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 Objections
Claim 124 is objected to because of the following informalities: Claim 124 references Table 1 from the specification. Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.” Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat App. & Inter. 1993). See MPEP 2173.04(s). Appropriate correction is required.
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) 110-113 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maruyama (US 9162515) in view of Herve (FR 3003860).
Regarding claim 110, Maruyama teaches an ink applicator, comprising: a lower body (62), comprising: a reservoir (11) contained in a cavity of the lower body (Fig. 4B).
Maruyama does not teach a semi-permanent ink contained in the reservoir, wherein the semi- permanent ink comprises: a semi-permanent colorant, wherein the semi-permanent colorant comprises genipin, a genipin derivative, lawsone, a lawsone derivative, or combinations thereof; a solvent; and a film-forming agent.
Herve teaches a semi-permanent ink comprising: a semi-permanent colorant, wherein the semi-permanent colorant comprises genipin, a genipin derivative (see Formula I on pg. 1), lawsone (¶0019), a lawsone derivative, or combinations thereof; a solvent (water, ¶0021); and a film-forming agent (¶0022).
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 used the ink of Herve with the pen of Maruyama, wherein doing so would merely have been a matter of selecting a known ink for use in an ink applicator.
Regarding claim 111, the combination of Maruyama and Herve teaches the ink applicator of claim 110, wherein the reservoir comprises polyethylene terephthalate (PET, see Maruyama col. 3, ll. 37-41).
Regarding claim 112, the combination of Maruyama and Herve teaches the ink applicator according to claim 110, comprising an upper body (Maruyama 65) coupled to the lower body, the upper body comprising: a nib (Maruyama 41) comprising a first end that is external to the upper body and a second end internal to the upper body.
Regarding claim 112, the combination of Maruyama and Herve teaches the ink applicator of claim 110, wherein the reservoir is selectively removable (the reservoir of Maruyama is a refill unit that can be removed from the pen barrel 62).
Regarding claims 115-119 and 122-125, the combination of Maruyama and Herve teaches the ink applicator system of claim 110, Herve claims a coloring composition comprising an iridoid-type compound [0001] (which also fits the broad classification of a genipin derivative, since genipin is an iridoid, and general formula as shown below encompasses genipin) ([0019, 0054]; pg 15-18 Tables and Figures, wherein pg 15, line 2 describes the R groups for genipin) that can include a solvent [0021] and thickeners (reads on thickening agent of claim 240) [0022]. Herve teaches incorporation of one or more of these genipin derivatives into a coloring composition (Herve - claim 12; pg 6-7 of machine translation), and lawsone is also recognized as a direct dye of incorporation [0019]. Herve teaches a pH of 6-11 [0023], which overlaps with the instant range of 4-7 (in claim 263). Herve also discusses the following allowable variations of the disclosed compound series on the pg 15-16 Tables (reproduced below), as obvious. Note the preferred analog of Herve below (pg 18), and how it applies to substitution of the table below it:
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88
289
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616
609
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795
604
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Notably (from the table above and pg 1-2 of the French publication), Herve teaches
variations for genipin derivatives in terms of Formula I (pg 1-2 of the French publication), where
it would be obvious to make one or more substitutions from the parent (preferred) compound
described above:
• R1 (Herve) can be a primary alcohol, aldehyde, carboxylic acid, carboxylic ester,
amide (primary, secondary, tertiary), primary amine, imine, etc. (pg 1-2 of French
publication). - This maps to instant R3 (when the double bond is present) in
instant formula I of claim 240, such that R3 = -CH2OH, -CH(=O), -C(=O)ORI0,
-C(=O)NRI0RI0, -CH2NR7R8.
• R2 (Herve) can be H, Me, alcohol, acids, esters, amides, etc. - This maps to
instant RI (when the double bond is present) in instant formula I of claim 240,
such that RI = -C(=O)OR6, Cl-alkyl.
• R3 (Herve) is not necessarily present (i.e., n = 0, etc.) (found below structure on
pg 15). - This is not present in instant formula I of claim 115.
• R4 (Herve) is H, alkyl, etc. -This maps to instant R2 (when the double bond is
present) in instant formula I of claim 240, such that R2 = -OH.
Structures are provided below for reference to the discussion above:
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235
571
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Thus, the Examiner suggests removing the specific groups from the instant R3 listings
from the general instant formulas I, Ila, and Ilb (at least when a double bond is present), that are
taught by Herve (where Herve teaches this substituent as R1 on pg 1-2 of the French
publication). The instant species of the claim set will also have to be considered with these
changes (see below for more information). Note that while the Examiner discusses mapping and
suggestions in this Office Action, due to the complexity of the chemical structures, Applicant is
encouraged to make their own assessments in comparison to this Office Action, based on the Art.
