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) 1, 2, 5, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan (CA 2764616).
Regarding claim 1, Chan teaches a multipurpose writing implement comprising: a writing instrument (pencil) having a body with an outer wall, and a ruler (A) releasably attached to the writing instrument, the ruler having a body with a longitudinal axis and an inner wall, a recess (Fig. 8A) formed in the outer wall of the body and configured to accommodate the ruler body, wherein the inner wall of the ruler body substantially corresponds to a shape of the recess and an outer wall of the ruler body is substantially flush with the outer wall of the writing instrument body when the ruler is attached to the writing instrument (Fig. 7B).
Chan does not teach that the ruler is fully detachable from the writing instrument. Instead, Chan teaches a tether to keep the ruler and writing implement linked.
It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have omitted the tether of Chan for the purpose of enabling a user to move the ruler and writing implement farther apart. It has been held that eliminating a member and thereby eliminating its function is an obvious expedient. See In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
Regarding claim 2, Chan teaches the multipurpose writing implement according to claim 1, wherein the ruler body comprises a cross-section shape selected from circular, elliptical, and polygonal with sharp or rounded corners (circular, see Fig. 9C).
Regarding claim 5, Chan teaches the multipurpose writing implement according to claim 1, wherein the ruler comprises a first longitudinal edge and a second longitudinal edge, the first and second longitudinal edges extending substantially parallel to the longitudinal axis of the ruler (Figs. 9A and 9C).
Regarding claim 6, Chan teaches the multipurpose writing implement according to claim 5, wherein the outer wall of the ruler body extending between the first and second longitudinal edges extends more than 180 degrees about the longitudinal axis (see annotated Fig. 9C below, showing the longitudinal axis and the edges at more than a 180 degree angle).
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Claim(s) 3, 8, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan as applied to claims 1 and 5 above, and further in view of Min (KR 200394335 Y1).
Regarding claim 3, Chan teaches the multipurpose writing implement according to claim 1, but does not teach that a portion of the recess does not accommodate the ruler body when the ruler is attached to the writing instrument, wherein the portion of the recess is configured to accommodate a user's finger to apply force to a portion of the ruler to disengage the ruler from the writing instrument.
Min teaches a portion (15) of a recess does not accommodate a body (16) when the ruler is attached to the writing instrument, wherein the portion of the recess is configured to accommodate a user's finger to apply force to a portion of the ruler to disengage the ruler from the writing instrument.
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 modified the device of Chan such that a portion of the recess does not accommodate the ruler body when the ruler is attached to the writing instrument, wherein the portion of the recess is configured to accommodate a user's finger to apply force to a portion of the ruler to disengage the ruler from the writing instrument as taught by Min for the purpose of enabling a user to more easily remove the ruler from the writing implement.
Regarding claim 8, Chan teaches the multipurpose writing implement according to claim 1, wherein the ruler body comprises an elastic material (plastic or metal, pg. 5, ll. 26-28).
Chan does not teach that the ruler body is configured to deform when pressed onto the body of the writing instrument.
Min teaches a body configured to deform when pressed onto the body of the writing instrument (Fig. 4).
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 modified the device of Chan such that the ruler body was configured to deform when pressed onto the body of the writing instrument as taught by Min, wherein doing so would merely be a matter of substituting one connection between the writing implement and the ruler for another with predictable results.
Regarding claim 9, Chan teaches the multipurpose writing implement according to claim 1, but does not teach that the ruler is configured to be attached to the writing instrument body by deformation force alone.
Min teaches a body (16) that is configured to be attached to the writing instrument body by deformation force alone (Fig. 4).
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 modified the device of Chan such that the ruler is configured to be attached to the writing instrument body by deformation force alone as taught by Min, wherein doing so would merely be a matter of substituting one connection between the writing implement and the ruler for another with predictable results.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan as applied to claim 1 above, and further in view of Junkins (WO 2004/041547).
Regarding claim 4, Chan teaches the multipurpose writing implement according to claim 1, but does not teach that a portion of the recess comprises a chamfered edge configured to engage a portion of the ruler when a longitudinal force is applied to the ruler relative to the writing instrument to detach the ruler from the writing instrument.
Junkins teaches a portion (120A) of a recess (120) comprises a chamfered edge configured to engage a portion of the ruler when a longitudinal force is applied to the ruler relative to the writing instrument to detach the ruler from the writing instrument.
