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 § 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 1-5 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Candela (US Pat. No. 9,428,001).
Regarding claim 1, Candela discloses a carpenter pencil tool comprising:
a holder 2 extending along a longitudinal axis between a first end 2b and a second end 2a, the holder comprising an opening at the first end;
a pencil [marking element 3, which may be a pencil (see. Candela col. 3, ll. 47-51)] positioned within the holder 2, the pencil extending along the longitudinal axis and through the opening of the holder, the pencil comprising a tip (tip extends through opening in FIG 1b);
an adjustment mechanism comprising:
an elongated slot 13; and
a slide button 11 extending through the elongated slot, the slide button configured to engage and move the pencil relative to the holder; and
a retention component 15, 14 positioned within the holder, the retention component configured to apply a retention force on the pencil to move the pencil into engagement with the holder to resist movement of the pencil; wherein the pencil is adjustable between a non-extended position in which the tip of the pencil extends a first distance beyond the opening of the holder and an extended position in which the tip of the pencil extends a second distance beyond the opening of the holder (see col. 4, ll. 48-53).
Regarding claim 2, the slide button of Candela is used as claimed (see col. 5, ll. 26-46).
Regarding claims 3 and 4, the holder 2 and slot 13 of Candela are shown in the lengths as claimed (see FIG 1b).
Regarding claim 5, the interior of holder 2 is a cavity.
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.
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Candela.
Candela discloses the invention substantially as claimed. However, Candela does not disclose the specific retention components (claims 6-8) or a recess in the specific location (claim 9) as claimed. The claimed retention components are old and well-known functional equivalents for retention components taught by Candela. The claimed location of a recess is an obvious structural variation of the location of the recess shown in FIG 10 of Candela, which is also used to hold pencils. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to use the claimed features in combination with the Candela device based on manufacturer and/or end user preferences.
Allowable Subject Matter
Claims 10-20 are allowed.
Regarding independent claims 10 and 17, the prior art of record discloses similar tools. However, the prior art of record neither discloses nor suggests a plurality of openings extending through the opposing side walls of a holder in combination with further elements of a carpenter pencil tool, in the specific arrangements as claimed. Therefore, claims 10-20 are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to G. BRADLEY BENNETT whose telephone number is 571.272.2237. The examiner can normally be reached M-TH, 8:00-6:00.
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, Peter Macchiarolo can be reached at 571.272.2375. The fax phone number for the organization where this application or proceeding is assigned is 571.273.8300.
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/GEORGE B BENNETT/Primary Examiner, Art Unit 2855
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27 JAN 2026