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 .
Response to Arguments
Applicant's arguments filed 1/28/2026 have been fully considered but they are not fully persuasive.
The rejection to claim 14 regarding the retaining member not having adequate structural support in the specification is withdrawn. The claim is being interpreted as referring to the “dosing retaining member” described in [0024] having the tongue or groove structure as described.
The rejection under 112(b) to claims 7-10 is withdrawn because the claim now specifies the hardness is Shore A hardness. The claim is objected to because “Shore” should be capitalized to remove any ambiguity.
The rejections under 112(b) to claims 14 and 16 are withdrawn in response to the amendments.
Applicant argues that “the mould part” in claim 1 unambiguously refer to the first and/or second mold parts which are resiliently deformable. Examiner disagrees. The claim recites two possible mold parts that can be deformable, “the first and/or the second” meaning that either of the first or second mold parts are deformable or that both are deformable. When the claims later refer back to “the deformation of the mould part” it is not clear if the claim is referring to only one of the mould parts, and if so which one.
With respect to the rejections of claim 5 and 6 under 112(b), Applicant notes in the remarks that the claims have been amended but claims 5 and 6 are listed as “previously presented.” As explained above with reference to claim 1, it is not clear if “the deformable mould part” is supposed to refer to only one mold part or which one of the mold parts.
Applicant argues regarding the 112(b) rejection of claim 13 that the shrinkage rate is explained in the specification as “the amount of dimensional change.” This is still not clear. Several kinds of shrinkage exist, e.g., thermal shrinkage or drying shrinkage. The claim does not specify what kind of shrinkage or the conditions in which it occurs. Without knowing anything about the shrinkage, the metes and bounds of the claim are unclear.
Regarding the prior art rejection of claim 1, Applicant argues that Höglund does not describe resiliently deformable mold parts because the disclosed plastics and rubber materials are optional materials and are not always resiliently deformable. Examiner disagrees. The broadest reasonable interpretation of “resiliently deformable” would be a material that returns to its original shape after being deformed. Höglund mentions elastic, semi-elastic, and flexible materials to be used as the matrices throughout. Elastic materials and semi-elastic materials do typically return to their original shape after being deformed without adding any additional energy. Therefore, Höglund meets the claim.
Applicant further argues that the elastic materials of Höglund could not be combined with Shepperd because Sheppard applies pressure that would deform the shape of the mold material in Höglund. Examiner disagrees. Höglund is also applying pressure to the matrix molds in the vertical direction just as is done in Sheppard, see Höglund page 6 beginning at line 19 and Figure 1. Since a similar method is successful with the elastic materials in Höglund, a person of skill in the art would expect the materials to also work as used in Sheppard. Additionally, Sheppard does not note that the mold has to be rigid.
Applicant also notes that Höglund does not describe the mold being opened or closed by deformation of the mold part. As noted in the rejection, the method of opening or closing the mold is the intended use of the apparatus. Höglund discloses a flexible or elastic mold which meets the structural limitations of the claim. The mold in Höglund is capable of being open or closed by bending or flexing the mold.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder *”member”) that is coupled with functional language (“operable to assist”) without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “retaining member” as recited in claim 14 which Applicant has noted the retaining member corresponds to the description in [0024] of the dosing retaining member having a male or female part such as a tongue or groove.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 7-10 are objected to because of the following informalities: The claims recite “shore hardness” but “Shore” should be capitalized. Appropriate correction is required.
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 1-16 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 2-16 are rejected as being dependent from claim 1 for the same reasons described above.
Claim 1 recites “the mould part” but it is not clear if this mould part is one of the first or second parts of the mould or an additional part. Since the claim recites both the first “and/or” the second mold parts are deformable, this limitation is unclear because it is not clear which of the mold parts is being referred to or how many mold parts are deformable. This will be interpreted to mean any part.
Claims 5-6 recites the limitation “the deformable mould part.” There is insufficient antecedent basis for this limitation in the claim. It is not clear if this refers to the first and second parts of the mold which are resiliently deformable or “a mould part” which is deformed both as previously recited in claim 1. This will be interpreted to refer to any deformable mold part.
Claim 13 recites a shrink rate but does not describe what the shrink rate is measuring. For example, the shrink rate during the molding process, a shrink rate after the molds themselves have been manufactured, a thermal shrink rate, etc. This will be interpreted to mean any shrinkage at any time.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Sheppard (US 5,433,777) modified by Höglund (WO 2011/056136, see copy provided with the IDS dated 5/9/2025.)