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 modified the device of Chan such that a portion of the recess comprises a chamfered edge configured to engage a portion of the ruler when a longitudinal force is applied to the ruler relative to the writing instrument to detach the ruler from the writing instrument as taught by Junkins wherein doing so would merely be a matter of simple substitution of one recess shape for another with predictable results.
Claim(s) 7, 10-14, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan as applied to claim 5 above, and further in view of Dietz (US 7101103).
Regarding claim 7, Chan teaches the multipurpose writing implement according to claim 5, but does not teach that a linear distance between the first and second longitudinal edges of the ruler is smaller than a maximum linear distance between two opposing sides of the ruler inner wall at its widest portion.
Dietz teaches a tubular member (26) wherein a linear distance between the first and second longitudinal edges of the member is smaller than a maximum linear distance between two opposing sides of the member inner wall at its widest portion (Fig. 3).
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 modified the ruler of Chan such that a linear distance between the first and second longitudinal edges of the ruler is smaller than a maximum linear distance between two opposing sides of the ruler inner wall at its widest portion as taught by Dietz, wherein doing so would merely me a matter of using a known tube shape that can attach to a writing implement (Diet col. 3, ll. 55-63).
Regarding claim 10, Chan teaches a multipurpose writing implement comprising: a writing instrument (Fig. 8) having a body with an outer wall; and a ruler (A) releasably attached to the writing instrument, the ruler having a body with a longitudinal axis and an inner wall substantially corresponding to a shape of at least a portion of the outer wall of the writing instrument (Fig. 7); wherein the ruler body comprises an elastic material (plastic or metal, pg. 5, ll. 26-28).
Chan does not teach that the ruler body is configured to deform when pressed onto the body of the writing instrument such that the ruler is attached to the instrument body by deformation force or that the inner wall of the ruler body extends along more than fifty percent of a circumference of the outer wall of the writing instrument body when the ruler is attached to the writing instrument.
Dietz teaches a body (26) configured to deform when pressed onto the body of the writing instrument such that the body is attached to the instrument body by deformation force (Dietz col. 3, ll. 51-63) and wherein the inner wall of the ruler body extends along more than fifty percent of a circumference of the outer wall of the writing instrument body when the ruler is attached to the writing instrument (Fig. 3).
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 modified the device of Chan such that the ruler body was configured to deform when pressed onto the body of the writing instrument such that the ruler is attached to the instrument body by deformation force and wherein the inner wall of the ruler body extends along more than fifty percent of a circumference of the outer wall of the writing instrument body when the ruler is attached to the writing instrument as taught by Dietz, wherein doing so would merely be a matter of substituting one connection between the writing implement and the ruler for another with predictable results.
Regarding claim 11, the combination of Chan and Dietz teaches the multipurpose writing implement according to claim 10, wherein the ruler body comprises a cross-section shape selected from circular, elliptical, and polygonal with sharp or rounded corners (Chan, circular, see Fig. 9).
Regarding claim 12, the combination of Chan and Dietz teaches the multipurpose writing implement according to claim 10, wherein the ruler comprises a first longitudinal edge and a second longitudinal edge (Chan, Fig. 9), the first and second longitudinal edges extending substantially parallel to the longitudinal axis of the ruler.
Chan does not teach that the first and second longitudinal edges are disposed at an angle of less than 180 degrees about the longitudinal axis relative to one another.
Dietz teaches a body (26) similar to the ruler of Chan, wherein the first and second longitudinal edges are disposed at an angle of less than 180 degrees about a longitudinal axis relative to one another (Fig. 3).
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 modified the ruler of Chan such that the first and second longitudinal edges are disposed at an angle of less than 180 degrees about the longitudinal axis relative to one another as taught by Dietz, wherein doing so would merely be a matter of substituting one connection between the writing implement and the ruler for another with predictable results.
Regarding claim 13, the combination of Chan and Dietz teaches the multipurpose writing implement according to claim 10, wherein the writing instrument body comprises a recess (Chan, Fig. 8) formed in the outer wall of the body and configured to accommodate the ruler body, wherein an outer wall of the ruler body is substantially flush with the outer wall of the writing instrument body when the ruler is attached to the writing instrument (Chan, Fig. 7).
