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 .
Rejections 35 U.S.C. § 103
1. 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, 4-9, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent (4,590,637) to Marino.
Regarding independent claim 1, Marino discloses a handle (13); a ferrule (11) secured to the handle (13) (See Col. 3 lines 30-45);
and a brush head (16) including a plurality of synthetic bristle filaments (17) (See Col. 3 lines 45-55) extending in a longitudinal direction from the ferrule (14) (See Col. 2 lines 15-35), the brush head (16) having a width dimension and a thickness dimension in a plane perpendicular to the longitudinal direction (vertical direction), with the width dimension being greater than the thickness dimension (See FIG. 2),
and each filament (17) having a fixed end secured at the ferrule (11) and an opposite free end longitudinally distant from the ferrule (11) with
the free ends of at least a portion of the filaments (17) collectively define a substantially chisel-shaped tip profile in a plane perpendicular (See FIG. 3) to the width dimension such that an apex (34) of the chisel-shaped tip extends across the width of the brush head (18) (See Col. 4 lines 30-45),
with every filament (17) in the brush head (16) is tapered from its fixed end to its free end, with the taper of each filament extending over at least 60% of its length (See FIG. 2),
that the filaments (17) within the brush head (16) vary in length and at least a portion of the filaments (17) have free ends which stop short of the chisel-shaped tip (34),
that filaments (17) of varying length are distributed throughout the width and thickness of the brush head (16) (See FIG. 2), and
However, Marino is silent regarding that a length of the shortest filaments is 30% to 60% of a length of the longest filaments, each measured from the ferrule to the filament tips. However, absent criticality in the specification it would have been obvious for one of ordinary skill in the art before the effective filing date to modify the length of the filaments (17) size in range relative to the other in terms of at least 30% in order to reach optimization for a particular manufacturing objective since such rationale would have been obvious to try.
Regarding claim 5, Marino as modified above teaches that each filament (17) is tapered over at least 75% of its length (See FIG. 2).
Regarding claim 6, Marino as modified above teaches that each filament (17) is substantially linearly tapered (See FIG. 2).
Regarding claim 7, Marino as modified above teaches that the thickness of each filament (17) at its fixed end is substantially the same as the thickness of all other filaments (17) (See FIG. 2).
Regarding claim 8, Marino is silent regarding that the thickness of each filament (17) at its fixed end is in the range of 0.15 to 0.30, preferably in the range of 0.18 to 0.25, and more preferably about 0.23 mm. However, absent criticality in the specification it would have been obvious for one of ordinary skill in the art before the effective filing date to modify the thickness of each filament (17) to be at least between 0.15 to 0.30 mm in order to reach optimization for a particular manufacturing objective since such rationale would have been obvious to try.
Regarding claim 9, Marino is silent that the thickness of each filament at its free end is in the range of 0.01 to 0.1, and preferably about 0.05 mm. However, absent criticality in the specification it would have been obvious for one of ordinary skill in the art before the effective filing date to modify the thickness of each filament (17) to be at least between 0.01 to 0.1 mm in order to reach optimization for a particular manufacturing objective since such rationale would have been obvious to try.
Regarding claim 12, Marino is silent regarding that a length of the shortest filaments is 40% length of the longest filaments. However, absent criticality in the specification it would have been obvious for one of ordinary skill in the art before the effective filing date to modify the length of the filaments (17) size in range relative to the other in terms of at least 40% in order to reach optimization for a particular manufacturing objective since such rationale would have been obvious to try to reach optimization.
Regarding claim 13, Marino is silent regarding that the length of the longest filaments is about 90mm and the length of the shortest filaments is about 30 to 40 mm, each measured from the ferrule to the filament tips. However, absent criticality in the specification it would have been obvious for one of ordinary skill in the art before the effective filing date to modify the length of the filaments (17) size in size of at least 30mm in order to reach optimization for a particular manufacturing objective since such rationale would have been obvious to try.
Regarding claim 16, Marino as modified above teaches that each filament (17) is tapered over at least its entire length (See FIG. 2).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent (4,590,637) to Marino in view U.S. Patent (9.055,807) to Dale (cited by Applicant).
Regarding claim 2, Marino is silent regarding that the chisel-shaped is V-shaped tip. However, Dale discloses a wedge-shaped paint brush (1) (See Col. 1 lines 15-25 of Dale). Dale teaches that the chisel-shaped tip is a symmetrical, rounded V-shaped tip with a rounded apex (38) (See Col. 4 lines 35-55 and FIG. 8 of Dale). It would have been obvious for one of ordinary skill in the art at the time before the effective filing date to modify Marino with Dale to include a V-shaped tip with a rounded apex (38) in order to adjust for finishing in tight corner while painting.
Regarding claim 3, Marino as modified with Dale teaches claim 3. In particular, Dale teaches that the sides of the V-shaped tip (See FIG. 4) form an internal angle of less than 90 degrees (See FIG. 4). As mentioned above, it would have been obvious for one of ordinary skill in the art at the time before the effective filing date to modify Marino with Dale to include a V-shaped tip with a rounded apex (38) in order to adjust for finishing in tight corner while painting.
Response to Arguments
2. Applicant's arguments filed on May 15, 2026 have been fully considered but they are not persuasive. The Applicant contends that neither U.S. Patent (4,590,637) to Marino nor U.S. Patent (9.055,807) to Dale teaches claim 1. The Applicant further contends that one of ordinary skill in the art would not have a rationale to modify either Marino nor Dale to arrive at a paint brush having all elements recited in amended claim 1. However, the Applicant does not explain in detail why Marino cannot be modified for at least one element regarding a change in size and what other elements Marino lacks to render claim 1 obvious. The Applicant alleges that inventor Michael Roe’s declaration establishes the criticality of the combination of elements recited in amended claim 1. In the declaration, Mr. Roe describes the images of the brushes versus a painted area with a respective brush versus a non-painted area then comparing the coverage of the brushes with the one of the present invention. At page 4, Mr. Roe asserts that the analysis of the paint brush of the present invention had a coverage performance at 73% to 75% compared to conventional mid-level paint brushes at 35% to 62%. The purported evidence for the test are provided in the Appendix A.
However, despite Mr. Roe’s excellent analysis of the invention what is missing is ability to determine whether the brush in Marino is indeed a mid-level brush that is used to compare to prior art. Further, nothing in the declaration describing the merits of the present invention compared to the “mid-level conventional art” precludes a determination that whatever the distinctions that exist cannot be rendered obvious. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
THIS ACTION IS MADE FINAL. 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.
Conclusion
3. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL D. JENNINGS whose telephone number is (571)270-1536. The examiner can normally be reached M-F 8-4:30pm. EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica S. Carter can be reached at (571) 272-4475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL DEANGILO. JENNINGS
Examiner
Art Unit 3723
/MICHAEL D JENNINGS/Primary Examiner, Art Unit 3723
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