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 .
Response to Arguments
Applicant’s amendments to the specification has been received and the objection of the specification has been withdrawn.
Applicant’s amendments to the claims have been received and the 112(d) rejection of claim 12 has been withdrawn.
Applicant's arguments filed August 21, 2026 have been fully considered but they are not persuasive. The rejection of the previous claim branch of claim 4 was maintained and applied to the current amended claim 1. The new claims included in the amendment necessitated a new ground of rejection. Please see examiner’s responses and new ground of rejection below.
Regarding claim 1, examiner has carefully considered applicant’s argument that due to the amendments the 102(a)(1) rejections of Caffey and Russell no longer applies. While the amendments to claim 1 have overcome the previous prior art of the 102(a)(1) rejections, the 103 rejections of claim 4 are sufficient to reject claim 1.
Regarding claim 4, examiner has carefully considered applicant’s argument that Deats is unrelated to the pen holder of the current application and a person having ordinary skill in the art would not be motivated to make the cited modifications.
In response to applicant's argument that the drafting instrument of Deats is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the drafting instrument was described as a tool that can serve the function of a caliper or a compass. Both of these items are related to the pen holder of the current application because they are both holders for writing, tapered, or pointed instruments having a clip where one instrument can move independent of the other.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Deats teaches their tool is superior to others because it can be easily carried upon a person. It would be obvious for one skilled in the art to use a clip to secure their tool to themselves or another object for convenience.
Regarding claim 4, examiner has carefully considered applicant’s argument that Gerhard is unrelated to the pen holder of the current application and a person having ordinary skill in the art would not be motivated to make the cited modifications.
In response to applicant's argument that the pen holder of Gerhard is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, although the pen holder of Gerhard does not have two utensil holding channels, it is still a pen holder. The main invention of both applications being a pen holder is enough to link them as analogous art.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Gerhard teaches that the clip make it easy for a user to attach the pen to their clothes, a bag, etc. One of ordinary skill in the art would understand the convenience of being able to attach a utensil to another object, especially in a convenient one-handed fashion.
Regarding claim 5, examiner has carefully considered applicant’s arguments that Chao describes a singular pen with a hollow interior instead of a system of multiple base bodies as disclosed in the current application.
Argument are found not persuasive because both devices are pens with receiving receptacles. The current application did not show the criticality of the refill holder or how it is formed or attached to the coupling element. The coupling element of Russel could easily fit refills within it as taught by Chao and is therefore an obvious reference over the current application.
Election/Restrictions
Newly submitted claims 14, 19 and 21 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The elected invention was for a pen holder for storing a first pen or marker and a second pen or marker.
Claim 14 is for a method of assembly of the pen holder, which is separate from the apparatus of a pen holder.
Claim 19 includes a ramp-shaped latching edge which was not included in the elected invention and the criticality of this element was not described in the disclosure.
Claim 21 includes a third base body and a third pen which was not included in the elected invention.
The addition of this claim required a serios search burden because it would not be found in the current assigned classes.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 14, 19, and 21 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Specification
The amendment filed August 21, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: a third base body which extend is a third longitudinal direction and delimits a third receiving space for a third pen. Applicant claims that support for claim 21 was in paragraph 168 of the original specification, however paragraph 168 does not mention a third base body or pen.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 21 requires a third base body having a receiving space for a third pen, wherein the third base body is connectable to the first or second base body. Applicant claims that support for claim 21 was in paragraph 168 of the original specification, however paragraph 168 does not mention a third base body, pen, or receiving space. The third longitudinal extension (L3) mentioned discloses a third and different length of the pen base body, not any details about an additional base body or pen connectable to the other base bodies.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 13, 16, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deats (US 0515075 A).
Regarding claim 1, Deats discloses a pen holder (combination drafting instrument) for storing a first pen or marker (left 6, lead pencil), and a second pen or marker (right 6, lead pencil), the pen holder (combination drafting instrument) comprising: a first base body (1, companion clip terminal) which extends in a first longitudinal direction (figure 4) and delimits a first receiving space for at least partially receiving the first pen (left 6, lead pencil), and a second base body (2, companion clip terminal) which extends in a second longitudinal direction (figure 4) and delimits a second receiving space for at least partially receiving the second pen (right 6, lead pencil), wherein the first base body (1, companion clip terminal) is connected or connectable to the second base body (2, companion clip terminal) via a coupling element (5, thumb screw), and wherein the coupling element (5, thumb screw) has a fastening clip (8, spring clasp) which is provided and designed to reversibly fix the pen holder to a user.
