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 .
Response to Amendment
• Claims 1 and 16-34 are currently pending. Claims 2-15 are canceled.
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 1 and 16-34 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.
In claims 1, 16, 18-20, and 22-34, the term “about” is used. However, the term “about” is a relative term that renders the claims indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what ranges the term “about” encompasses: ± 5%? ±10? The prior art further fails to provide a reasonable definition with respect to the term “about” in the context of leads. To correct, the Examiner suggests deleting all instances of the word “about” in the claims. Claims 17 and 21 are also rejected by virtue of their dependency on claim 1. For the purposes of examination, the Examiner is interpreting “about” to encompass values within ± 10% of the respective claimed range.
In claim 17, the term “substantially no TiO2” is used. However, the term “substantially no” is a relative term that renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what ranges the term “substantially no” encompasses: 0.1 wt%? 0.01 wt%? 0.0001 wt%? To correct, the Examiner suggests deleting the term “substantially no TiO2” from the claims. For the purposes of examination, the Examiner is interpreting any lead that contains less than 0.2 wt% of TiO2 to contain “substantially no” TiO2 (see Applicant’s specification at pg. 2, para. 3).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 16-24, 28, 31, 33, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Sakanishi et al. (JP-2011213757-A), with reference to the included machine translation (hereinafter referred to as “Sakanishi”), with evidence from Pinzer et al. (US-20080078301-A1) (hereinafter referred to as “Pinzer”) as to the rejection of claim 33 only.
Regarding claims 1 and 18, Sakanishi teaches a writing instrument comprising a lead, wherein the lead comprises at least about 0.5 wt.-% ZrO2, relative to the total weight of the lead (see Sakanishi at pg. 1, para. 1, teaching a pencil lead which can be used in a mechanical pencil; also see Sakanishi at pg. 2, para. 6, teaching the pencil lead as containing 3 to 90 wt% of glass powder; also see Sakanishi at pg. 2, para. 7-8, teaching the glass powder is a glass powder having a metal oxide as a base material, such as zirconium oxide; zirconium oxide is ZrO2; this range of 3 to 90 wt% overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05).
Regarding claims 16-17, Sakanishi does not necessitate the presence of titanium oxide in their glass powder; accordingly, Sakanishi necessarily teaches a lead comprising 0 wt% of titanium oxide.
Regarding claims 19-20, see Sakanishi at pg. 2, para. 6, teaching the pencil lead as containing 3 to 90 wt% of glass powder; this range overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05. With respect to the L* limitation, such a limitation is a property of the composition. Since the composition of Sakanishi is the same as that claimed, it necessarily follows that the composition meets the claimed L* property. Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Fitzgerald. See MPEP § 2112-2112.02.
Regarding claim 21, see Sakanishi at pg. 4, para. 2 and para. 6, teaching the glass powder may have in the form of particles.
Regarding claims 22-24, see Sakanishi at pg. 4, para. 6, teaching the average particle size of the glass powder to range from 0.1 to 50 µm; this range overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05; note that Sakanishi teaches an “average particle size,” and thus, necessarily the claimed D50 and D90 ranges are met by the taught 0.1 to 50 µm range.
Regarding claim 28, see claim 1 rejection above, showing Sakanishi as teaching a pencil lead which may comprise between 3 and 90 wt% of a glass powder, such as zirconium oxide, i.e., ZrO2; zirconium oxide is a group four metal oxide; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 31, see Example 1 of Sakanishi at pg. 8, para. 1, teaching an example lead containing 1 wt% of Ca-Zn stearate as a stabilizer; Ca-Zn stearate is a fatty acid salt; thus, Sakanishi reasonably teaches via their example embodiments the inclusion of 1 wt% of a fatty acid salt, e.g., Ca-Zn stearate, in their lead. This value falls within the claimed range.
Regarding claim 33, see claim 1 rejection above, showing Sakanishi as teaching a pencil lead which may comprise between 3 and 90 wt% of a glass powder, such as zirconium oxide, i.e., ZrO2; zirconium oxide is a pigment, as evidenced by Pinzer at para. 0028; the range of 3 to 90 wt% overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 34, see Example 1 of Sakanishi at pg. 8, para. 1, teaching an example lead containing 40 wt% of polyvinyl chloride as a binder; thus, Sakanishi reasonably teaches via their example embodiments the inclusion of 40 wt% of a binder in their lead. This value falls within the claimed range.
