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 .
Status of Claims and Application
This non-final rejection on the merits is in response to request for continued examination including remarks and amendments received by the office on 05 August 2026. Claims 38, 2-6, 8, 11-15, 18-22, and 39 are pending. Claims 38 and 39 are amended. No claims are newly added. No claims are newly cancelled.
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 38, 2-6, 8-15, 18-22 and 39 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as 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.
Regarding claim 38, the claim establishes a step of “removing the pattern having the inserts fixed therein from the mold” in line 10 of the claim. The claim then recites in the last line of the claim “removing at least one of the inserts”. The scope of the last line of the claim is unclear because the claim already requires removal of the inserts from the mold fixed in the solid form of the removable material. The context of the last clause of the claim is unclear because the claim is not written with steps in order of linear operation. For example in line 10 the pattern is removed from the mold which necessarily requires the pattern being in solid form in order to fix the inserts and then the claim recites moving the mold with the removable material in liquid form. It is unclear if applicant intends the last clause of the claim to mean removing the insert from something other than the mold; however, this is not in the claim. While it is present in applicant’s remarks, for the purposes of examination the clause will be interpreted to include removal from the part after removal from the mold.
Claims 2-6, 8-15, and 18-22 depend upon claim 38 and are therefore also rejected.
Claim 39 is indefinite for the same reason as claim 38 as it also recites the redundant removal step.
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) 38 and 2-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2017/0128792 to Hope et al. (‘792 hereafter) in view of U.S. Patent Application Publication 2017/0282415 to Ismert et al. (hereafter ‘415) and U.S. Patent 5,651,932 to Byron Butler (‘932 hereafter) in view of case law rationale.
Regarding claim 38, ‘792 teaches a method of forming a device of composite material, the method comprising: providing a mold having an internal space forming a cavity with an inner surface, the cavity having a shape corresponding to an inner shape of the device to be formed (paragraph 0071); placing inserts at one or more pre-defined positions along the inner surface (Fig 7 item 110); holding the inserts at the one or more positions (paragraph 0071); introducing removable material into the cavity of the mold (Fig 7 item 114) to form a pattern having the inserts fixed therein when the removable material is in solid form (Fig 7 item 114); removing the pattern having the inserts fixed therein from the mold (paragraph 0075) and that the removable material is a wax (paragraph 0041, at least). ‘792 does not teach the claimed fill ratio of removable material or the introduction of gas or the removal of at least one insert.
In the same field of endeavor, insert molding, ‘415 teaches introducing gas into the removable material present in the mold and pressurizing the removable material present in the mold with a pressure difference between an outside of the pattern that is formed and a hollow space within the pattern the gas filling the cavity and pressurizing the removable material in the mold such that the removable material covers an entirety of the surface of the cavity (paragraphs 0071 and 0063); moving the mold to completely coat the inner surface of the mold with the removable material in liquid form; and solidifying the removable material in the mold (paragraph 0013). ‘792 in view of ‘415 does not specifically teach the claimed ranges of pressures or the removal of an insert. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to select from among the claimed pressure range since it has been held that finding optimum or workable ranges of art-recognized result effective variables involves only routine skill in the art. The ordinary artisan would have been motivated to select from within the claimed range for the benefit of providing adequate pressure to old the still cooling part in place taking into account the liquid resin viscosity and not damaging the nascent part when the material is in a still molten state as taught by cited paragraph 0071 of ‘415. ‘792 in view of ‘415 does not teach the claimed fill ratio or that at least one of the inserts is removed.
In the same field of endeavor, insert molding, ‘932 teaches the removal of at least one insert from a pattern (C6L57-C7L11) for the benefit of forming articles with undercut features. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘792 in view of ‘415 with those of ‘932 for the benefit of forming molded articles with undercut features.
‘792 in view of ‘415 and ‘932 does not explicitly recite the ratio of the mold filled with the removable material. The ordinary artisan at the time of effective filing would have been motivated to select a filling ratio of from 40-99% since it has been held that finding optimum or workable ranges of art recognized result effective variables involves only routine skill in the art. The ordinary artisan would have been motivated to select from the claimed range for the purpose of controlling the size of the insert piece relative to the cast piece.
Regarding claim 2, ‘792 teaches the method wherein the holding the inserts comprises holding the inserts through the application of a vacuum, using sliders, functional elements, or using magnets (paragraph 0072).
Regarding claim 3, ‘792 teaches the method wherein the inserts comprise at least one of magnetic material and metal (paragraph 0055).
Regarding claim 4, ‘792 teaches the method wherein at least one of the inserts is shaped to form a functional component or is a functional component of the device (paragraph 0056).
Regarding claim 5, ‘792 teaches the method wherein the pattern of removable material is formed in an injection molding process or a wax casting process (Fig 7 item 114).
Regarding claim 6, ‘792 teaches the method a wherein the removable material is introduced into the cavity in liquid form (paragraph 0071).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘792 in view of ‘415 and ‘932 as applied to claim 38 above, and further in view of U.S. Patent 5,728,329 to Milko G. Guergov (‘329 hereafter).