Regarding claim 13, Deats discloses a coupling element (5, thumb screw) for fixing thereto the first base body (1, companion clip terminal) of the pen holder (combination drafting instrument) and the second base body (2, companion clip terminal) of the pen holder (combination drafting instrument).
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Annotated Figure 2 of Deats
Regarding claim 16, Deats discloses the coupling element (5, thumb screw) has an elastic coupling portion (annotated figure 2) comprising at least one elastic tubular shell-type portion that extends radially about more than 180 degrees (figure 2), and wherein the elastic coupling portion (annotated figure 2) has an insertion gap (annotated figure 2) which can be elastically widened (page 1, lines 49-59) to insert the first base body (1, companion clip terminal) or the second base body (2, companion clip terminal) into the coupling element (5, thumb screw).
Regarding claim 20, Deats discloses the coupling element (5, thumb screw) comprises a first coupling element portion (annotated figure 2) and a second coupling element portion (annotated figure 2) which are screw-connected to each other (page 1, lines 45-59).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 6-8, 10, 12, 13, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Russell (US 20080044217 A1) in view of Deats (US 0515075 A).
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Annotated Figure 1 of Russell
Regarding claim 1, Russell discloses a pen holder (10, writing device) for storing a first pen or marker (28, writing implement), and a second pen or marker (30, writing implement), the pen holder (10, writing device) comprising: a first base body (24, member) which extends in a first longitudinal direction (annotated figure 1) and delimits a first receiving space (25, aperture) for at least partially receiving the first pen (28, writing implement), and a second base body (26, member) which extends in a second longitudinal direction (annotated figure 1) and delimits a second receiving space (27, aperture) for at least partially receiving the second pen (30, writing implement), wherein the first base body (24, member) is connected or connectable to the second base body (26, member) via a coupling element (12, elongated member portion).
Russell does not explicitly disclose the pen holder (10, writing device) having a fastening clip on it.
Regarding claim 1, Deats teaches a pen holder (combination drafting instrument), wherein the coupling element (1, 2, companion clips) has a fastening clip (8, spring clasp).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to use the teaching of Deats to modify the elongated member portion (12) of the writing device (10) Russell to include a spring clasp (8) as taught by Deats. One would be motivated to make this modification in order to have a dual writing instrument that can be easily clipped to a surface or an object for convenience (page 2, lines 26-31 of Deats).
Regarding claim 2, Russell/Deats discloses that the pen holder (10, writing device of Russell) is formed in one piece or in several parts ([0013] of Russell).
Regarding claim 6, Russell/Deats discloses that the first base body (24, member of Russell) is designed with a first coupling portion (20, side of Russell), and the second base body (26, member of Russell) is designed with a second coupling portion (22, side of Russell), and the coupling element (12, elongated member portion of Russell) is provided and designed to engage the first coupling portion (20, side of Russell) and the second coupling portion (22, side of Russell).
Regarding claim 7, Russell/Deats discloses that the first base body (24, member of Russell) has a first central fiber extending in the first longitudinal direction (annotated figure 1 of Russell) and the second base body (26, member of Russell) has a second central fiber extending in the second longitudinal direction (annotated figure 1 of Russell), the first central fiber being oriented at an angle or askew to the second central fiber.
Examiner has deemed the central fibers from the reference as having a non-parallel angle to each other based on the figures.
Regarding claim 8, Russell/Deats discloses that the first base body (24, member of Russell) includes, at a first base body end, a first insertion opening (annotated figure 1 of Russell) for inserting the first pen (28, writing implement of Russell) into the first receiving space (25, aperture of Russell) of the first base body (24, member of Russell), and the second base body (26, member of Russell) includes, at a second base body end, a second insertion opening (annotated figure 1 of Russell) for inserting the second pen (30, writing implement of Russell) into the second receiving space (27, aperture of Russell) of the second base body (26, member of Russell), the first insertion opening and the second insertion opening being arranged offset against each other in the first longitudinal direction and/or in the second longitudinal direction (annotated figure 1 of Russell).
