsufoxide and/or mixtures thereof; and wherein the pH-sensitive water-soluble dye is capable of changing from an initially colored state to a discolored state when the writing ink is exposed to an ink eradicator composition or a pH increase to a pH value of more than about 9.0 (see Wang at col. 1, lines 28-38, teaching an eradicable solvent-based ink containing an acid dye; also see Wang at col. 4, lines 52-57, teaching acid blue 93 as a suitable acid dye; acid blue 93 is a pH-sensitive water-soluble dye, as disclosed by Applicant’s specification at pg. 4, lines 21-24; also see Wang at col. 4, lines 42-50, teaching diethylene glycol as a suitable co-solvent for use in the ink; also see Wang at col. 2, lines 49-59 and col. 4, lines 57-61, teaching the invention may be in the form of an eradicator system including the eradicable ink and an eradicator fluid which causes the acid dye to change color/decolorize).
While Wang teaches the ink outlined above, Wang fails to teach the ink as containing a gelling agent, wherein the gelling agent comprises water-insoluble cellulose nanofibers and/or a mixture of silica particles and of at least one fatty acid amide wax (in an amount between about 0.02 wt% and about 0.5 wt%, regarding claim 46).
However, Mori teaches an oil-based ink composition for a writing instrument which contains hydrophobic cellulose nanofibers (see Mori at pg. 2, para. 6). Mori further teaches their ink may contain a dye and a solvent, such as diethylene glycol (see Mori at pg. 6, para. 1; and pg. 6, para. 5). Moreover, Mori teaches that by blending the hydrophobized cellulose nanofibers, the oil-based ink composition for a writing instrument has an effect of imparting thixotropy, an effect of improving dispersion stability, and an effect of suppressing blurring (see Mori at pg. 3, para. 5). Additionally, Mori teaches the hydrophobized cellulose nanofiber to be incorporated in the ink in an amount ranging from 0.01 to 5% by mass, and that when the content is 0.01% or more, the effect of increasing the ink viscosity and the effect of imparting thixotropy are obtained, and that when the content is 5% or less, the ink viscosity does not significantly increase and ink ejection failure does not occur (see Mori at pg. 5, para. 7).
Wang teaches their ink may contain additional conventional ingredients such as thickeners (see Wang at col. 5, lines 18-20).
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 the hydrophobized cellulose nanofiber of Mori in the ink of Wang in an amount ranging from 0.01 to 5% by mass. One of ordinary skill in the art would have been motivated to do so in order for the ink of Wang to have an effect of imparting thixotropy, an effect of improving dispersion stability, an effect of suppressing blurring, and an effect of not significantly increasing viscosity to cause ejection failure (see Mori at pg. 3, para. 5; also see Mori at pg. 5, para. 7).
This range of 0.01 to 5% by mass overlaps the claim 46 range of 0.01 to 0.5 wt%, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claims 36-37, the solubility of a dye is notably a property of the dye. The dye taught by Wang, Acid Blue 93, is the same dye as that taught by Applicants and used in their examples (see Wang at col. 4, lines 56-57; see Applicant’s specification at pg. 4, lines 21-24; also see Applicant’s specification at pg. 26, lines 11-12). Since the dye used by modified Wang is the same as that used by Applicants, it is the Examiner’s position that the dye meets the claimed solubility limitations. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01). In other words, burden of proof is shifted to Applicants to show Acid Blue 93 as not meeting the solubility limitations as claimed.
Regarding claim 38, see Wang at col. 2, lines 49-59, teaching the invention may be in the form of an eradicator system including an eradicator fluid; also see Wang at col. 5, lines 60-63, teaching example eradicator fluids that are aqueous (e.g., sodium sulfite aqueous solution); thus, Wang reasonably teaches their eradicator fluid may be aqueous.
Regarding claim 40, see Wang at col. 5, lines 60-63, teaching example eradicator fluids which may contain sodium sulfite, i.e., a sulfite.