Regarding claim 1, Sheppard meets the claimed, A mould for manufacturing a packing member from a liquid ceramic composition, the mould comprising a first part and a second part, (Shepperd col. 31 lines 18-32 and Figure 9 describe a mold having lower mold half 34 and upper mold half 38) and wherein the first part and/or the second part comprise a plurality of open mould cavities, (Shepperd col. 31 lines 51-61 describes each mold surface of each mold half has mold cavities) wherein the first and second parts are operable to engage to form closed mould cavities, (Shepperd col. 31 lines 51-61 describes the mold cavities are closed when the mold is closed) and wherein the mould is operable to be moved from an open position in which the first and second parts are partially spaced and in which position mould cavities are open, (Shepperd col. 37 line 61 describes the mold is partially open) to a partially closed position in which position some of the mould cavities are closed, and then to a closed position in which position the first and second parts are engaged such that the mould cavities are closed (Shepperd col. 37 lines 61-66 describe the mold moves prom partially open to close which necessarily includes and intermediate state where the mold would be considered partially closed.)
Shepperd does not describe any part of the mold being deformed and does not meet the claimed, wherein the first and/or second mould parts are resiliently deformable or describing opening and closing via deformation and does not meet the claimed, by the deformation of the mould part or by reducing the deformation of the mould part.
Analogous in the field of molds, Höglund meets the claimed, wherein the first and/or second mould parts are resiliently deformable (Höglund page 3 lines 11-14 describes the form matrix, i.e., the mold, is flexible and page 4 line 1 describes semi-elastic, elastic materials are understood to be resiliently deformable.) The limitations which describe opening or closing the mold via deformation of a mold part, by the deformation of the mould part or by reducing the deformation of the mould part, are the intended use of the apparatus. Since Höglund discloses flexible or semi-elastic molds, the molds could be opened or closed via deformation of the form matrix.
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the materials of the molds described in Shepperd with the flexible materials described in Höglund in order to create a mold that can be manipulated and avoid folding, see Höglund page 13 lines 10-15.
Regarding claim 2, Shepperd meets the claimed, The mould according to claim 1, wherein the first and second parts each comprise a plurality of open mould cavities (Shepperd col. 31 lines 51-61 describes each mold surface of each mold half has mold cavities.)
Regarding claim 3, Shepperd meets the claimed, The mould according to claim 2, wherein the mould cavities of the first and second parts are open partial mould cavities and the first and second parts of the mould are operable to engage such that the partial mould cavity of the first part aligns with the partial mould cavity of the second part to form a closed enlarged mould cavity (Shepperd Figure 9 shows the cavities on either mold half engaging with one another.)
Regarding claim 4, Shepperd meets the claimed, The mould according to claim 1, wherein a mould cavity comprises texturing that is operable to produce surface structures on the packing member (Shepperd col. 31 beginning at line 51 describes a textured molding surface.)
Regarding claim 5, Shepperd does not disclose a polymeric or flexible mold. Höglund meets the claimed, The mould according to claim 1 wherein the deformable mould part is formed of a polymeric material (Höglund page 6 lines 15-17 describe plastic or rubber materials.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the materials of the molds described in Shepperd with the flexible rubber or plastic materials described in Höglund in order to create a mold that can be manipulated and avoid folding, see Höglund page 13 lines 10-15.
Regarding claim 11, Shepperd meets the claimed, The mould according to claim 1, wherein the mould further comprises a reservoir forming member, (Shepperd col. 31 lines 23-26 describe dowel pins 70, 72) wherein in the open position the first and second parts are operable to be spaced such that the reservoir member forms a reservoir cavity (Shepperd col. 31 lines 23-33 and Figure 9 describe openings 66, 68 where the dowel pins 70,72 are received as the mold is closed and are therefore partially empty when the mold is open.)
Regarding claim 12, Shepperd meets the claimed, The mould according to claim 11, wherein in the partially closed position the location of the reservoir cavity is operable to have moved with respect to a mould cavity and/or the volume of the reservoir cavity has been reduced (Shepperd col. 31 lines 23-33 and Figure 9 describe openings 66, 68 where the dowel pins 70,72 are received as the mold is closed and are therefore decreased in volume when the mold is closed or closing.)
Regarding claim 13, Shepperd as modified by Höglund meets the claimed, The mould according to claim 1, wherein the material forming the first and/or second mould part has a shrinkage rate of up to 1% (Höglund page 6 lines 15-17 describe flexible materials such as plastic, rubber, or metal and Höglund page 3 lines 30-31 describe the casting process occurs at room temperature. None of the materials described in Höglund would be expected to undergo thermal shrinkage at isothermal room temperature conditions.)