In summary, Herve teaches the elements and desirability for the limitations of the instant
claims, and thus, their obviousness. It must be remembered that "[w]hen a patent simply arranges
old elements with each performing the same function it had been known to perform and yields no
more than one would expect from such an arrangement, the combination is obvious." KSR v.
Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)).
"[W]hen the question is whether a patent claiming the combination of elements of prior art is
obvious," the relevant question is "whether the improvement is more than the predictable use of
prior art elements according to their established functions."
In addition to the discussion of formula mappings above, several instantly claimed
species are at issue (i.e., as being obvious from Herve) in the current claim set (numbering of
compounds for reference below, numbers from left to right, as presented in the claim set filed 02/23/2024):
• Claim 124: the aldehyde structure (compound 1), the primary alcohol (compound
I 0), the primary alcohol (compound 15); note there is no issue with the epoxide
(compound 13).
Regarding claim 127, the combination of Maruyama and Herve teaches the ink applicator of claim 115, wherein the solvent comprises water, methanol, ethanol, isopropanol, diethylene glycol monoethyl ether, or a combination thereof (Herve ¶0021).
Regarding claim 129, the combination of Maruyama and Herve teaches the ink applicator according to claim 110, comprising an upper body (Maruyama 65) wherein the lower body is coupled or couplable to the upper body, and/or wherein the upper body comprises a nib (Maruyama 41) comprising a first end that is external to the upper body and a second end internal to the upper body, wherein the nib is configured to dispense a semi-permanent ink.
Claim(s) 128 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maruyama and Herve as applied to claim 115 above, and further in view of Wang (CN 110226975, cited by Applicant).
Regarding claim 128, the combination of Maruyama and Herve teaches the ink applicator of claim 115, including a film-forming agent (Herve ¶0022). Herve does not teach that the film-forming agent comprises a volatile silicon resin, polyvinylpyrrolidone, an acrylate, an acrylamide, a copolymer, an isododecane resin, or a combination thereof, and/or wherein the film- forming agent comprises polymethylsilsesquioxane, trimethylsiloxysilicate, polypropylsilsesquioxane, dimethicone, cyclopentasiloxane, dimethiconol crosspolymer, polysilicone-6, polysilicone-8, polysilicone-11, polysilicone-14, acrylates copolymer, styrene/acrylates copolymer, polyvinylpyrrolidone, acrylates/C12-22 alkyl methacrylate copolymer, acrylates/polytrimethylsiloxymethacrylate copolymer, polyvinylpyrrolidone/vinyl acetate (VPNA) copolymer, VP/dimethiconylacrylate/polycarbamyl/polyglycol ester, VP/dimethylaminoethylmethacrylate copolymer, VP/dimethylamino ethylmethacrylate/polycarbamyl polyglycol ester, VP/eicosene copolymer, VP/hexadecene copolymer, VP/methacrylamide/vinyl imidazole copolymer, VP/polycarbamyl polyglycol ester, VP/VA copolymer, polyester-1, polyester-2, polyester- 3, polyester-4, polyester-5, polyester-7, polyester-8, and polyester-10, or a combination thereof, and more specifically wherein the film-forming agent is a combination of acrylates copolymer, polyvinylpyrrolidone, and styrene/acrylates copolymer.
Wang teaches the use of polyvinylpyrrolidone as a film-forming agent (Example A).
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 chosen polyvinylpyrrolidone as the film-forming agent as taught by Wang, wherein doing so would merely be a matter of selecting a known film-forming agent.
Claim(s) 114 is/are rejected under 35 U.S.C. 103 as being unpatentable over Henry (US 9193212) in view of Herve.
Regarding claim 114, Henry teaches an ink applicator system (10), comprising: a reservoir (44) comprising semi-permanent ink (col. 3, ll. 9-13); and a plurality of nibs (48) configured to contact the semi-permanent ink in the reservoir.
Henry does not teach that the semi-permanent ink comprises: a semi-permanent colorant, wherein the semi-permanent colorant comprises genipin, a genipin derivative, lawsone, a lawsone derivative, or combinations thereof; a solvent; and a film-forming agent.
Herve teaches a semi-permanent ink comprising: a semi-permanent colorant, wherein the semi-permanent colorant comprises genipin, a genipin derivative (see Formula I on pg. 1), lawsone (¶0019), a lawsone derivative, or combinations thereof; a solvent (water, ¶0021); and a film-forming agent (¶0022).
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 used the ink of Herve with the pen of Henry, wherein doing so would merely have been a matter of selecting a known ink for use in an ink applicator.
Allowable Subject Matter
Claims 120 and 121 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.
Conclusion
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/BRADLEY S OLIVER/ Examiner, Art Unit 3754