Claims 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Sakanishi, as applied to claim 21 above, and further in view of Fujimagari (JP-2004115686-A), with reference to the included machine translation (hereinafter referred to as “Fujimagari”).
Regarding claims 25-26, while Sakanishi teaches the writing instrument according to claim 21 outlined above, Sakanishi fails to explicitly teach the ZrO2 particles as having a BET-value between about 2.5 m2/g to about 20 m2/g, measured according to DIN ISO 9277:2014-01.
However, Fujimagari teaches a pencil lead (see Fujimagari at pg. 1, para. 1). Fujimagari further teaches the BET surface area of the lead to preferably range from 10 m2/g or more, and that when the value is 10 m2/g or more, an excellent balance between bending strength and density can be obtained, and that if it is less than 10 m2/g, the impregnated oily substance is too small (see Fujimagari at pg. 3, para. 4). Moreover, Fujimagari teaches the pencil lead may be impregnated with an oil such as paraffin wax or polyethylene wax (see Fujimagari at pg. 4, para. 2).
Sakanishi teaches their pencil lead may be impregnated with waxes (see Sakanishi at pg. 5, last paragraph).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the BET surface area of the pencil lead of Sakanishi to range from 10 m2/g or more. One of ordinary skill in the art would have been motivated to do so in order to obtain an excellent balance between bending strength and density, and to allow for enough of the oily substance (e.g., the wax) to be impregnated within the pores (see Fujimagari at pg. 3, para. 4).
This range of 10 m2/g or more overlaps the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Sakanishi, as applied to claim 1 above, and further in view of Thies (US-20110118383-A1) (hereinafter referred to as “Thies”).
Regarding claim 27, while Sakanishi teaches the writing instrument according to claim 1 outlined above, Sakanishi fails to explicitly teach the lead as having a diameter between about 5 mm to about 35 mm.
However, Thies teaches pencil leads usually have an outer diameter from about 0.3 mm to 6 mm (see Thies at para. 0002).
Sakanishi teaches their lead may be a pencil lead (see Sakanishi at pg. 1, para. 1).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the diameter of the pencil lead to range from 0.3 mm to 6 mm, given this is a common diameter for pencil leads (see Thies at para. 0002). Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
This range of 0.3 mm to 6 mm overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Sakanishi, as applied to claim 1 above, and further in view of Nguyen (US-20170051173-A1) (hereinafter referred to as “Nguyen”).
Regarding claims 29-30, while Sakanishi teaches the writing instrument according to claim 1 outlined above, Sakanishi fails to explicitly teach the lead as comprising between about 10 wt% to about 90 wt% of one or more waxes, relative to the total weight of the lead (10 to 45 wt%, regarding claim 30).
However, Nguyen teaches a solid drawing material suitable for use as a colored pencil lead (see Nguyen at para. 0049). Nguyen further teaches the solid drawing material to include a wax, and that the content of the wax preferably ranges from 15 to 60% based on the total amount of the solid drawing material in terms of balance between the coloring property, the writing performance, and the strength (see Nguyen at para. 0079).
Sakanishi teaches their pencil lead may contain waxes (see Sakanishi at pg. 5, last paragraph).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the content of the wax in the pencil lead of Sakanishi to range from 15 to 60%. One of ordinary skill in the art would have been motivated to do so in order to balance between the coloring property, the writing performance, and the strength (see Nguyen at para. 0079).
This range of 15 to 60% falls completely within the claim 29 range and overlaps the claim 30 range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Sakanishi, as applied to claim 21 above, and further in view of Itoi et al. (JP-2005060666-A), with reference to the included machine translation (hereinafter referred to as “Itoi”), with evidence from Hilfiger et al. (US-10131622-B1) (hereinafter referred to as “Hilfiger”).
Regarding claim 32, while Sakanishi teaches the writing instrument according to claim 1 outlined above, Sakanishi fails to explicitly teach the lead as comprising between about 5 wt% to about 30 wt% of a hydrous aluminum phyllosilicate relative to the total weight of the lead.
However, Itoi teaches a pencil lead which may be used in a wood pencil or a mechanical pencil (see Itoi at pg. 3, para. 6). Itoi further teaches the pencil lead to contain a binder, such as clay minerals like montmorillonite (see Itoi at pg. 4, para. 4). Moreover, Itoi teaches the blending amount of the binder to range from 10 to 90% by mass of the entire pencil lead, and that when it exceeds 90% by mass, the writing quality becomes poor, and that when it is less than 10% by mass, the bending strength of the pencil lead is not sufficient (see Itoi at pg. 4, para. 5).