Regarding claim 8, ‘792 in view of ‘415 does not teach gas introduction prior to introducing molding material. In the related art of injection molding, ‘329 teaches the method comprising applying a pressure in the cavity prior to the introduction of the removable material into the cavity (Claims 3 and 4) for the benefit of reducing internal stresses in the molded article. It would have been obvious to one possessed of ordinary skill in the art at the time of invention to combine the teachings of ‘792 in view of ‘415 with those of ‘329 for the benefit of forming an article with inserts and reduced stresses in the molding material. ‘792 in view of ‘415 in view of ‘329 does not explicitly recite the claimed pressure range. One possessed of ordinary skill in the art at the time of effective filing would have been motivated to select from within the claimed ranges since it has been held that finding optimum or workable values of art recognized result effective variables involves only routine skill in the art. One possessed of ordinary skill in the art at the time would have been motivated to select the claimed ranges for the benefit of reducing stress in the removable material as taught by ‘329.
Claim(s) 11-15, 18-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘792 in view of ‘415 and ‘932 as applied to claim 38 above, and further in view of IT 2016 00105326 A1 to Volpato et al. (‘326 hereafter) and made of record per applicant disclosure.
Regarding claim 11, ‘792 in view of ‘415 does not teach fiber reinforcement. In the same field of endeavor, insert molding, ‘326 teaches the method comprising covering the pattern having the inserts with one or more layers of one or more types of fiber material (STEP D, applicant provided abstract) for the benefit of constructing a light but strong material. One possessed of ordinary skill in the art at the time of effective filing of the claimed invention would have been motivated to combine the teachings of ‘792 in view of ‘415 with those of ‘326 for the benefit of forming light and strong parts with insert materials.
Regarding claim 12, ‘792 in view of ‘415 does not teach placing a fiber coated precursor into a second mold. In the same field of endeavor, insert molding, ‘326 teaches the method comprising placing the pattern having inserts and covered with the one or more layers of fiber material into a further mold (step C, applicant provided abstract) for the benefit of constructing a light but strong material. One possessed of ordinary skill in the art at the time of effective filing of the claimed invention would have been motivated to combine the teachings of ‘792 in view of ‘415 with those of ‘326 for the benefit of forming light and strong parts with insert materials.
Regarding claim 13, ‘792 in view of ‘415 does not teach a heating step of the further mold. In the same field of endeavor, insert molding, ‘326 teaches the method comprising heating the further mold to first, second or third temperatures in first, second or third temperature ranges (step e, applicant provided abstract) for the benefit of constructing a light but strong material. One possessed of ordinary skill in the art at the time of effective filing of the claimed invention would have been motivated to combine the teachings of ‘792 in view of ‘415 with those of ‘326 for the benefit of forming light and strong parts with insert materials.
Regarding claim 14, ‘792 does not teach introducing resin to the further mold. In the same field of endeavor, insert molding, ‘326 teaches the method comprising introducing a resin into the further mold prior to or during the heating of the further mold to the first temperature (step f, Applicant provided abstract) for the benefit of constructing a light but strong material. One possessed of ordinary skill in the art at the time of effective filing of the claimed invention would have been motivated to combine the teachings of ‘792 in view of ‘415 with those of ‘326 for the benefit of forming light and strong parts with insert materials.
Regarding claim 15, ‘792 does not teach curing the resin. In the same field of endeavor, insert molding, ‘326 teaches the method comprising curing the resin in the further mold to form the device, wherein the curing comprises at least one of application of heat and UV light (step f, applicant provided abstract) for the benefit of constructing a light but strong material. One possessed of ordinary skill in the art at the time of effective filing of the claimed invention would have been motivated to combine the teachings of ‘792 in view of ‘415 with those of ‘326 for the benefit of forming light and strong parts with insert materials.
Regarding claim 18, ‘792 in view ‘415 does not teach a resin. In the same field of endeavor, insert molding ‘326 teaches the method wherein the resin is one of a one-component resin, a two-component resin comprising a hardener, and a multi-component resin comprising one or several hardeners (page 12, line 6 of the original patent document) for the benefit of constructing a light but strong material. One possessed of ordinary skill in the art at the time of effective filing of the claimed invention would have been motivated to combine the teachings of ‘792 in view of ‘415 with those of ‘326 for the benefit of forming light and strong parts with insert materials.
Regarding claim 19, ‘792 in view of ‘415 does not teach resin as claimed. In the same field of endeavor, insert molding, ‘326 teaches the method wherein the resin comprises a resin on an epoxy basis, a resin on a polyurethane basis, a resin on a cyanate ester or another basis suitable for injection or infusion (page 12, line 6 of the original patent document) for the benefit of constructing a light but strong material. One possessed of ordinary skill in the art at the time of effective filing of the claimed invention would have been motivated to combine the teachings of ‘792 in view of ‘415 with those of ‘326 for the benefit of forming light and strong parts with insert materials.
