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.
Claims 1 and 3 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.
Each claim recites “a writing tip” (“the marking element configured to protrude from a writing tip” in lines 3-4 of claim 1; “the stick configured to protrude from a writing tip” in lines 3-4 of claim 3). It is unclear what structure is required for the writing tip in these embodiments, especially considering that the marking element/stick must be configured to “protrude from” the writing tip. Examiner notes that a “writing tip” is only described or illustrated as a structure in the pen embodiment (see Paragraphs 0020-0021 and Fig. 2), in which it appears to refer to a structure attached to the ink tube for enabling flow of ink (e.g., a ballpoint tip, according to Examiner’s best understanding). Additionally, a “lead guide” is described as a component of the barrel cap in the pencil embodiment, but it is not specifically described as a “writing tip” (see Paragraph 0026 and Figs. 6-7).
The claims will be interpreted according to Examiner’s best understanding.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Foght (US 2006/0260158).
Regarding claim 1, Foght discloses a writing instrument (10, see the Abstract; Figs. 1-2) comprising
a first barrel (20) comprising an outer diameter (outer surface of 20),
a marking element (e.g., in the ink sub-assembly or pencil sub-assembly; Paragraph 0013; not shown in the figures) housed within the first barrel (Paragraph 0016), the marking element configured to protrude from a writing tip (see 14; Paragraph 0015),
a barrel cap (16) that removably mates with a proximal end of the first barrel (threaded engagement with 20; see Fig. 2), the barrel cap comprising an opening for the writing tip (see 14; Paragraph 0015; Fig. 2), the barrel cap comprising a diameter bigger than an inside diameter of a second barrel (barrel cap matches outer diameter of second barrel at 18; see Fig. 1),
the inside diameter of the second barrel bigger than the outer diameter of the first barrel (see chamber between 20 and 22; Paragraphs 0020-0021), the second barrel configured to slide over the first barrel (Paragraph 0018),
a stop (26) located on a distal end of the first barrel (Paragraph 0016), the stop comprising a diameter bigger than the inside diameter of the second barrel (stop matches outer diameter of second barrel; Paragraph 0024; see Figs. 1-2),
wherein the second barrel can slide over the first barrel when the barrel cap is removed and be confined between the stop and the barrel cap when the barrel cap is mated to the first barrel (22 secured between 18 and 26; Paragraphs 0022-0023).
Regarding claims 2 and 3, as noted above regarding claim 1, Foght discloses a writing instrument that may contain an ink sub-assembly or a pencil sub-assembly (see Paragraph 0013) containing a marking element. Claim 2 differs from claim 1 only in that the writing instrument is further defined as a “pen” (in line 1) comprising “an ink tube housed within the first barrel, the ink tube in fluid communication with a writing tip” (in lines 3-4). Claim 3 differs from claim 1 only in that the writing instrument is further defined as a “pencil” (in line 1) comprising “a stick of pencil lead housed within the first barrel, the stick configured to protrude from a writing tip” (in lines 3-4).
Examiner notes that the instant application defines a “marking element” to encompass both an ink tube and a stick of pencil lead (see Paragraph 036 of the specification). Additionally, it is clear that one having ordinary skill in the art would understand Foght to disclose a device that is intended for use with an ink tube or a stick of pencil lead (see Paragraph 0013, referring to both an ink sub-assembly and a mechanical pencil sub-assembly as being well known in the art).
Examiner further notes some confusion regarding the structure of the “writing tip” as claimed in claims 1 and 3 (see above rejection of claims 1 and 3 under 35 U.S.C. 112(b)). The ink sub-assembly disclosed by Foght would inherently include an ink tube in fluid communication with a writing tip (such as in a standard ballpoint pen well known in the art), and the mechanical pencil sub-assembly disclosed by Foght would inherently include a stick of pencil lead configured to protrude from a writing tip (such as in a standard mechanical pencil well known in the art), according to Examiner’s best understanding of the claim limitations. Both sub-assemblies would necessarily be compatible with the structure explicitly disclosed by Foght (i.e., any additional structures would be incorporated into or contained by elements 20, 16, and 14).
Thus, the device of Foght anticipates both the “pen” having an ink tube in fluid communication with a writing tip of claim 2, and the “pencil” having a stick of pencil lead configured to protrude from a writing tip, according to Examiner’s best understanding of the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 form.
In particular, Kamamoto et al. (US 2004/0086316) discloses a writing implement having features relevant to the instant claims (e.g., second barrel 10 slides over first barrel 20 and is retained between barrel cap 30 and a stop 40; see Fig. 1). Additionally, the pen of Kobayashi et al. (US 5,709,493; previously cited in IDS dated 8/15/2024) is relevant to at least claim 2 of the instant application, and the pencil of Nakayama et al. (WO 2011/067912) is relevant to at least claims 1 and 3 of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C PATTERSON whose telephone number is (571)270-5558. The examiner can normally be reached M-F 7:30-4:00 CST.
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/MICHAEL C PATTERSON/Examiner, Art Unit 3754
/PAUL R DURAND/Supervisory Patent Examiner, Art Unit 3754 April 7, 2026