Regarding claim 41, see Wang at col. 4, lines 52-57, teaching acid blue 93 as a suitable acid dye; acid blue 93 is a triarylmethane dye.
Regarding claim 42, see Wang at col. 4, lines 61-63, teaching the ink may contain 10 to 25% of triaryl methane dye; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 43, see Wang at col. 1, lines 29-30, teaching the ink as being a solvent-based ink; also see the Examples of Wang at col. 5, teaching inks which do not contain water; thus, Wang reasonably teaches their ink may not contain water.
Regarding claim 44, while modified Wang teaches the writing instrument according to claim 33 outlined above, modified Wang fails to explicitly teach the solvent as comprising 1,2-propanediol and/or the monoethylene glycol.
However, Mori teaches an oil-based ink composition for a writing instrument which contains hydrophobic cellulose nanofibers (see Mori at pg. 2, para. 6). Mori further teaches their ink may contain a dye and a solvent, such as ethylene glycol or diethylene glycol (see Mori at pg. 6, para. 1; and pg. 6, para. 5).
In this case, both ethylene glycol and diethylene glycol are functional equivalents, i.e., both are well-known organic solvents suitable for use in solvent-based ink compositions for writing instruments (see Mori at pg. 6, para. 5).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the diethylene glycol of modified Wang with ethylene glycol (i.e., monoethylene glycol) like that disclosed by Mori, as the substitution of art-recognized equivalents has been shown to be within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Regarding claim 45, see Wang at col. 4, lines 50-51, teaching the content of the co-solvent (i.e., diethylene glycol), as ranging from 0 to 60%; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 47, see Wang at col. 5, lines 15-21, teaching the ink may contain an elastomer, such as polyvinyl pyrrolidone, in an amount ranging from 0.3 to 0.6%; this range falls completely within the claimed range.
Regarding claim 48, see Wang at col. 5, lines 7-13, teaching the ink may include a thickener in an amount ranging from 10 to 25%; this range falls completely within the claimed range.
Regarding claim 50, see Wang at col. 1, lines 28-31.
Regarding claim 52, see Wang at col. 2, lines 49-59.
Regarding claim 53, while Wang as modified by Mori teaches the writing instrument according to claim 33 outlined above, modified Wang fails to explicitly teach the non-aqueous writing ink as further comprising a second solvent selected from the group consisting of phenoxyethanol and phenoxypropanol.
However, Mori teaches the hydrophobized cellulose nanofibers to preferably be prepared as a dispersion in which the nanofibers are blended with an aromatic alcohol, such as 2-phenoxyethanol, and that by using this solvent as the dispersing solvent, the dispersibility in the organic solvent to be mixed into the oil-based ink composition is improved (see Mori at pg. 3, para. 4-5 and pg. 4, para. 1). Mori then teaches this dispersion to be added to the oil-based ink, i.e., to be mixed together with the organic solvent (e.g., diethylene glycol) (see Mori at pg. 3, para. 4-5).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add the hydrophobized cellulose nanofibers to the ink of Wang as a dispersion of the nanofibers in 2-phenoxyethanol. One of ordinary skill in the art would have been motivated to do so in order to improve the dispersibility of the nanofibers in the organic solvent in the ink composition (see Mori at pg. 4, para. 1).
Following the above modification, the ink of modified Wang contains both diethylene glycol as a solvent as well as the 2-phenoxyethanol added via the cellulose nanofibers dispersion. Consequently, the ink of modified Wang reads on the claims.
Claims 34 and 51 is rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Mori, as applied to claim 33 above, and further in view of Miyake et al. (US-20220363926-A1) (hereinafter referred to as “Miyake”).
Regarding claim 34, while modified Wang teaches the writing instrument according to claim 33 outlined above, modified Wang fails to explicitly teach the writing instrument as dispersing more than about 50 mg of the non-aqueous writing ink per 150 meter of writing.
