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 § 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.
Claim 1-9 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.
The term “vicinity” in claim 1 is a relative term which renders the claim indefinite. The term “vicinity” 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. For purposes of examination, the term “vicinity” will be defined as any location on the pen.
Dependent claims 2-9 suffers similar deficiency as they depend off of claim 1.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Kyoko et al (US 20060075924 in view of Ikai (US 20210178803) and in further view of Onuki et al (US 20210095144).
Regarding claim 1, Kyoko discloses a writing instrument refill comprising;
an ink storage tube (Fig. 3, 10) storing an ink (Fig. 3, 30) therein;
a pen tip (Fig. 3, 12) provided on the distal end side of the ink storage tube and including a writing part ([0058]); and
a pen tip holder (Fig. 3, 11) to which the ink storage tube (Fig. 3, 10) and the pen tip (Fig. 3, 12) are respectively connected, wherein;
a rear end side outer circumferential surface of the pen tip holder and a front end side inner circumferential surface of the ink storage tube are press-fit inserted ([0012]), and a circumferential swaged part is formed (Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product in the prior art, the claim is unpatentable even through the prior product was made by a different process” (In re Thorpe, 777 F.2d 695, 698,227 USPQ 964, 966 (Fed. Circ. 1985) (see MPEP 2113). In the instant case, the swaged as disclosed by the prior art structurally meets the swaged part as claimed) on a front end side outer circumferential surface of the ink storage tube (see annotated Fig. 11),
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the circumferential swaged part is formed of a straight surface having a constant outer diameter in an axial direction and tapered surfaces formed on both front and rear sides of the straight surface (see annotated Fig. 12).
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Kyoko does not explicitly disclose wherein;
the ink storage tube is a tubular body made of metal,
However, Ikai ‘803 teaches;
the ink storage tube is a tubular body made of metal ([0114]),
The advantage of having an ink storage tube made of metal is to provide an ink storage tube that is more durable and less likely to break. Therefore, it would been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Kyoko to incorporate the teachings of Ikai to provide a writing instrument refill with an ink storage tube that is made of metal to increase the durability of the ink storage tube.
Kyoko also does not explicitly disclose wherein;
an outer diameter of the ink storage tube in the vicinity of the circumferential swaged part is φ4.5 mm or more ([0110]) and
However, Onuki teaches;
an outer diameter of the ink storage tube in the vicinity of the circumferential swaged part is φ4.5 mm or more ([0185]; The prior art teaches that the ink storage tube has an inner diameter of 4.65mm. Therefore, it would have been obvious to one of ordinary skill in the art to come to the conclusion that the outer diameter of the ink storage tube is inherently larger than 4.5mm).
The advantage of having an ink storage tube with an outer diameter of 4.5mm or more is for ease of ink refill and the capacity to store more ink. Therefore, it would been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Kyoko to incorporate the teachings of Onuki to provide a writing instrument refill with an ink storage tube with an outer diameter of 4.5mm or more so that the tube is easier to fill and can store more ink.
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kyoko et al (US 20060075924 in view of Ikai (US 20210178803), in further view of Onuki et al (US 20210095144) and in further view of Ikai (US 20190337323).
Regarding claim 2, in addition to the limitations in claim 1, Kyoko does not explicitly disclose;
wherein a conditional expression W ≥ t is satisfied provided that an axial length of the straight surface is W and a thickness of the ink storage tube is t.
However, Ikai ’323 teaches;
wherein a conditional expression W ≥ t is satisfied provided that an axial length of the straight surface is W and a thickness of the ink storage tube is t. (Fig. 4 depicts the length of the straight surface (element b) being greater than the thickness of the ink storage tube wall (element t); [0044]; The prior art teaches wherein b can range between 1.0mm – 6.0mm and t can range between 0.3mm to 0.6mm).
The advantage of having the axial length of the straight surface being greater than the thickness of the ink storage tube is to make the pen more stable when writing. Therefore, it would been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Kyoko to incorporate the teachings of Ikai to provide a writing instrument refill with an axial length of the straight surface being greater than the thickness of the ink storage tube is to make the pen more stable when writing.
Regarding claim 3, in addition to the limitations in claim 2, Kyoko does not explicitly disclose;
wherein a conditional expression A ≤ t is satisfied provided that a radial depth of the circumferential swaged part is A.
Ikai ‘323 is silent regarding the conditional expression A ≤ t being satisfied, provided that a radial depth of the circumferential swaged part is A. Instead, Ikai ‘323 teaches a circumferential swaged part (see annotated Fig. 4 below) that has a radial depth A and a thickness of the ink storage tube t. Applicant has not disclosed that having A ≤ t solves any stated problem or is for any particular purpose. Moreover, it appears that the invention of Ikai ‘323 would perform equally well having the radial depth of its circumferential swaged part, A, being less than the thickness of the ink storage tube, t. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Ikai ‘323 such that, A, the radial depth of the circumferential swaged part, is less than or equal to t, the thickness of the ink storage tube, because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Ikai ‘323.
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Regarding claim 4, in addition to the limitations in claim 1, Kyoko does not explicitly disclose;
wherein a conditional expression 1 ≤ W/t ≤ 4 is satisfied provided that an axial length of the straight surface is W and a thickness of the ink storage tube is t.
However, Ikai ‘323 teaches;
wherein a conditional expression 1 ≤ W/t ≤ 4 is satisfied provided that an axial length of the straight surface is W and a thickness of the ink storage tube is t. ([0044]; The prior art teaches wherein b (length of the straight surface) can range between 1.0mm – 6.0mm and t (thickness of the ink storage tube) can range between 0.3mm to 0.6mm. Given these values one of ordinary skill in the art can satisfy the conditional expression 1 ≤ W/t ≤ 4.)