Regarding claim 14, Shepperd meets the claimed, The mould according to claim 1, wherein the first and second mould parts comprise cooperating retaining members operable to assist with maintaining the alignment of the mould parts (Shepperd col. 31 lines 18-23 describe die holders 62, 64 which hold the lower mold half so that the upper mold half can be positioned appropriately above the lower half. See Figure 9 showing the holders wrap around the mold parts like a groove.)
Regarding claim 15, Shepperd meets the claimed, The mould according to claim1, wherein a mould part comprises a reinforcing member (Shepperd col. 31 lines 3-5 describe vertical support columns 46,48.)
Regarding claim 16, Shepperd meets the claimed, The mould according to claim 15, wherein the reinforcing member protrudes from the first and/or second mould part to provide a guiding member (Shepperd col. 31 lines 3-5 describe vertical support columns 46,48, see Figure 9 showing the columns protruding from the molding apparatus.)
Claims 6-10 are under 35 U.S.C. 103 as being unpatentable over Shepperd modified by Höglund as applied to claim1 or 5 above, and further in view of Appleby (US 2004/0156478.)
Regarding claim 6, although Höglund describes the mold can be made from rubber, neither Shepperd nor Höglund meet the claimed, The mould according to claim 5, wherein the deformable mould part is formed from a two-part silicone composition, comprising a silicone resin and a curing agent or catalyst.
Analogous in the field of molds, Appleby meets the claimed, The mould according to claim 5, wherein the deformable mould part is formed from a two-part silicone composition, comprising a silicone resin and a curing agent or catalyst (Appleby Example 4 and [0311] describe making a portion of a flexible mold from Silastic rubber which [0240] describes is made with a silicone rubber and a catalyst or curing agent.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the material in the mold as described in modified Shepperd with the rubber material made from the silicone and curing agent as described in Appleby for increased release characteristics and flexibility and decreased shrinkage, see Appleby [0239]-[0241].
Regarding claim 7, neither Shepperd nor Höglund describe the Shore hardness and do not meet the claimed, The mould according to claim1, wherein the material forming the first and/or second mould part has a shore hardness of at least 5, as measured using the ASTM D2240 Type A.
Analogous in the field of molds, Appleby meets the claimed, The mould according to claim1, wherein the material forming the first and/or second mould part has a shore hardness of at least 5, as measured using the ASTM D2240 Type A. (Appleby Example 4 and [0309]-[0312] describe a portion of a flexible mold which has a Shore A hardness of 26.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the flexible mold of modified Shepperd with the mold having a Shore hardness of 26 has described in Appleby in order to create a material with the appropriate durability, see Appleby [0259]
Regarding claim 8, Appleby further meets the claimed, The mould according to claim 7, wherein the material forming the first and/or second mould part has a shore hardness of at least 15, as measured using the ASTM D2240 Type A. (Appleby Example 4 and [0309]-[0312] describe a portion of a flexible mold which has a Shore A hardness of 26.)
Regarding claim 9, neither Shepperd nor Höglund describe the Shore hardness and do not meet the claimed The mould according to claim 1 wherein the material forming the first and/or second mould part has a shore hardness of up to 40, as measured using the ASTM D2240 Type A.
Analogous in the field of molds, Appleby meets the claimed, The mould according to claim 1 wherein the material forming the first and/or second mould part has a shore hardness of up to 40, as measured using the ASTM D2240 Type A. (Appleby Example 4 and [0309]-[0312] describe a portion of a flexible mold which has a Shore A hardness of 26.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the flexible mold of modified Shepperd with the mold having a Shore hardness of 26 has described in Appleby in order to create a material with the appropriate durability, see Appleby [0259].
Regarding claim 10, Appleby further meets the claimed, according to claim 9, wherein the material forming the first and/or second mould part has a shore hardness of up to 32, as measured using the ASTM D2240 Type A. (Appleby Example 4 and [0309]-[0312] describe a portion of a flexible mold which has a Shore A hardness of 26.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the flexible mold of modified Shepperd with the mold having a Shore hardness of 26 has described in Appleby in order to create a material with the appropriate durability, see Appleby [0259].
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.
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/V.B./ Examiner, Art Unit 1744
/XIAO S ZHAO/ Supervisory Patent Examiner, Art Unit 1744