However, Miyake teaches an oil-based ink composition for ballpoint pens (see Miyake at para. 0001). Miyake further teaches the ink consumption of the ballpoint pen to range from 20 to 150 mg per 100 m, and that if the consumption is less than 20 mg per 100 m, blurring and point unevenness in handwriting may be induced and it is often difficult to obtain good writing feeling, and that if it is more than 150 mg per 100 m, the ink followability may be adversely affected and the ink often leaks from between the ball and the tip end (see Miyake at para. 0109).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the ink consumption of the ballpoint pen of modified Wang to range from 20 to 150 mg per 100 m of writing. One of ordinary skill in the art would have been motivated to do so in order to reduce blurring and point unevenness in handwriting, to obtain good writing feeling, and to prevent ink followability from being adversely affected (see Miyake at para. 0109).
An ink consumption of 20 to 150 mg per 100 m is equivalent to a range of 30 to 225 mg per 150 m of writing (20 • 1.5 = 30; 150 • 1.5 = 225). This range of 30 to 225 mg overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 51, while modified Wang teaches the writing instrument according to claim 50 outlined above, modified Wang fails to explicitly teach the ball-pen as including a ball size ranging from about 0.6 mm to about 1.5 mm.
However, Miyake teaches a ballpoint pen containing a ball (see Miyake at para. 0093). Miyake further teaches the ball to generally have a diameter of 0.25 to 1.6 m and that the size is selected according to desired handwriting width (see Miyake at para. 0104).
In this case, ball diameters ranging from 0.25 to 1.6 mm are known to suitably be used in ballpoint pens for oil-based inks in the art (as exemplified by Miyake at para. 0104) and thus, the use of such sizes in the ballpoint pen of modified Wang 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 a ballpoint pen having a ball size of 0.25 to 1.6 mm in the pen of modified Wang, as combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
This range of 0.25 to 1.6 mm overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Alternatively, since Miyake teaches that the ball size is selected according to desired handwriting width (see Miyake at para. 0104), the ball size is a result-effective variable. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have adjusted, by routine experimentation, the desired ball size according to desired handwriting width (e.g., larger diameter for increased handwriting width, and a shorter diameter for shorter handwriting width) (see Miyake at para. 0104).
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Mori, as applied to claim 33 above, and in the alternative, further in view of Hopson et al. (US-5916357-A) (hereinafter referred to as “Hopson”).
Regarding claim 39, the claimed limitation is a property of the claimed dye, i.e., the dye “is capable” of changing color “when” the dye is exposed to an aqueous eradicator fluid having a pH of 9.0 or greater; since the Acid Blue 93 dye is the same as that taught by Applicant’s (see Applicant’s specification at pg. 4, lines 21-24 and pg. 26, lines 11-12), it necessarily follows the dye meets the claimed limitations. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II).
In the alternative, Hopson teaches an eradicable ink and an eradicator fluid (see Hopson at col. 2, lines 8-10). Hopson further teaches Acid Blue 93 as a suitable dye in the ink, and that the eradicable fluid may include water and a sulfite (see Hopson at col. 2, lines 27-29 and col. 7, lines 1-6). Moreover, Hopson teaches the pH of the eradicator fluid to be maintained between 11 and 12 (see Hopson at col. 7, lines 13-15).
Wang teaches their eradicable fluid may be an aqueous sodium sulfite solution (see Wang at col. 5, lines 60-63).
In this case, a pH of 11 to 12 is known in the art to be a suitable pH for an eradicator fluid sulfite solution for eradicating Acid Blue 93 (as exemplified by Hopson at col. 7, lines 13-15) and thus the use of such a pH for the eradicator fluid of modified Wang 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 set the pH of the eradicator fluid of modified Wang to range from 11 to 12, as such a pH is known to be suitable for use in similar eradicator fluids in the art (see Hopson at col. 7, lines 13-15). Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Claim 49 is rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Mori, as applied to claim 33 above, and further in view of Kwan et al. (US-20070017413-A1) (hereinafter referred to as “Kwan”).