Regarding claim 20, ‘792 in view of ‘415 does not teach a fiber as claimed. In the same field of endeavor, insert molding, ‘326 teaches the method wherein the one or more layers of one or types of fiber material comprise carbon fibers, glass fibers, basalt fibers, natural fibers, aramid fibers, polyester fibers in dry condition or as prepreg (page 1, around line 20 of the original patent document) for the benefit of constructing a light but strong material. One possessed of ordinary skill in the art at the time of effective filing of the claimed invention would have been motivated to combine the teachings of ‘792 in view of ‘415 with those of ‘326 for the benefit of forming light and strong parts with insert materials.
Regarding claim 21, ‘792 teaches the method comprising removing the removable material from the device (Fig 7 item 134).
Regarding claim 22, ‘792 does not teach a third temperature. In the same field of endeavor, insert molding, ‘326 teaches the method wherein the heating the further mold to the first, second or third temperatures in the first, second or third temperature ranges includes heating the further mold to the third temperature (step e, applicant provided abstract) for the benefit of constructing a light but strong material. One possessed of ordinary skill in the art at the time of effective filing of the claimed invention would have been motivated to combine the teachings of ‘792 with those of ‘326 for the benefit of forming light and strong parts with insert materials.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘792 in view of ‘329 and ‘932 in view of case law rationale.
Regarding claim 39, ‘792 teaches a method of forming a device of composite material, the method comprising: providing a mold having an internal space forming a cavity with an inner surface, the cavity having a shape corresponding to an inner shape of the device to be formed (paragraph 0071); placing inserts at one or more pre-defined positions along the inner surface (Fig 7 item 110); holding the inserts at the one or more positions (paragraph 0071); introducing removable material into the cavity of the mold (Fig 7 item 114) to form a pattern having the inserts fixed therein when the removable material is in solid form (Fig 7 item 114); removing the pattern having the inserts fixed therein from the mold; removing the pattern having the inserts fixed therein from the mold (paragraph 0074) ) and that the removable material is a wax (paragraph 0041, at least). ‘792 does not teach the claimed fill ratio of removable material or the introduction of gas or the removal of an insert.
In the same field of endeavor, insert molding, ‘329 teaches introducing gas into the removable material present in the mold and pressurizing the removable material present in the mold with a pressure difference between an outside of the pattern that is formed and a hollow space within the pattern (Claims 3 and 4); The gas filling the cavity and pressurizing the removable material in the mold such that the removable material covers an entirety of a surface of the cavity (C6L51-C6L54); applying a pressure in the cavity prior to the introduction of the removable material into the cavity (Claims 3 and 4) for the benefit of reducing internal stresses in the molded article. It would have been obvious to one possessed of ordinary skill in the art at the time of invention to combine the teachings of ‘792 with those of ‘329 for the benefit of forming an article with inserts and reduced stresses in the molding material.
‘792 in view of ‘329 does not specifically teach the claimed ranges of pressures. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to select from among the claimed pressure range since it has been held that finding optimum or workable ranges of art-recognized result effective variables involves only routine skill in the art. The ordinary artisan would have been motivated to select from within the claimed range for the benefit of providing adequate pressure to old the still cooling part in place taking into account the liquid resin viscosity.
‘792 in view of ‘329 does not explicitly recite the claimed pressure ranges. One possessed of ordinary skill in the art at the time of effective filing would have been motivated to select from within the claimed ranges since it has been held that finding optimum or workable values of art recognized result effective variables involves only routine skill in the art. One possessed of ordinary skill in the art at the time would have been motivated to select the claimed ranges for the benefit of reducing stress in the removable material as taught by ‘329.
‘792 in view of ‘329 does not explicitly recite the ratio of the mold filled with the removable material. The ordinary artisan at the time of effective filing would have been motivated to select a filling ratio of from 40-99% since it has been held that finding optimum or workable ranges of art recognized result effective variables involves only routine skill in the art. The ordinary artisan would have been motivated to select from the claimed range for the purpose of controlling the size of the insert piece relative to the cast piece.
‘792 in view of ‘329 does not teach the removal of an insert. In the same field of endeavor, insert molding, ‘932 teaches the removal of at least one insert from a pattern (C6L57-C7L11) for the benefit of forming articles with undercut features. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘792 in view of ‘329 with those of ‘932 for the benefit of forming molded articles with undercut features.
Response to Arguments
Applicant argues that the previously applied prior art rejection does not teach and cannot be modified to teach the claims as instantly amended. Examiner agrees that the newly added limitation is not taught by the previously applied prior art rejection. Consequently, an updated search was conducted and newly identified relevant prior art was found and applied above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John P Robitaille whose telephone number is (571)270-7006. The examiner can normally be reached Monday-Friday 8:30AM-6:00PM.
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, Galen Hauth can be reached on (571) 270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JPR/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743
Prosecution Insights