OIL-BASED BALLPOINT PEN

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 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. Claims 1-2, 4-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Otawa et al. (JP-2016017105-A), in view of Yanagi et al. (US 2011/0025753). Regarding claims 1-2, 6 and 8 Otawa discloses an ink composition for an oil-based ballpoint pen, the ink composition comprising a coloring agent, a propylene glycol monomethyl ether (i.e., organic solvent with a boiling point of 120 C), a ketone resin, silica or an acrylic polymer, silica, a surfactant (i.e., phosphate ester surfactants, silicone surfactants, fluorine surfactants, acetylene surfactants, and fatty acid surfactants) and having a viscosity of 7-20 mPa*s at 25 C and a shear rate of 1,000 sec-1, and indicates that: the ink composition is for an oil-based ballpoint pen but can provide a smooth writing feeling like a water-based ballpoint pen, as well as a writing line without bleeding or show-through; and the clearance between a ball and tip opening of an oil-based ballpoint pen in which the ink container (i.e., cylinder) is filled with the ink composition is preferably in the range of 10-40 microns (paras 0011, 0026-0027, 0029, and examples 1-10). With respect to the ink consumption, and the ratio of the ball diameter to the ink consumption per writing distance are properties of the pen and the ink, and as the reference discloses the other limitations of the claim it would also be expected to meet these properties, and when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02. Although Otawa does not disclose the acid value of the resin, Otawa does disclose the use of acrylic. However, Yanagi also directed to oil based inks discloses that the acid value of an acrylic resin can be from 50 to 75 mgKOH/g (para 0109). Therefore, it would have been prima facie obvious to the skilled artisan at the time of the invention to add to the teachings of Otawa by using an acrylic resin with an acid value within the claimed range, with a reasonable expectation of success in forming a useful ink, as suggested by Yanagi. Regarding claim 4 Although Otawa does not disclose the HLB value of the surfactants, this is a property of the surfactants, and Otawa discloses the same surfactants, and when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02. Regarding claim 5 Otawa discloses that the organic solvents can be used in combination of two or more, and exemplifies phenyl cellosolve (i.e., BP of 247 C) and preferably propylene glycol monomethyl ether (para 0020). Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Otawa et al. (JP-2016017105-A), in view of Yanagi et al. (US 2011/0025753), as applied to claims 1-2, 4-6 and 8 above, in view of Igai et al. (JP-1024368-A). Regarding claim 7 Although Otawa does not disclose the surface area of the silica, Otawa does disclose the use of silica. However, Igai also directed to an oil based ballpoint pen ink comprising an organic solvent, a coloring material, a binder resin and silica particles, discloses that the silica particles should have a surface are between 50-380 m2/g (abstract). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Otawa by using silica particles with a surface area of 50-380 m2/g, with a reasonable expectation of success, as suggested by Igai. Further, as the surface area range of Igai overlaps the claimed range, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549. Response to Arguments Applicants argue against the prior art rejections. Applicants argue that the claim requires a resin with a specific acid value not taught by Otawa. While this is true it is not persuasive as a new reference is cited to show why the claimed acid value would be obvious. Applicants argue that Otawa does not disclose the diameter of the ball. While this may be true it is not persuasive as the diameter of the ball is not claimed, only the ratio of ball size to ink consumption is claimed. Further, applicants have not met their burden of showing the pen and ink of Otawa would not meet these property limitations. Further still, there are other factors which would affect the ink consumption beyond the ball diameter. Applicants argue about the ink consumption. Again this is a property of the ink and pen combination and applicants have not demonstrated that the ink and pen of Otawa would not meet this property limitation. The remaining arguments have been fully considered but are not persuasive for the same reasons given 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 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. JAMES E. MCDONOUGH Examiner Art Unit 1734 /JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734