Regarding claim 49, while modified Wang teaches the writing instrument according to claim 33 outlined above, modified Wang fails to explicitly teach the non-aqueous writing ink as further comprising a second water-insoluble dye which does not change from an initially colored state to a discolored state when the non-aqueous writing ink is exposed to an aqueous ink eradicator composition or a pH change.
However, it is generally well-known that eradicable inks may contain a non-eradicable colorant so that following exposure to an eradicator fluid, the colorant changes from a first color (the color exhibited by the mixture of the eradicable and the non-eradicable colorant) to a second color (the color exhibited by the non-eradicable colorant) (see Kwan at para. 0026, 0033, and 0041). Further, one of ordinary skill would readily recognize the benefit of expanding the color-changing capabilities of the ink of modified Wang to be able to change from a first color to a second color (increasing the variety of possible color-changing effects produced).
Wang suggests their ink may contain non-eradicable dyes (see Wang at col. 4, lines 64-67).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add a non-eradicable dye in addition to the Acid Blue 93 to the ink of modified Wang. One of ordinary skill in the art would have been motivated to do so in order to expand the color-changing capabilities of the ink of modified Wang to be able to change from a first color to a second color, increasing the variety of possible color-changing effects produced.
Response to Arguments
Applicant's arguments filed 07/06/2026 have been fully considered but they are not persuasive for at least the reasons set forth below.
First, Applicants argue Wang does not teach “diethylene glycol” as a suitable solvent (see Applicant’s Remarks at pg. 8-9). Applicants further point to Wang’s examples, which only teach the use of diethylene glycol monoethyl ether as a suitable solvent (see Applicant’s Remarks at pg. 9-11).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
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Wang does teach diethylene glycol as a suitable solvent, see the screenshot below of Wang, showing col. 4, lines 48-50:
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While it is noted that Wang appears to forget a comma between “di(ethylene glycol)” and “tri(ethylene glycol),” this does not detract from the clear teaching of diethylene glycol as a suitable solvent in the ink of Wang. Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123(II). Simply because Wang does not teach diethylene glycol as a solvent in their examples does not detract from Wang’s broader teaching of diethylene glycol as a suitable solvent (see Wang at col. 4, lines 48-50).
Next, Applicants argue the technical problems addressed by Wang and Mori are distinct and unrelated to one another, and thus, one of ordinary skill would not have combined the references (see Applicant’s Remarks at pg. 9). Applicants argue that Wang is concerned with the use of oxa acid solvents to dissolve acid dyes, while Mori addresses the general problem of improving rheology of an oil-based ink to achieve a light writing touch and suppress tip leakage (see Applicant’s Remarks at pg. 9). Further, Applicants argue Mori is silent on challenges associated with eradicable inks or water-soluble dyes, and thus, one of ordinary skill would not have been motivated to look to Mori’s physical stabilizer given Mori provides no teaching relevant to dye solubility, stability, and eradication chemistry (see Applicant’s Remarks at pg. 9-10). Additionally, Applicants argue equating the thickener of Wang with the network-forming gelling agent of Mori is improper, and that a skilled artisan would not have made the modification with a reasonable expectation of success (see Applicant’s Remarks at pg. 10).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
Mori and Wang do address a similar problem, namely, leakage at the pen tip (see Wang at col. 5, lines 7-8, teaching the ink may contain a thickener to prevent leakage of the ink from a ball point pen; also see Mori at pg. 1, para. 3 and pg. 2, para. 5, teaching their ink as including the cellulose nanofibers as a thixotropic agent (i.e., a thickener) to prevent pen leakage). One of ordinary skill in the art would be drawn to the cellulose nanofibers of Mori to be used as a thickener in the ink of Wang in order to impart thixotropy to prevent pen leakage, in combination with the additional benefits of using the cellulose nanofibers taught by Mori (e.g., improving dispersion stability, suppressing blurring, etc., see the claim 33 rejection above).
