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 .
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the marking instrument of claim 12, the marking element of claim 15, and the erasing tool of claim 17 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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, 5-7, 9-10, and 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seregely (US 3949132) in view of Iijima (US 4509982).
Regarding claim 1, Seregely teaches a water and wax-based ink composition comprising: an opacifying waxy material (col. 7, ll. 52-64); and water (See Black, Green, and Blue ink compositions in cols. 9-10).
Seregely does not teach that the ink composition comprises a dispersant.
Iijima teaches an ink composition that comprises a dispersant (col. 2, ll. 21-62).
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 the ink composition of Seregely with a dispersant as taught by Iijima for the purpose of improving the coloring agent in the ink (Iijima col. 2, ll. 21-23).
Regarding claim 2, the combination of Seregely and Iijima teaches the water and wax-based ink composition according to claim 1, wherein the opacifying waxy material comprises one or more of carnauba wax, beeswax, lanolin, tallow tree wax, laurel wax, bayberry wax, candelilla wax, ouricury wax, castor wax, Chinese wax, Japan wax, sugarcane wax, soy wax, paraffin waxes, microcrystalline waxes, synthetic waxes, polyethylene wax, montan wax, ceresin, ozocerite, monoglycerides, diglycerides, triglycerides, and esters of fatty alcohols and fatty acids having 12-40 carbon atoms (Seregely Table III).
Regarding claim 5, the combination of Seregely and Iijima teaches the water and wax-based ink composition according to claim 1, further comprising a colorant (Seregely, col. 6, ll. 25-34).
Regarding claim 6, the combination of Seregely and Iijima teaches the water and wax-based ink composition according to claim 5, wherein the colorant is a water-soluble dye (Seregely, col. 6, ll. 25-34).
Regarding claim 7, the combination of Seregely and Iijima teaches the water and wax-based ink composition according to claim 6, wherein the water-soluble dye comprises an acid dye, a basic dye, a polymeric colorant, a fluorescent dye, a solvent dye, a disperse dye, a direct dye, a reactive dye, and an FD&C dye (Seregely, col. 6, ll. 25-34).
Regarding claim 9, the combination of Seregely and Iijima teaches the water and wax-based ink composition according to claim 1, wherein the dispersant comprises one or more of alkylbenzene sulfonates, polyoxyethylene alkyl ethers, acetylenic diols, ethoxylated acetylenic diols, sultains, betaines, amine oxides, ethoxylated alcohols, nonylphenol ethoxylates, and cationic and anionic polymers (Iijima col. 2, ll. 21-42).
Regarding claim 10, the combination of Seregely and Iijima teaches the water and wax-based ink composition according to claim 1, further comprising one or more of a humectant, a surfactant, a preservative, a defoamer, and/or a pH regulant (Seregely teaches a preservative, see the table of blue and red ink compositions in col. 9).
Regarding claim 12, the combination of Seregely and Iijima teaches a marking instrument (Seregely col. 2, ll. 5-13) comprising the water and wax-based ink composition according to claim 1.
Regarding claim 13, the combination of Seregely and Iijima teaches the marking instrument of claim 12, wherein the marking instrument is an erasable marker comprising a marker barrel (implied by Seregely col. 2, ll. 5-13) and a writing tip (porous pen point, Seregely col. 2, ll. 5-13), wherein the water and wax-based ink composition is disposed in the marker barrel.
Regarding claim 14, the combination of Seregely and Iijima teaches the marking instrument according to claim 12, wherein the erasable marker is a dry-erase marker (Seregely col. 2, ll. 5-13).
Regarding claim 15, the combination of Seregely and Iijima teaches a kit comprising: a marking element (marker board, Seregely col. 2, ll. 5-13) comprising a non-porous surface; and a marking instrument according to claim 12, wherein a mark applied on the non-porous surface using the marking instrument is substantially removable without application of any solvent (Seregely col. 2, ll. 14-18).
Regarding claim 16, the combination of Seregely and Iijima teaches the kit according to claim 15, wherein the non-porous surface comprises a blackboard, whiteboard, a greenboard, a glass surface, a writing slate, a natural stone, a plastic surface, a coated surface, a metal surface, or a laminated surface (the marker board described by Seregely in col. 2, ll. 5-18 is a white board).
Claim(s) 3, 8, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seregely and Iijima as applied to claims 1 and 5 above, and further in view of Saito (US 8820908).
Regarding claim 3, the combination of Seregely and Iijima teaches the water and wax-based ink composition according to claim 1, but does not teach that the opacifying waxy material is carnauba wax.
Saito teaches using carnauba wax in ink (col. 25, ll. 6-10).
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 replaced the wax in the ink Seregely with carnauba wax as taught by Saito, wherein doing so would have merely been a simple matter of one known wax with another with predictable results.
Regarding claim 8, the combination of Seregely and Iijima teaches the water and wax-based ink composition according to claim 5, but does not teach that the colorant is a pigment.
Saito teaches an ink with pigment (col. 7, ll. 11-14).
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 dyes taught by Seregely with pigments as taught by Saito, wherein doing so would merely have been a matter of simple substitution of one known colorant for another with predictable results.
Regarding claim 11, the combination of Seregely and Iijima teaches the water and wax-based ink composition of claim 1, comprising: an effective amount of dispersant (Iijima col. 2, ll. 21-62); and 0 to 15% of a water-soluble dye Seregely (tables for ink compositions in col. 9 and 10).
Seregely does not teach that the composition comprises: 5-50% by mass of the opacifying waxy material, wherein the opacifying waxy material comprises at least one of carnauba wax and ethylene glycol distearate; 10-40% by mass of water.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In this case, Seregely teaches a few specific examples in columns 9-10 but does not provide general ranges for how much water or waxy material may be in the ink. This would lead one of ordinary skill to try some variations on Seregely’s compositions to optimize the ink for different attributes.
Saito teaches using carnauba wax in ink (col. 25, ll. 6-10).
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 replaced the wax in the ink Seregely with carnauba wax as taught by Saito, wherein doing so would have merely been a simple matter of one known wax with another with predictable results.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seregely and Iijima as applied to claim 15 above, and further in view of Rhodes (US 8591131).
Regarding claim 17, the combination of Seregely and Iijima teaches the kit according to claim 15, but does not teach an erasing tool.
Rhodes teaches a kit with a whiteboard (22), a marker (40) and an erasing tool (48).
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 the kit of Seregely with an erasing tool as taught by Rhodes for the purpose of enabling a user to remove markings from the whiteboard.
Regarding claim 18, the combination of Seregely, Iijima, and Rhodes teaches the kit according to claim 17, wherein the erasing tool comprises a fabric cloth, a microfiber cloth, a felt eraser, a synthetic fiber eraser, or a sponge (Rhodes col. 7, ll. 38-43).
Allowable Subject Matter
Claim 4 is 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
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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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.
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/BRADLEY S OLIVER/Examiner, Art Unit 3754