DETAILED CORRESPONDENCE
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 has been entered.
Response to Arguments
Applicant's arguments have been fully considered.
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 102 OR 35 USC § 101 Double Patenting
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 6-8, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Siltamaeki (US 20240075658 A1)
OR
The claims are provisionally rejected under 35 U.S.C. 101 as claiming the same invention of copending Application No. 18/261844 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented (see MPEP 804, 822, and 1504)
Note: Siltamaeki is the same invention as the present application, however, the Siltamaeki disclosure is NOT commonly assigned; and there does not appear to be assignment of record showing that they are commonly owned1.
If the applications are not owned by the same entity and there is no joint research agreement, then the claim is rejected by a prior art rejection under 35 U.S.C. 102 instead of double patenting; if they are commonly owned, then they are rejected by double patenting.
In reference to claim 1, Siltamaeki discloses an identical invention (see Claims 5-6). Claim 5 discloses a mold but not specifically for a shoe, however, the meaning of the term mold when read in light of the specification clearly encompasses shoes.
In reference to claim 2-3, 6-8, and 20, Siltamaeki discloses an identical invention (see Claims 3 and 21).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1, 6, 8, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boardman (US 20140000043 A1) and OFFICIAL NOTICE
In reference to claim 1, Boardman discloses a mold (“last” [P0093]; a last is a mold); comprising: “Susceptor particles may be integrally mixed with component materials, such as plastics” (P0094) and “the method may include applying an electromagnetic field to the susceptor material, causing induction heating of the susceptor material and molding the at least one footwear component into a predetermined shape using the induction heating.”
Susceptor particles are the same as filler -- as claimed.
Boardman does not disclose the plastic is polyester or the amount of susceptors, however, Official Notice is taken that the claimed plastics are known material for forming lasts and that it would be obvious to optimize the amount of the susceptor in order to tune the rate of heating a heated part (the last/mold).
In reference to claim 6, Boardman disclose the plastic can be a foam (“the last may be formed include plastics, wood, rigid foams,” [P0092])
In reference to claim 8, the claim does not require the particles to absorb or transmit the EMF, so even though the wavelength is limited, it does not imply any structural relationship. Adapted to heat the cavity could mean the mold absorbs the EMF or does not absorb the EMF.
In reference to claim 20, notice is taken that boron nitride is a known susceptor filler suitable for the same intended use and would be an obvious integration into the mold of Boardman.
Claim 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fiberglasssupply (NPL 20202).
In reference to claim 1-3, Fiberglasssupply discloses a method of making a mold for sports equipment (e.g., surfboard3 shown in photo) by laying up fiber and then applying a resin (“To make a fiberglass mold from an existing part, we will normally mount the part on a backing board of some sort…. to begin constructing the fiberglass mold. The materials typically used for this are: gelcoat, polyester resin (iso tooling resin), fiberglass cloth or fiberglass mat…”)
Fiberglasssupply teaches glass fiber in Fiberglasssupply; and Fiberglasssupply also discloses carbon fiber. Glass in Fiberglasssupply is a metal oxide.
This reads on the claim except that Fiberglasssupply does not quantify the amount of filler (fibers) with respect to polymer (resin), however, Fiberglasssupply generally indicates the amounts should be optimized. Thus, Fiberglasssupply alone meets the claim.
Heating by EMF as recited in the claim is not limited to a particular wavelength-material interaction and thus does not structurally limit the claim. EMF could be applied to the mold such that heating occurs or heating does not occur (e.g., microwaves heat some materials and UV light heats other materials).
Thus, heating via EMF as claimed is an intended use. The intended use has no bearing on a device claim except that the prior art must be capable of the same use. In this case, the prior art device and the claimed device have the same structure (a mold made of the claimed plastic and the claimed filler). Claims to a device must be distinguished by structure.
In reference to claim 8, the claim does not require the particles to absorb or transmit the EMF, so even though the wavelength is limited, it does not imply any structural relationship. Adapted to heat the cavity could mean the mold absorbs the EMF or does not absorb the EMF.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/ Examiner, Art Unit 1744
1 See MPEP 2154 (common ownership) and 2156 (joint research agreements)
2 http://www.fiberglasssupply.com/Miscellaneous/How_To_Resources/Fiberglass_Mold_Making_an_Intr/fiberglass_mold_making_an_introduction_to_plugs.html
3 The company also sells surfboard blanks.
Prosecution Insights