Moreover, one of ordinary skill in the art would have a reasonable expectation of success in incorporating the cellulose nanofibers of Mori in the ink of Wang, because Mori and Wang teach very similar inks. Both Mori and Wang are in the same field of endeavor, namely, oil/solvent-based inks for use in writing instruments (see Mori at Abstract; also see Wang at Abstract). Additionally, both Wang and Mori teach the same solvent in an overlapping concentration (see Mori at pg. 6, para. 5 and pg. 7, para. 3, teaching diethylene glycol as a suitable solvent which may be used in an amount ranging from 30 to 80 wt%; also see Wang at col. 4, lines 48-51, teaching diethylene glycol as a suitable solvent in an amount ranging from 0 to 60%). Additionally, both Mori and Wang teach their ink may contain acid dyes (see Mori at pg. 6, para. 2; also see Wang at col. 2, lines 45-49). Conclusive proof of efficacy is not required to show a reasonable expectation of success, see MPEP § 2143.02(I). Here, given the inks of Mori and Wang are similar, and further given the cellulose nanofibers address the same issue explicitly outlined by Wang, one of ordinary skill in the art would have a reasonable expectation of success in incorporating the cellulose nanofibers of Mori in the ink of Wang. Further, one of ordinary skill would have been motivated to do so in order to impart the beneficial thixotropic effects taught by Mori and desired by Wang.
Next, Applicants argue equating Wang’s “thickener” with the “gelling agent” in the claims is improper. Applicants argue Wang’s ink is a conventional Newtonian solvent-based ink, which differs fundamentally from Mori, which teaches the use of a network-forming gelling agent (e.g., cellulose nanofibers) to create a thixotropic gel ink (see Applicant’s Remarks at pg. 11). Applicants argue a person of ordinary skill would not have viewed modifying Wang with Mori as a simple substitution of one thickener for another, and that the modification would require the complete re-engineering of Wang’s basic rheological system from a simple viscous liquid into a complex, structured gel (see Applicant’s Remarks at pg. 11-12). Applicants argue there is no teaching to suggest that such a change would be desirable or successful, particularly in a system like Wang’s (see Applicant’s Remarks at pg. 12).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
There is no indication or evidence that the ink of Wang would be “completely re-engineered” into an unsuitable gel through the addition of 0.01 to 5 wt% of cellulose nanofibers. Mori teaches their cellulose nanofibers to impart thixotropy (to prevent pen leakage), improve dispersion stability, and suppress blurring (see Mori at pg. 3, para. 5). Wang teaches their thickener to be used to prevent pen leakage (see Wang at col. 5, lines 7-8). Accordingly, one of ordinary skill would reasonably be drawn to the cellulose nanofibers of Mori to use in the ink of Wang in order to obtain the benefits taught by Mori. In fact, one of ordinary skill would have a reasonable expectation of success, especially considering both Wang and Mori teach similar inks, see the previous response above.
Next, Applicants argue Mori and Wang do not provide an obvious solution for creating a stable color-changing gel ink, and that one of ordinary skill would not have experimented with a completely different class of solvents (see Applicant’s Remarks at pg. 12).
However, this is not found to be persuasive and so the Examiner must respectfully disagree for the following reasons.
The references do not have to address the same problem as that claimed in order for the combination of references to be obvious. Here, one of ordinary skill in the art would reasonably be drawn to the cellulose nanofibers of Mori, for the motivation outlined above. Additionally, Wang explicitly teaches diethylene glycol as a suitable solvent, and thus, one of ordinary skill would have a reasonable expectation of success in using such a solvent in the ink of Wang. Consequently, a proper prima facie case of obviousness is established.
Lastly, Applicants argue Mori provides no teaching or suggestion to use the claim 53 solvent(s) together with the ink of Wang (see Applicant’s Remarks at pg. 16). However, Mori does in fact provide a motivation to use the claimed solvent, see the claim 53 rejection above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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