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 .
Drawings
The drawings were received on 06 May 2026. These drawings are not acceptable.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because Figures 37-41 do not include the following reference sign(s) mentioned in the description: C, 411, 716, and 717. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 5, 16, 17 are objected to because of the following informalities: claims 5, 16, and 17 should include “Withdrawn” in the status identifier. Appropriate correction is required.
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.
Claims 2, 3, 6, 8, 11, 13, and 18-21 are 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.
Claim 2 recites the limitation “a positioning part” in line 2. It is unclear if this is intended to be the same positioning part introduced in claim 1. If they are intended to be the same element, please amend claim 2 to read “the positioning part”. If they are not intended to be the same element, please amend the claims to differentiate the two (e.g., “a first positioning part” and “a second positioning part”).
Claims 3, 6, 8, 11, 13, and 18-21 are rejected as inheriting the defect(s) of claim 2.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8, 18 and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Solution 6 in claims 8, 18 and 19 recites the limitation “the displacement portion replaces the displacement part to contact directly the positioning slot”. This appears to exclude the limitation “the displacement part is moveable in the positioning slot” recited in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 2, 6, 11, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamano (US 8292530) in view of Kudo (US 6336761).
Regarding claim 1, Tamano teaches a mechanical writing pen, comprising a sleeve (1), an adjusting part (3), a tool body (7), a resetting part (5), a control part (6), and a positioning part (2); wherein the positioning part defines a positioning slot (Figs. 7A-7E); wherein a displacement part (3b) is provided on the adjusting part and the displacement part is movable in the positioning slot; the mechanical pen is further provided with a lead driving lug (1a), and the entire lead driving lug is fully received within the positioning slot (Figs. 7A-7E); by displacing of the adjusting part in the sleeve, a position-based state of the tool body is selected between a lead driving state (Fig. 1B) and a lead retraction state (Figs. 1A and 1C), and the adjusting part is configured to maintain relative stability of the lead riving state and the lead retraction state by the lead driving lug, the resetting part and the control part; the resetting part keeps the lead retraction state of the displacement part on the adjusting part at a lead retracted position (A) relatively stable; when the displacement part (41) moves in the positioning slot (71) to a lead driving position (Fig. 7E), the displacement part is maintained at a lead driving state stably by the control part; wherein the lead is retractable by at least influencing the movement of the control part by applying an external force, causing the displacement part be free from limitation of the control part, the displacement part is thereby moveable under the action of the resetting part to retract the lead (col. 6, ll. 51-56).
Tamano does not teach that the entire positioning part is fully received within the sleeve.
Kudo teaches a positioning part (41) that is fully received within a sleeve (10).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have modified the device of Tamano such that the entire positioning part is fully received within the sleeve as taught by Kudo, wherein doing so would merely be a matter of reversal of which part is received inside the other. It has been held that a mere reversal of parts is an obvious modification. See In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955).
Regarding claim 2, the combination of Tamano and Kudo teaches the mechanical pen according to claim 1, wherein the mechanical pen further comprises a positioning part (Tamano 2), a trigger assembly (Tamano 2a) provided on the sleeve, wherein the movement of the control part is caused by the transmission of the trigger assembly to retract the lead (Tamano col. 6, ll. 51-56); the positioning slot is provided in the positioning part; the lead driving lug (Tamano 1a) and a lead retraction switch ramp (see annotated Fig. 7A of Tamano below) are provided in the positioning slot; a control bar (Tamano; bar-shaped middle body of 6) is provided on the control part; lead retraction is carried out by the displacement part through one of five ways as follows:
(1) lead retraction solution 1: a limiting lug is provided on the control bar; a long switch ramp is provided in the positioning slot, the limiting lug replaces the control bar to limit the displacement part; when retracting the lead, the displacement part moves upwards or downwards, by the long switch ramp the displacement part bypasses limitation of the limiting lug, subsequently the displacement part passes the lead retraction switch ramp and returns to the lead retracted position;
(2) lead retraction solution 2: a limiting lug is provided on the control bar; a long limiting ramp is provided in the positioning slot, and the limiting lug replaces the control bar to limit the displacement part; a return assistance slope is provided on the limiting lug; the displacement part moves upwards or downwards, reaches above or underneath the limiting lug by the long switch ramp, subsequently, the displacement part bypasses limitation of the limiting lug and returns to the lead retracted position by the lead retraction switch ramp;
(3) lead retraction solution 3: a limiting lug and a return control ramp are provided on the control bar; the limiting lug replaces the control bar to limit the displacement part; when the control bar moves downwards, the displacement part is subjected to force of the resetting part, moves upwards, and returns to the lead retracted position by the return control ramp;
(4) movement controlled lead retraction: by applying an external force to force the control part to move (Tamano, pulling clip 2A away from the shell), the displacement part will be free from limitation of the control part, the displacement part is thus influenced by the resetting part to move upwards or downwards, consequently, limitation of the control part on the displacement part is released, the displacement part passes the lead retraction switch ramp and returns to the lead retracted position to retract the lead (Fig. 9D); or
(5) pushing lead retraction: a pushing assistance slope is provided on the displacement part and/or the lead driving lug; maintaining the sleeve unmoved, pushing the adjusting part to move downwards with an external force, with the pushing assistance slope the displacement part is free from limitation of the lead driving lug and returns to the lead retracting position.
