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
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, 3, 6, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 6068422) in view of Lester (US 2023/0191532) and Ohkawa (US 2020/0180346).
Regarding claim 1, Smith teaches a writing implement refill, comprising: an ink storage tube (22) made of a synthetic resin (col. 3, ll. 47-48), an inside of the ink storage tube being visible (col. 3, ll. 47-48); and an engraved mark (24) formed, on a surface of the ink storage tube.
Smith does not disclose that the engraved mark is formed by the synthetic resin being foamed or carbonized or both, wherein a reactive additive is blended in the synthetic resin, wherein the ink storage tube has a multilayer structure of two or more layers including an outermost layer and at least one inner layer located inside the outermost layer, and wherein the reactive additive is blended only in the inner layer.
Lester teaches forming an engraved mark on a synthetic resin by foaming, carbonizing, or both foaming and carbonizing the synthetic resin (¶0034) wherein a reactive additive is blended in the synthetic resin (¶0033).
Ohkawa teaches a multilayer structure of two or more layers including an outermost layer (7) and at least one inner layer (5) located inside the outermost layer, and only the inner layer is chromogenic.
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 formed the engraved mark of Smith by foaming, carbonizing, or both foaming and carbonizing the synthetic resin as taught by Lester, wherein doing so would merely be a matter of selecting a known method of engraving a mark on resin.
Furthermore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have formed the ink tube of Smith to include an outermost layer and at least one inner layer located inside the outermost layer as taught by Ohkawa for the purpose of protecting the inner layer and the engraving (Ohkawa, layer 7 is a “transparent protective laminate member”, ¶0081). It therefore would have been obvious to for the ink tube of Smith such that the reactive additive is blended only in the inner layer so that the engraving would be under the protection of the outer layer.
Regarding claim 3, the combination of Smith and Lester teaches the writing implement refill according to claim 1, wherein the engraved mark protrudes from the surface of the ink storage tube (this is a result of foaming the resin, which creates bubbles in the resin and produces a protruded mark).
Regarding claims 6-8, the combination of Smith and Lester teaches a method of engraving a writing implement refill according to claims 1-3, respectively, the method comprising forming the engraved mark by applying laser marking to the surface of the ink storage tube (Lester, ¶0034).
Claim(s) 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith, Lester and Ohkawa as applied to claim 1 above, and further in view of Shigeyasu (JP S5872084 U).
Regarding claim 4, the combination of Smith and Lester teaches the writing implement refill according to claim 1, wherein: a color of an ink contained in the ink storage tube is visible from outside (the tube of Smith is transparent).
Smith and Lester do not teach that in addition to the engraved mark, an information identifier of a color of an identical tone to the color of the ink is formed on the surface of the ink storage tube.
Shigeyasu teaches an information identifier (5) that is a color of an identical tone to the color of the ink is formed on the surface of the ink storage tube.
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 provided an information identifier of a color of an identical tone to the color of the ink is formed on the surface of the ink storage tube for the purpose of conveying the maker’s gratitude (Shigeyasu, pg. 1 of the attached machine translation).
Regarding claim 9, the combination of Smith, Lester, and Shigeyasu teaches a method of engraving a writing implement refill according to claim 4, the method comprising forming the engraved mark by applying laser marking to the surface of the ink storage tube (Lester, ¶0034).
Response to Arguments
Applicant's arguments filed 08 December 2025 have been fully considered but they are not persuasive.
Applicant argues that Ohkawa does not teach a reactive additive is only in the inner layer and points to Fig. 2 to support this argument.
In response, it is noted that the rejection points to layers 7 and 5, neither of which is present in Fig. 2. Figure 10, however, includes layers 7 and 5, and the markings 5a formed by a laser (¶0081).
Applicant argues that there is no teaching or suggestion to modify the refill of Smith with the teachings of Ohkawa.
In response, it is noted that Ohkawa teaches that the outer layer 7 is a protective layer. One of ordinary skill would understand that an outer protective layer could also be applied to the refill of Smith to protect the markings thereon.
In response to applicant's argument that the cited references do not recognize the advantageous results of the claimed invention, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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.
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/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754