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) 16, 18-21, 23-25, 27-32 and 34-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lins (US 8188175) in view of Gouerec (US 2022/0048312).
Regarding claim 16, Lins teaches a pencil (col. 1, ll. 11-15), comprising: a lead; and a shaft, wherein the lead is arranged in the shaft in a fixed manner against displacement (col. 1, ll. 11-15), wherein the shaft comprises a shaft base material that comprises the following components: 60 to 75 wt.-% organic filler(s) (col. 2, line 2); 15 to 30 wt.-% binder mixture (col. 2, line 1); 0.2 to 6 wt.-% other additives (col. 2, line 4); 1 to 10 wt.-% wax (col. 2, line 5); and 0 to 4 wt.-% colorants (col. 2, line 6), wherein the wax is a mixture of a first high-melting wax and a second wax that is low-melting compared to the first wax (amide wax and stearic acid, see col. 3, ll. 59-62), wherein the filler is at least one of the group consisting of wood flour, wood fibers and cellulose (col. 4, ll. 14-16).
Lins does not teach that the binder mixture comprises PLA and a second binder selected from the group consisting of PBS and copolymers of PBS, wherein the PLA is present in the binder mixture in a weight ratio to the second binder in a range from 10:1 to 1:10.
Gouerec teaches a binder mixture of PLA and PBS (¶0013), wherein the PLA is present in the binder mixture in a weight ratio to the second binder in a range from 10:1 to 1:10 (¶0013).
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 binder mixture of Lins with a binder mixture of PLA and PBS like that taught by Gouerec, for the purpose of making the pencil more biodegradable (Gouerec, ¶0006 and 0019)
Regarding claim 18, the combination of Lin and Gouerec teaches the pencil according to claim 16, wherein the other additives are adhesion promoters or stabilizers (Lins, col. 2, line 4).
Regarding claim 19, the combination of Lin and Gouerec teaches the pencil according to claim 16, wherein the colourant is a pigment (Lins, col. 2, line 58).
Regarding claim 20, the combination of Lins and Gouerec teaches the pencil according to claim 16, wherein the shaft base material is unfoamed (Lins, col. 5, ll. 45-57).
Regarding claim 21, the combination of Lins and Gouerec teaches the pencil according to claim 16, wherein the filler is largely or completely organic (Lins, col. 2, ll. 2-3).
Regarding claim 23, the combination of Lins and Gouerec teaches the pencil according to claim 16, wherein the shaft base material comprises 65 to 74 wt.-% of filler(s) (Lins, col. 3, line 45).
Regarding claim 24, the combination of Lins and Gouerec teaches the 24. (New)The pencil according to claim 23, wherein the shaft base material comprises 67 to 73 wt.-% of filler(s) (Lins, col. 3, line 45).
Regarding claim 25, the combination of Lins and Gouerec teaches the pencil according to claim 16, wherein the binder mixture is from 15 to 25 wt.-% of the shaft base material (Lins, col. 3, line 44).
Regarding claim 27, the combination of Lins and Gouerec teaches the pencil according to claim 16, wherein the other additives comprise at least one adhesion promoter that is constituted as MAH grafted polymer (Lins, col. 4, ll. 23-25).
Regarding claim 28, the combination of Lins and Gouerec teaches the pencil according to claim 27, wherein the at least one adhesion promoter is constituted as polyester (Gouerec, ¶0032).
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 used the polylactic acid grafted by maleic anhydride taught by Gouerec as the adhesion promoter for the purpose of selecting an adhesion promoter known to work well with PLA and PBS.
Regarding claim 29, the combination of Lins and Gouerec teaches the pencil according to claim 27, wherein the at least one adhesion promoter is selected from the group consisting of: MAH grafted PLA, MAH grafted PBS, MAH grafted PBSA, and mixtures thereof (Gouerec, ¶0032).
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 used the polylactic acid grafted by maleic anhydride taught by Gouerec as the adhesion promoter for the purpose of selecting an adhesion promoter known to work well with PLA and PBS.
Regarding claim 30, the combination of Lins and Gouerec teaches the pencil according to claim 27, wherein the shaft base material has a content of the at least one adhesion promoter in a range of 0.2 to 6 wt.-% related to the shaft base material (Lins, col. 3, line 47).
Regarding claim 31, the combination of Lins and Gouerec teaches the pencil according to claim 30, wherein the shaft base material has a content of the at least one adhesion promoter in a range of 1 to 3 wt.-% related to the shaft base material (Lins, col. 3, line 47).
Regarding claim 32, the combination of Lins and Gouerec teaches the pencil according to claim 16, wherein the shaft base material comprises 2 to 6 wt.-% of wax (Lins, col. 3, line 49).
Regarding claim 34, the combination of Lins and Gouerec teaches the pencil according to claim 33, wherein in the mixture of the first wax and the second wax, the respective waxes are present in a range of 1 to 5 wt.-% related to the shaft base material (Lins, col. 3, line 49).
Regarding claim 35, the combination of Lins and Gouerec teaches the pencil according to claim 34, wherein in the mixture of the first wax and the second wax, the respective waxes are present in a range of 2 to 4 wt.-% related to the shaft base material (Lins, col. 3, line 49).
Regarding claim 36, the combination of Lins and Gouerec teaches the pencil according to claim 16, wherein the shaft base material comprises the colorant in a range of 0 to 3 wt.-% related to the shaft base material (Lins, col. 3, line 50).
Regarding claim 37, the combination of Lins and Gouerec teaches the pencil according to claim 36, wherein the shaft base material comprises the colorant in a range of 1 to 2 wt.-% related to the shaft base material (Lins, col. 3, line 50).
Regarding claim 38, the combination of Lins and Gouerec teaches the pencil according to claim 16, wherein the pencil is one of: a writing pencil, a painting pencil; and a cosmetic pencil (Lins, col. 1, ll. 11-15).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lins and Gouerec as applied to claim 16 above, and further in view of Meyer (US 12275840).
Regarding claim 17, the combination of Lins and Gouerec teaches the pencil according to claim 16, but does not teach that the second binder is PBSA.
Meyer teaches that PBSA has similar mechanical properties to PBS and better biodegradability (col. 1, ll. 53-59).
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 PBS of Gouerec with PBSA for the purpose of increasing the biodegradability of the product as taught by Meyer (Meyer, col. 1, ll. 53-59).
Response to Arguments
Applicant's arguments filed 17 December 2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant notes that Lins does not teach PLA or PBS as binders, and that Gouerec teaches a different weight % of binders and that Gouerec does not teach cellulose as a filler, but does not address the combination that relies upon Gouerec for PLA and PBS and relies upon Lins for the weight % of binder and the use of cellulose.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754
Prosecution Insights