Regarding claim 10, Russell/Deats discloses that the first base body (24, member of Russell) includes a closed writing tip receptacle (9, 10, guard points of Deats) for receiving, a first writing tip ([0021] of Russell) of the first pen (28, writing implement of Russell) and the second base body (26, member of Russell) includes an open writing tip receptacle (44, tip of Russell).
Examiner notes Deats teaches further rationale for using the guard points within its disclosure (page 1, line 100 – page 2, line 17).
Regarding claim 12, Russell/Deats discloses a pen holder (10, writing device of Russell) for storing a plurality of pens or markers (28, writing implement of Russell), the pen holder (10, writing device of Russell) comprising: a plurality of base bodies (24, 26, members of Russell) each of which extends in a longitudinal direction associated with the specific base body (annotated figure 1 of Russell) and each of which delimits a receiving space (25, 27, aperture of Russell) associated with the respective base body (24, 26, members of Russell) for at least partially receiving an associated pen (28, 30, writing implement of Russell), wherein at least two of the plurality of base bodies (24, 26, members of Russell) are connected or connectable to each other a coupling element (12, elongated member portion of Russell), and wherein the coupling element (12, elongated member portion of Russell) has a fastening clip (8, spring clasp of Deats) which is provided and designed to reversibly fix the pen holder (10, writing device of Russell) to a user (page 2, lines 26-31 of Deats).
Regarding claim 13, Russell/Deats discloses a coupling element (12, elongated member portion of Russell) for fixing thereto the first base body (24, member of Russell) of the pen holder (10, writing device of Russell) and the second base body (26, member of Russell) of the pen holder (10, writing device of Russell).
Regarding claim 22, Russell/Deats discloses the angle between the first central fiber (first longitudinal direction annotated figure 1 of Russell) and the second central fiber (second longitudinal direction annotated figure 1 of Russell) is in a range of 1 to 30° (figure 3 of Russell).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Russell/Deats as applied to claim 1 above, and further in view of Chao (US 6270274 B1).
Regarding claim 5, Russell/Deats discloses a pen holder (10, writing device of Russell), having a first pen (28, writing implement of Russell), a second pen (30, writing implement of Russell), and a coupling element (12, elongated member portion of Russell).
Russell/Deats does not explicitly disclose the coupling element (12, elongated member portion of Russell) having a refill receptacle.
Regarding claim 5, Chao teaches a pen (1) having a refill receptacle (11, pen barrel) for receiving items such as glasses (column 2, lines 25-27).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to modify the opening (18) of the elongated member portion (12) of Russell to be used at least partially for storage as taught by Chao. One would be motivated to make this modification in order to store essential items such as glasses within the pen barrel (11) where they are in close reach, as taught by Chao (column 1, lines 12-16 and 20-38). The examiner notes that if there is sufficient space for a pair of glasses there is sufficient space for refills for the first or second pen or spare tips to be stored instead.
Claims 1, 9, 11, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Russell (US 20080044217 A1) in view of Gerhard (DE 202015100395 U1).
Regarding claim 1, Russell discloses a pen holder (10, writing device) for storing a first pen or marker (28, writing implement), and a second pen or marker (30, writing implement), the pen holder (10, writing device) comprising: a first base body (24, member) which extends in a first longitudinal direction (annotated figure 1) and delimits a first receiving space (25, aperture) for at least partially receiving the first pen (28, writing implement), and a second base body (26, member) which extends in a second longitudinal direction (annotated figure 1) and delimits a second receiving space (27, aperture) for at least partially receiving the second pen (30, writing implement), wherein the first base body (24, member) is connected or connectable to the second base body (26, member) via a coupling element (12, elongated member portion).
Russell does not explicitly disclose the pen holder (10, writing device) having a fastening clip on it.
Regarding claim 1, Gerhard teaches a pen holder (1), having a fastening clip (28, mounting bracket).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to use the teaching of Gerhard to modify the form of each of the members (24, 26) of Russell to mimic the pen holder (1) as taught by Gerhard. One would be motivated to make this modification in order to clip the instrument onto a surface or object such as the user’s clothing ([0065] of Gerhard) as well as to secure a writing utensil into the holder in a more secure way ([0005] of Gerhard).
Regarding claim 9, Russell/Gerhard discloses that the first insertion opening and/or the second insertion opening (annotated figure 1 of Russell) has or is an insertion funnel ([0060] of Gerhard), wherein a cross-sectional opening of the insertion funnel widens from the first and/or second receiving space (figure 4 of Gerhard).
