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 .
The amendment dated 07/23/2026 has been considered and entered. The amendment includes previously indicated allowable subject matter from now cancelled claim 13 into all claims. The indication of claim 13 as allowable for teaching thermoplastic polymers was in error as the Non-final rejection 04/24/2026 previously that the limitation was taught by Nakamura Yoshitsugu (JP 2009-292056 A). However, for the sake of prosecution, the rejection is made Non-final based on the previous grounds of rejections.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 25 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claim recites adjusting position, orientation or volume of the photosensitizing material and/or the light scattering additive which is ambiguous as it is unclear how the position, orientation or volume are adjusted in the composition.
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, 3, 11, 12, 23 – 26 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura Yoshitsugu (JP 2009-292056 A)
In regard to claims 1, 11, 12, 26, Nakamura teaches a writing instrument (title). The writing instrument can be a pen comprising a color fading substance of photosensitizing means which converts oxygen to reactive oxygen species when exposed to light, metal plate such as gold alloy, thermoplastic resin (polymer) such as polyethylene, polypropylene, etc., and comprising synthetic fine particles such as titanium dioxide (specification). Titanium dioxide provides the limitation of light scattering additive as claimed. Since Nakamura teaches the claimed composition, the self-disinfecting material of the claim is provided. The ingredients of the composition are mixed and stirred and thus appears to provide a homogeneous composition having the claimed ingredients (See Examples 1 to 4).
In regard to claims 2, 3, Nakamura teaches the material comprising gold as previously stated.
In regard to claim 23, Nakamura teaches writing material such as a pen having the claimed ingredients as previously stated.
In regard to claim 24, Nakamura teaches writing material such as a pen which generally comprises one or more of the claimed ingredients such as a body, cap, ink, click button etc., and which is inherent or obvious.
In regard to claim 25, Nakamura teaches writing material such as a pen which are molded or extruded components and comprising the light scattering additive and the other ingredients and thus provides the method of preparing the writing material such as a pen comprising the light scattering material in the feedstock prior to the molding or extruding process. The plastics of pens are typically injection molded while other components such as ink tubes are extruded which are obvious.
Allowable Subject Matter
Claims 4 – 10, 14, 20 – 22 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.
The following is a statement of reasons for the indication of allowable subject matter: Nakamura Yoshitsugu (JP 2009-292056 A) teaches a writing instrument but fails to teach the claimed limitations.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that thermoplastic polymer is not present in the composition of Nakamura Yoshitsugu. The argument is not persuasive.
Nakamura recites thermoplastic polymers such as polyethylene, polypropylene etc. as discussed in the rejections above.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
