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 § 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, 16-19, 23 and 25-33 are rejected under 35 U.S.C. 103 as being unpatentable over Seki et al. (US 2007/0204760), in view of Snedeker et al. (USP 5,460,647).
Regarding claims 1-2, 16-19, 23, 25 and 31
Seki discloses a solid marking composition that can be used as a crayon (para 0020), comprising an alkali metal salt of a carboxylic acid having 8 to 36 carbon atoms (abstract) preferably sodium myristate, sodium palmitate and sodium stearate (i.e., saturated fatty acids) in an amount of 5 to 50 %, and a coloring agent such as a pigment or dye (para 0036).
Seki does not disclose the use of a fatty acid amide. However, Snedeker discloses similar solid marking compositions that can be used as crayons (abstract) and discloses the use of stearamide in an amount preferably from about 20 to 30 wt % can be advantageous, and discloses that using too much will result in heart flaking and using too little will result in mold release problems (column 4, lines 38-45). Therefore, it would have been prima facie obvious at the time of the invention to add to the teaching of Seki by including stearamide in the taught amounts, with a reasonable expectation of success and the expected benefits as suggested by Snedeker.
As the amounts of fatty acid salt and fatty acid amide of the references overlaps the claimed amount, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claim 26
Seki discloses an example with 9 wt % water (para 0072).
Regarding claims 27 and 29-30
Seki discloses addition components such as gycols (i.e., a cosolvent/additive )(para 0064).
Regarding claim 28
Seki discloses that the glycols are usually used in amounts lower than 20 wt % (para 0040).
Regarding claims 32-33
Seki discloses mixing the components in a container heating and molding the composition followed by cooling (para 0041) to room temperature (para 0073), and discloses a temperature range of heating of about 85 to 95 C (para 0043).
As the temperature range of the reference overlaps the claimed range the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
As to the order of adding the components, it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04, section C, and also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930).
Allowable Subject Matter
Claims 20-22 and 24 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: none of the prior art fairly teaches or suggest the limitations in combination with the base claim(s) from which they depend.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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