Regarding claim 11, Russel/Gerhard discloses that in the first receiving space (25, aperture of Russell) a first fixing spring (22, leaf spring of Gerhard) is formed and/or in the second receiving space (27, aperture of Russell) a second fixing spring (22, leaf spring of Gerhard) is formed to non-positively fix ([0063] of Gerhard) the first pen (28, writing instrument of Russell) in the first receiving space (25, aperture of Russell) and/or the second pen (30, writing instrument of Russell) in the second receiving space (27, aperture of Russell).
Regarding claim 17, Russel/Gerhard discloses the fastening clip (28, mounting bracket of Gerhard) comprises barbs (38, blocking elements of Gerhard) which are provided and designed to get caught (page 9, paragraph 3).
Claims 1 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Wisser (US 1950960 A) in view of Deats (US 0515075 A).
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Annotated Figure 3 of Wisser
Regarding claim 1, Wisser discloses a pen holder (14, flexible median part) for storing a first pen or marker (pencil), and a second pen or marker (compass pin), the pen holder (14, flexible median part) comprising: a first base body (15, pencil feed point) which extends in a first longitudinal direction (annotated figure 3) and delimits a first receiving space for at least partially receiving the first pen (pencil), and a second base body (16, holder) which extends in a second longitudinal direction (annotated figure 3) and delimits a second receiving space for at least partially receiving the second pen (compass pin), wherein the first base body (14, flexible median part) is connected or connectable to the second base body (16, holder) via a coupling element (18, 19, adjustable connecting pieces).
Wisser does not explicitly disclose the pen holder holding two pencils or having a fastening clip which is provided and designed to reversible fix the pen holder to a user.
Regarding claim 1, Deats teaches a pen holder (combination drafting instrument), for storing a first pen or marker (6, lead pencil), and a second pen or marker (6, lead pencil) wherein the coupling element (1, 2, companion clips) has a fastening clip (8, spring clasp) which is provided and designed to reversibly fix the pen holder to a user.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to use the teaching of Deats to modify the flexible writing implement of Wisser to have a fastening clip and hold two pencils. One would be modified to have two pencils in the flexible writing implement of Wisser to have a back up writing utensil in case one runs out of lead while still being able to use the device as a compass (page 1, line 100 – page 2, line 6 of Deats). One would be modified to have a clip on the flexible writing implement of Wisser in order to have a writing instrument or compass that can be easily clipped to a surface or an object for convenience (page 2, lines 26-31 of Deats).
Regarding claim 15, Wisser/Deats discloses the coupling element (18, 19, adjustable connecting pieces of Wisser) can be non-destructively detached (page 1, lines 86-93 of Wisser) from the first base body (15, pencil feed point of Wisser) and from the second base body (16, holder of Wisser) without tools.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Russell in view of Deats as applied to claim 1 above, and further in view of McDonnell et al (US 6425703 B1).
Regarding claim 18, Russell/Deats discloses a pen holder (10, writing device of Russell) having a first base body for receiving a first pen (28, writing implement of Russell) the first base body (24, member of Russell) and a second base body (26, member of Russell) for receiving a second pen (30, writing implement).
Russell/Deats does not explicitly disclose the first and/or second base bodies having a sealing portion which is provided and designed to make radially circumferentially sealing contact with the respective pen inserted in the receiving space, wherein the sealing portion can make sealing contact with at least two different pen geometries having different diameters.
Regarding claim 18, McDonnell discloses a pen holder (50, markers) having a base body (52, body), wherein the base body (52, body) has a sealing portion (130, inner cap) which is provided and designed to make radially circumferentially sealing contact (column 3, lines 63-67) with the respective pen (106, nib) inserted in the receiving space (138, passage), wherein the sealing portion (130, inner cap) can make sealing contact with at least two different pen geometries having different diameters (column 5, lines 5-14).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, to use the teaching of McDonnell to modify the inner tube of the members (24, 26) of Russell. One would be modified to make this modification to have a writing device (10 of Russell) that has a better hold on the writing implements (28, 30 of Russell) used within in it as taught by McDonnell.
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 KARA BROOKS whose telephone number is (571)272-9484. The examiner can normally be reached M-F: 8am-5pm.
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, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.J.B./ Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677