Regarding claim 14, the combination of Chan and Dietz teaches the multipurpose writing implement according to claim 13, wherein the ruler comprises a first longitudinal edge and a second longitudinal edge, the first and second longitudinal edges extending substantially parallel to the longitudinal axis of the ruler (Chan, Fig. 9).
Dietz teaches a linear distance between the first and second longitudinal edges is smaller than a maximum linear distance between two opposing sides of the recess at its widest portion when the ruler is positioned in the recess (Fig. 3).
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 modified the device of Chan such that a linear distance between the first and second longitudinal edges is smaller than a maximum linear distance between two opposing sides of the recess at its widest portion when the ruler is positioned in the recess as taught by Dietz, wherein doing so would merely be a matter of substituting one connection between the writing implement and the ruler for another with predictable results.
Regarding claim 17, the combination of Chan and Dietz teaches the multipurpose writing implement according to claim 10, wherein the ruler is configured to be attached to the writing instrument body by deformation force alone (Dietz, col. 3, ll. 51-63).
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 modified the device of Chan such that the ruler is configured to be attached to the writing instrument body by deformation force alone as taught by Dietz, wherein doing so would merely be a matter of substituting one connection between the writing implement and the ruler for another with predictable results.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan and Dietz as applied to claim 10 above, and further in view of Min.
Regarding claim 15, the combination of Chan and Dietz teaches the multipurpose writing implement according to claim 13, but does not teach that a portion (Min, 15) of the recess does not accommodate the ruler body when the ruler is attached to the writing instrument, wherein the portion of the recess is configured to accommodate a user's finger to apply force to a portion of the ruler to disengage the ruler from the writing instrument.
Min teaches a portion (15) of a recess that does not accommodate the ruler body when the ruler is attached to the writing instrument, wherein the portion of the recess is configured to accommodate a user's finger to apply force to a portion of the ruler to disengage the ruler from the writing instrument
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 modified the device of Chan such that a portion of the recess does not accommodate the ruler body when the ruler is attached to the writing instrument, wherein the portion of the recess is configured to accommodate a user's finger to apply force to a portion of the ruler to disengage the ruler from the writing instrument as taught by Min for the purpose of enabling a user to more easily remove the ruler from the writing implement.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan and Dietz as applied to claim 13 above, and further in view of Junkins.
Regarding claim 16, the combination of Chan and Dietz teaches the multipurpose writing implement according to claim 13, but does not teach that a portion of the recess comprises a chamfered edge configured to engage a portion of the ruler when a longitudinal force is applied to the ruler relative to the writing instrument to detach the ruler from the writing instrument.
Junkins teaches a portion (120A) of a recess (120) comprises a chamfered edge configured to engage a portion of the ruler when a longitudinal force is applied to the ruler relative to the writing instrument to detach the ruler from the writing instrument.
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 modified the device of Chan such that a portion of the recess comprises a chamfered edge configured to engage a portion of the ruler when a longitudinal force is applied to the ruler relative to the writing instrument to detach the ruler from the writing instrument as taught by Junkins wherein doing so would merely be a matter of simple substitution of one recess shape for another with predictable results.
Response to Arguments
Applicant's arguments filed 10 September 2025 have been fully considered but they are not persuasive.
Applicant argues that Chan does not disclose that the ruler is fully detachable as required by claim 1.
In response, it is noted that one of ordinary skill would recognize removing the tether of Chan to allow a user to move the ruler farther away from the pen as an obvious expedient as stated above.
Applicant argues that Min does not teach the features of claims 10 and 17.
In response it is noted that Min is no longer relied upon to reject claims 10 or 17. The newly cited Dietz reference is relied upon to teach these features.
Applicant argues that neither Chan nor Min teaches that the outer wall extends more than 180 degrees about the longitudinal axis.
In response, it is noted that whether or not Chan teaches this limitation depends on the location of the longitudinal axis. The claims do not limit the location of the longitudinal axis. If it is placed as shown in annotated Fig. 9C above, then Chan does teach the limitations of claim 6.
Applicant argues that neither Chan nor Min teaches that the linear distance between the first and second longitudinal edges of the ruler is smaller than a maximum linear distance between two opposing sides of the ruler inner wall at its widest portion.
In response, it is noted that the newly cited Dietz reference is relied upon to teach this feature.
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.
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/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754