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 Objections
Claims 1 and 2 are objected to because of the following informalities: in claim 1, line 5, “the paper base material” should be “the first paper base material” to keep the phrasing consistent; in claim 1, lines 7-8, “the intermediate layer comprises a second paper base material, on one surface or both surfaces of the second paper base material” should be “the intermediate layer comprises a second paper base material, the second paper base material comprising, on one surface or both surfaces of the second paper base material”; in claim 2, lines 3-4, “on one surface the second paper base material” should be “on one surface of the second paper base material”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 recites “a third paper base material of the outer layer” which contradicts claim 1, which recites that the outer layer comprises “the paper base material”, referring back to the first paper base material of the inner layer. Claim 4 therefore does not include the limitation of claim 1 that the outer layer comprises the same paper base material as the inner layer. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa (WO 2021/014698 A1) in view of Simmons (WO 2011/061473).
Regarding claim 1, Ichikawa teaches an ink storage member (10) configured for writing implements, the ink storage member comprising: an inner layer (1) comprising a first paper base material (); an intermediate layer (1, See Fig. 3) formed on an outer surface of the inner layer; and an outer layer (3) comprising the paper base material () formed on an outer surface of the intermediate layer, wherein the intermediate layer comprises a second paper base material ().
Ichikawa does not teach that on one surface or both surfaces of the second base material: an aluminum oxide film layer, a silica film layer formed from a low molecular weight silane and/or a silica film layer formed from a polysilazane. Instead, Ichikawa teaches aluminum foil formed on one surface of the second base material.
Simmons teaches the use of aluminum oxide (pg. 3, third paragraph).
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 aluminum foil of Ichikawa with aluminum oxide as taught by Simmons, wherein doing so would merely be a matter of selecting an alternative material recognized in the art (Simmons, pg. 3, third paragraph).
Regarding claim 2, the combination of Ichikawa and Simmons teaches the ink storage member of claim 1, wherein the intermediate layer comprises the aluminum oxide film (Simmons, pg. 3, third paragraph) on one surface of the second base material (Ichikawa, Fig. 3).
Regarding claim 4, the combination of Ichikawa and Simmons teaches the ink storage member of claim 1, wherein at least one of the first paper base material of the inner layer and a third base material of the outer layer is glassine paper (Ichikawa, pg. 3, eighth paragraph).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa and Simmons as applied to claim 1 above, and further in view of Fushimi (US 11426763).
Regarding claim 3, the combination of Ichikawa and Simmons teaches the ink storage member according to claim 1, wherein the inner layer and the intermediate layer, or the intermediate layer and the outer layer are bonded to each other (Ichikawa, with acrylic adhesive, see Example 1), but does not teach that the layers are bonded with an olefin-based adhesive or a silane coupling agent.
Fushimi teaches a laminate with a silane coupling agent (col. 5, ll. 27-37).
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 acrylic adhesive of Ichikawa with the silane coupling agent of Fushimi, wherein doing so would merely be a matter of simple substitution of one known adhesive for another with predictable results.
Response to Arguments
Applicant's arguments filed 20 March 2026 have been fully considered but they are not persuasive.
Applicant’s arguments against the Han reference are moot because the current rejection does not rely on the Han reference for any rejection.
Applicant’s arguments against the Fushimi reference are not persuasive because Fushimi is not relied upon for the rejection of claim 1.
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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/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754
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