PNG
media_image1.png
197
370
media_image1.png
Greyscale
Regarding claim 6, the combination of Tamano and Kudo teaches the mechanical pen according to claim 2, wherein: a solution for moving the displacement part (41) in the positioning slot (71) from the lead retracted position (A) to the lead driving position (B) is carried out by any of three ways as follows:
(1) the long switch ramp is provided in the positioning slot, a lead driving assistance ramp is provided at an end of the lead driving lug close to the lead retracted position and/or an end of the displacement part close to the lead driving position, the displacement part is capable of deformation and bending forward and backward, when the displacement part extends through the lead driving lug, with deformation and bending ability of the displacement part and the lead driving assistance ramp, the displacement part bypasses the lead driving lug and reaches the lead driving position;
(2) the long switch ramp (Tamano 4a) and a lead driving sliding ramp (see annotated Fig 7A of Tamano below) are provided in the positioning slot, a lead driving guiding ramp (see annotated Fig 7A of Tamano below) is provided on a side of the lead driving lug ‘close’ to the lead retracted position; a lead driving channel (above 1a in Fig. 7A of Tamano) is provided in between the long switch ramp and the lead driving lug; when the displacement part moves from the lead retracted position, subjected to influence of the lead driving guiding ramp, the displacement part enters the lead driving channel (Tamano, Fig. 7B), and reaches above or underneath the lead driving position, at this time, releasing the external force, the displacement part will return to the lead driving position (Tamano Fig. D); and
(3) the long switch ramp is provided in the positioning slot, a lead driving sliding ramp is provided on the lead driving lug, a lead driving channel is provided at a side of the lead driving lug close to the lead retracted position; when the displacement part moves from the lead retracted position, the displacement part enters directly the lead driving channel, passes the long switch ramp and reaches above or underneath the lead driving position, and at this time, releasing the external force, the displacement part falls back to the lead driving position.
Claim(s) 3, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamano and Kudo as applied to claim 1 above, and further in view of Malinverni (US 10556460).
Regarding claim 3, the combination of Tamano and Kudo teaches the mechanical pen according to claim 2, wherein: a boss (see annotated Fig. 7A of Tamano below) is provided in the positioning slot, a return channel is provided in between the limiting lug and the boss or in between an inner surface of the sleeve and the limiting lug; a lead driving limiting ramp (see annotated Fig. 7A of Tamano below) and a lead retraction assistance ramp (see annotated Fig. 7A of Tamano below) are provided in the positioning slot; wherein applying an external force to control the adjusting part to move downwards, the displacement part will continue to move downwards, subsequently, the displacement part bypasses limitation of the limiting lug after passing the lead retraction assistance ramp in the positioning slot, and returns to the lead retracted position A through resilience of the resetting part (Tamano col. 6, ll. 11-27).
PNG
media_image2.png
226
436
media_image2.png
Greyscale
The combination of Tamano and Kudo does not teach: a lateral pushing portion (4A) is provided on the adjusting part (4); a lateral pushing slot (1A) for housing the lateral pushing portion (4A) to slide is provided in the sleeve (1).
Malinverni teaches a lateral pushing portion (20) that is provided on an adjusting part (36); a lateral pushing slot (50) for housing the lateral pushing portion to slide is provided in the sleeve; and applying a force to the lateral pushing portion causes the adjusting part to move downwards.
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have replaced the rear pushing portion of Tamano with the lateral pushing portion that is provided on an adjusting part and a lateral pushing slot for housing the lateral pushing portion to slide is provided in the sleeve; wherein applying a force to the lateral pushing portion causes the adjusting part to move downwards as taught by Malinverni, wherein doing so would merely be a matter of simple substitution of one known pen actuator for another with predictable results.
Allowable Subject Matter
Claims 8, 11, 13, and 18-21 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 06 May 2026 have been fully considered but they are not persuasive.
Applicant argues that the drawings are now proper because reference numerals 716, 411, and 717 can be found in Figs. 3, 15, and 21 respectively.
Examiner disagrees. The structures labeled in Figs. 3, 15, and 21 are so different from the structures shown in Figs. 37-41 that the reader cannot determine what parts of the embodiment of Figs. 37-41 should be label with reference numbers 716, 717, and 411. As such, the drawings are objected to.
Applicant argues that Tamano does not teach that the entire positioning part is fully received within the sleeve as required by claim 1.
In response, it is noted that the newly cited Kudo reference is relied upon to teach this feature.
Applicant argues that Tamano does not teach that “the entire positioning part… defines a positioning slot” because the slot of Tamano is partially defined by the cam 1a of the housing.
In response, it is noted that this limitation does not require that the entire positioning slot be solely defined by the positioning part. Furthermore, Tamano can be read such that the slot is defined solely by the positioning part and that the cam 1A is merely received therein.
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 BRADLEY S OLIVER whose telephone number is (571)270-3787. The examiner can normally be reached Monday-Friday, 7-3 ET.
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, David Angwin can be reached at (571)270-3735. 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.
/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754
Prosecution Insights