DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/9/26 has been entered.
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-5, 7-9, 12-13, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 16 recites that the cured material is selected from “resins… polymers… thermosetting polymers, thermoplastic polymers”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1 and 16 recites the broad recitation resins and or polymers (which is a resin), and the claim also recites thermosetting polymers and thermoplastic polymers which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3-5, 7-9, 12-13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ayusawa et al. (JP 03-023030) in view of CN 105693254.
Regarding claims 1, 5, 9, and 12, Ayusawa discloses a composition comprising solid particles of CaO, SiO, MgO, and Al2O3 (Abstract and refractory powders: alumina-silica chamotte powder, mullite powder, alumina powder, magnesia powder, and/or silica sand powder), shale powder, which is known to comprise of iron oxide, and magnesium sulphate. Further, Ayusawa discloses that the solid particles sizes are 100 µm or less. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549. Ayusawa further discloses that the composition forms a water disintegrable curable material casting mold, therefore, discloses the casting mold as claimed (Title, Industrial Application Field).
Furthermore, although Ayusawa discloses a water-disintegrable casting mold comprising of SiO and Al2O3 as set forth above, however, is silent on the concentration.
CN ‘254 discloses a water-soluble ceramic mold core comprising of aluminum oxide and silicon oxide, wherein the concentration is 0.1-30% (claim 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ayusawa’s SiO and Al2O3 to be within the concentration as claimed, as suggested by CN ‘254, in order to enhance mechanical strength, water solubility, and environment friendliness (Abstract).
While Ayusawa discloses a water-disintegrable casting mold with the structure and material as claimed that is used to cast metal or alloys, Ayusawa fails to explicitly disclose that the water-disintegrable casting mold can be used or hold a casted cured material of concrete, resins/polymers, or plaster as presently claimed. Although Ayusawa may serve different purpose from that disclosed by Applicant, the claims do not structurally or compositionally distinguish over the structure that by Ayusawa taking in view of CN ‘254. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ayusawa in view of CN ‘254 water-disintegrable casting mold that can hold any material to cast including claimed concrete, resins/polymers, and/or plaster to be multiuse water-disintegrable casting mold.
Additionally, the limitation(s) “the casting mold that can hold a casted cured material within it” is an intended use limitation and is not further limiting in so far as the structure of the product is concerned. Note that “in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art.” In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963). See MPEP § 2111.02." In the instant case, Ayusawa discloses the exact composition for a cured casting mold, wherein it explicitly disclose that is water-soluble, thereby the mold of Ayusawa would be capable to be used in any material including concrete, resin/polymers, and/or plaster. As such, since Ayusawa has been shown by the Examiner to meet all the structural limitations of the product claim (casting mold comprising the exact composition as well as having the function of being water-soluble), the burden has shifted to the Applicants to other amend the claims to structurally (or compositionally) define over Ayusawa, or provide evidence that the structure of Ayusawa's casting mold can’t meet the functional limitation (can hold the specific casting mixture) set forth in proposed claim. As set forth in MPEP 2114, while features of an apparatus may be recited as either structurally or functionally, claims directed to an apparatus MUST be distinguished from prior art in terms of structure (or composition of such structure) rather than function.
Regarding claims 3-4 and 7-8, Ayusawa discloses 10-80 wt.% of CaO and less than 70 wt.% of MgO (Means for Solving the Problem). Ayusawa and the claims differ in that Ayusawa does not teach the exact same proportions as recited in the instant claims.
However, one of ordinary skill in the art before the effective filing date of the claimed invention would have considered the invention to have been obvious because the compositional proportions taught by Ayusawa overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
Regarding claim 13, given that there is no structural difference between casting mold and a mold-liner, Ayusawa discloses a mold-liner as claimed.
Regarding claim 16, Ayusawa discloses a method of forming a casting mold as claimed (Means for Solving the Problem and examples).
Response to Arguments
Applicant's arguments filed 2/22/26 have been fully considered but they are not persuasive.
Applicant argues that Ayusawa’s cast mold would not be obvious to be used for curing materials of concrete, resins/polymers, and/or plaster. This is because Ayusawa cast mold is used to cast metal and alloys. This has been found unpersuasive. This is because the claimed invention is not directed to a casted cured material made from a mold, but rather is directed to solely a water-soluble casting mold. Claims 1 and 16 recites mold that "CAN hold a casted cured material" (emphasis added). The specific materials that possibly "can" hold by the claimed invention mold does not give patentable weight, especially since the claimed invention is directed to a casting mold itself. Additionally, the limitation(s) “the casting mold that can hold a casted cured material within it” is an intended use limitation and is not further limiting in so far as the structure of the product is concerned. Note that “in apparatus, article, and composition claims, intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art.” In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963). See MPEP § 2111.02." In the instant case, Ayusawa discloses the exact composition for a cured casting mold, wherein it explicitly disclose that is water-soluble, thereby the mold of Ayusawa would be capable to be used in any material including concrete, resin/polymers, and/or plaster. As such, since Ayusawa has been shown by the Examiner to meet all the structural limitations of the product claim (casting mold comprising the exact composition as well as having the function of being water-soluble), the burden has shifted to the Applicants to other amend the claims to structurally (or compositionally) define over Ayusawa, or provide evidence that the structure of Ayusawa's casting mold can’t meet the functional limitation (can hold the specific casting mixture) set forth in proposed claim. As set forth in MPEP 2114, while features of an apparatus may be recited as either structurally or functionally, claims directed to an apparatus MUST be distinguished from prior art in terms of structure (or composition of such structure) rather than function.
Therefore, while Ayusawa may serve different purpose from that disclosed by Applicant, the claims do not structurally or compositionally distinguish over the structure that by Ayusawa taking in view of CN ‘254. Thus, arguments in regarding functionally of the Ayusawa is not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785