Sakanishi teaches their lead may contain a binder, such as montmorillonite (see Sakanishi at pg. 6, para. 5).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the content of the binder, e.g., montmorillonite, in the lead of Sakanishi to range from 10 to 90 mass%. One of ordinary skill in the art would have been motivated to do so in order to prevent the writing quality from becoming poor and to maintain bending strength of the lead (see Itoi at pg. 4, para. 5).
Montmorillonite is a hydrous aluminum phyllosilicate, as evidenced by Hilfiger at col. 3, lines 55-59. Further, this range of 10 to 90 wt% overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 16-20, 28-30, and 33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 16, and 31 of U.S. Patent Application No. 19/132,286 (see claim set dated 05/22/2025) (herein referred to as ‘286).
With respect to instant claims 1, 16-18, 28-30, and 33, although the claims at issue are not identical, they are not patentably distinct because instant claims 1, 18, and 28 are met by claim 1 of ‘286 (note that the ‘286 claim 1 range of 1.2 wt% to 50 wt% encompasses values that would meet the instant claim 1 range, e.g., a ZrO2 content of 3 wt% and the two pigments content of 20 wt%, for a total content of 23 wt%); instant claims 16-17 are met by claims 4 and 16 of ‘286; instant claims 29-30 are met by claim 31 of ‘286; and instant claim 33 is met by claim 1 of ‘286.
With respect to instant claims 19-20, the L* value is notably a property of the composition; since ‘286 claims the same composition as that claimed, it necessarily follows that the lead of ‘286 meets the claimed L* value; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II); burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Fitzgerald. See MPEP § 2112-2112.02; also note that the ‘286 claim 1 range encompasses values for ZrO2 that fall within the claim 19-20 ranges, e.g., a ZrO2 value of 10 wt% or 12 wt%.
Claims 21-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of ‘286, as applied to instant claim 1 above, and further in view of Sakanishi.
With respect to instant claim 21, ‘286 fails to claim the ZrO2 as being in the form of particles. However, it is known that ZrO2 may be included in leads in the form of particles (see Sakanishi at pg. 4, para. 2 and 6). Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious for one of ordinary skill to incorporate ZrO2 in the form of particles in the lead of ‘286, given doing so is well-known in similar leads in the art (see Sakanishi at pg. 4, para. 2 and 6). Combining known elements to obtain predictable results is within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
With respect to instant claims 22-24, ‘286 fails to claim the respectively claimed particle sizes. However, Sakanishi teaches particle sizes of 0.1 to 50 µm in order to prevent unevenness, improve writing quality, and improve strength (see Sakanishi at pg. 4, para. 6). Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious for one of ordinary skill to set the average particle size of the ZrO2 particles of ‘286 to range from 0.1 to 50 µm. One of ordinary skill in the art would have been motivated to do so in order to prevent unevenness, improve writing quality, and improve strength (see Sakanishi at pg. 4, para. 6). This range overlaps the instantly claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05 (also see the claim 22-24 rejections over the prior art above).
Claim 27 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of ‘286, as applied to instant claim 1 above, and further in view of Thies.
With respect to instant claim 27, ‘286 fails to claim the particle diameter of the lead. However, although the claims at issue are not identical, they are not patentably distinct because such a limitation is obvious over Thies, for the same reason as the instant claim 27 rejection above.
Claims 32-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of ‘286, as applied to instant claim 1 above, and further in view of Itoi.
With respect to instant claims 32-34, ‘286 fails to claim the lead as containing 5 to 30 wt% of a hydrous aluminum phyllosilicate or 3 to 50 wt% of a binder. However, binders such as montmorillonite in pencil leads “bind”/hold the components together, and a concentration of 10 to 90 wt% for such a binder in a pencil lead is known to improve writing quality and bending strength (see Itoi at pg. 4, para. 5). Therefore, although the claims at issue are not identical, they are not patentably distinct because it would have been obvious for one of ordinary skill to use a binder such as montmorrilonite in the composition of ‘286 in an amount ranging from 10 to 90 wt%. One of ordinary skill in the art would have been motivated to do so in order to “bind”/hold the components together, and to improve writing quality and bending strength (see Itoi at pg. 4, para. 5). This range overlaps the instantly claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05. Further, montmorillonite is a hydrous aluminum phyllosilicate, see the claim 32 rejection earlier above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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