The advantage of having the axial length of the straight surface divided by the thickness of the ink storage tube being greater than 1 and less than 4 is to make the pen more stable when writing. Therefore, it would been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Kyoko to incorporate the teachings of Ikai to provide a writing instrument refill with an axial length of the straight surface being greater than the thickness of the ink storage tube is to make the pen more stable when writing.
Regarding claim 5, in addition to the limitations in claim 1, Kyoko does not explicitly disclose;
wherein an axial length W of the straight surface is 0.8mm or less.
Ikai ‘323 is silent regarding wherein an axial length W of the straight surface is 0.8mm or less.
Instead, Ikai ‘323 teaches wherein an axial length of the straight surface is between 1.0mm and 6.0mm (Fig. 4, element b; [0044]). It would have been an obvious matter of design choice to a person of ordinary skill in the art to make the axial length of the straight surface of Ikai to be 0.8mm or less because applicant has not disclosed making the axial length of the straight surface 0.8mm or less provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the invention of Ikai ‘323 and applicant’s invention, to perform equally well with either the axial length of the straight surface taught by Ikai ‘323 or the claimed 0.8mm or less because both length dimensions would perform the same function of preventing ink leakage. Therefore, it would have been prima facie obvious to modify Ikai ‘323 to obtain the invention as specified in claim 5 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Ikai ‘323. MPEP 2144.04(IV)(A).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kyoko et al (US 20060075924 in view of Ikai (US 20210178803), in further view of Onuki et al (US 20210095144) and in further view of Hayakawa et al (US 20210252903).
Regarding claim 6, in addition to the limitation in claim 1, Kyoko does not explicitly disclose;
wherein the pen tip holder has a plurality of annular protrusions disposed to be aligned in the axial direction on the rear end side outer circumferential surface of the pen tip holder, and
the circumferential swaged part is disposed between the plurality of annular protrusions in the axial direction.
However, Hayakawa teaches;
wherein the pen tip holder (Fig. 5, 5) has a plurality of annular protrusions (Fig. 5, 53 & 63) disposed to be aligned in the axial direction on the rear end side outer circumferential surface of the pen tip holder, and
the circumferential swaged part is disposed between the plurality of annular protrusions in the axial direction (see annotated Fig. 5 below; a section of the swaged part is disposed between the plurality of annular protrusions).
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The advantage of having annular protrusions on the rear end side outer circumferential surface of the pen tip holder, and having circumferential swaged part is disposed between the plurality of annular protrusions in the axial direction is to ensure the swaged part is secured in place and does not move. Therefore, it would been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Kyoko to incorporate the teachings of Hayakawa to provide a writing instrument refill having annular protrusions on the rear end side outer circumferential surface of the pen tip holder, and having circumferential swaged part is disposed between the plurality of annular protrusions in the axial direction is to ensure the swaged part is secured in place.
Regarding claim 7, in addition to the limitation in claim 6, Kyoko does not explicitly disclose;
wherein the circumferential swaged part is disposed apart from the annular protrusions in the axial direction.
However, Hayakawa teaches;
wherein the circumferential swaged part is disposed apart from the annular protrusions in the axial direction (Fig. 5 shows the annular protrusions disposed apart from the circumferential swaged part).
The advantage of having the circumferential swaged part is disposed apart from the annular protrusions is to allow the swaged part to be removed. Therefore, it would been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Kyoko to incorporate the teachings of Hayakawa to provide a writing instrument refill having annular protrusions disposed apart from the swaged part so that the swaged part can be removed.
Regarding claim 8, in addition to the limitations in claim 1, Kyoko does not explicitly disclose;
wherein the pen tip holder has an annular protrusion disposed on the rear end side outer circumferential surface of the pen tip holder, and
the circumferential swaged part is disposed to overlap the annular protrusion when viewed from a radial direction.
However, Hayakawa teaches,
wherein the pen tip holder (Fig. 5, 5) has an annular protrusion (Fig. 5, 53 & 63) disposed on the rear end side outer circumferential surface of the pen tip holder, and
the circumferential swaged part is disposed to overlap the annular protrusion when viewed from a radial direction (Fig. 5 shows the circumferential swaged part overlapping the annular protrusion).
The advantage of an annular protrusion disposed on the rear end side outer circumferential surface of the pen tip holder, and the circumferential swaged part is disposed to overlap the annular protrusion when viewed from a radial direction is to secure the swaged part in place and cover the annular protrusion for a smoother look. Therefore, it would been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Kyoko to incorporate the teachings of Hayakawa to provide a writing instrument refill having an annular protrusion disposed on the rear end side outer circumferential surface of the pen tip holder, and the circumferential swaged part is disposed to overlap the annular protrusion to secure the swaged part in place and cover the annular protrusion for a smoother look.
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kyoko et al (US 20060075924 in view of Ikai (US 20210178803), in further view of Onuki et al (US 20210095144) and in further view of Hayakawa (US 20220009271).
Regarding claim 9, in addition to the limitation in claim 1 Kyoko does not explicitly disclose,
wherein the ink is a thermochromic ink.
However, Hayakawa teaches;
wherein the ink is a thermochromic ink ([0001]).
The advantage having thermochromic is that the ink can be erased using heat from friction. This allows for edits to be made if a mistake is made while writing. Therefore, it would been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Kyoko to incorporate the teachings of Hayakawa to provide a writing instrument refill having thermochromic ink so that the ink can be erased via friction and heat.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure. Takagi et al (US 20190047316) is directed to the state of the art of writing instruments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYANT K HUYNH whose telephone number is (571)272-8630. The examiner can normally be reached Monday - Friday 7:30-5:00.
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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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/B.K.H./Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754
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