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 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bezuhly (US 9815317) in view of Miguel (US 6551265) and Garcia (US 8303202).
Regarding claim 1, Bezuhly teaches a reusable, surgical felt tip marker (Figs. 6A-6F) comprising: an external portion comprising: an outer casing (601); a felt ink reservoir (641); and an advancing rotary; and an internal portion comprising: an internal screw (603); an advancement track (611); and a felt ink reservoir advancing base (630).
Bezuhly does not teach a cap; or that the felt ink reservoir comprises one or more indicator notches; or that the reservoir advancing base permits advancing of the felt ink reservoir so the felt ink reservoir can be cut at the indicator notches to allow multiple use of the felt ink reservoir on one or more subjects.
Miguel teaches a surgical marker with a cap (20).
Garcia teaches a felt ink reservoir (23) that comprises one or more ‘indicator’ notches (30).
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 provided the marker of Bezuhly with a cap as taught by Miguel for the purpose of protecting the felt ink reservoir from contaminants (Miguel, col. 2, ll. 63-67).
Furthermore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have provided the felt ink reservoir of Bezuhly with one or more indicator notches as taught by Garcia for the purpose of enabling a user to draw multiple lines at once (Garcia, Fig. 4).
It is noted that the combination of Bezuhly, Miguel, and Garcia is capable of performing the claimed function “the reservoir advancing base permits advancing of the felt ink reservoir so the felt ink reservoir can be cut at the indicator notches to allow multiple use of the felt ink reservoir on one or more subjects.” The reservoir advancing base of Bezuhly is capable of moving the felt ink reservoir such that the next section, with new indicator notches is exposed and capable of being cut.
Regarding claim 4, the combination of Bezuhly, Miguel, and Garcia teaches the reusable, surgical felt tip marker of claim 1, wherein said advancing rotary further comprises a user operated tip rotator (610) mounted in the cap of a hollow body.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bezuhly, Miguel, and Garcia as applied to claim 1 above, and further in view of Patrick (US 4538612).
Regarding claim 2, the combination of Bezuhly, Miguel, and Garcia teaches the reusable, surgical felt tip marker of claim 1, but does not teach that the felt ink reservoir is sterile for use in surgical procedures.
Patrick teaches a sterile marker for use in surgical procedures (col. 3, ll. 17-23).
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 to have sterilized the felt ink reservoir of Bezuhly for the purpose of preventing the introduction of contaminants to surgery.
Regarding claim 3, the combination of Bezuhly, Miguel, and Garcia teaches the reusable, surgical felt tip marker of claim 1, but does not teach that it is included within sterile packaging.
Patrick teaches providing a marker in sterile packaging (16) for the purpose of preventing the introduction of contaminants to surgery.
Allowable Subject Matter
Claims 5-7 are allowed.
Response to Arguments
Applicant's arguments filed 12 December 2025 have been fully considered but they are not persuasive.
Applicant argues that the present amendment overcomes the 103 rejection of claim 1.
Examiner disagrees. As noted in the rejection above, the combination of Bezuhly, Garcia, and Miguel teach all the structures necessary to perform the new functional limitation.
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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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.
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/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754