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
The applicant's arguments filed 12 November 2025 have been fully considered, but they are not persuasive. The applicant argues that the combination of Hulseman, Whitney, and Cannon does not disclose the limitation added to claim 26. The examiner respectfully disagrees. See the updated rejection of claim 26 below. Specifically, Whitney discloses that the alignment accuracy can be in the ±1 micron range.
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.
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 26-27 and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0266724 (“Hulseman”) (cited in an IDS) in view of US 6,875,384 (“Whitney”) (cited in an IDS) and WO 2010/096073 (“Cannon”).
Regarding claim 26, Hulseman discloses a method for injection moulding (see paragraph 27 and Figure 1), wherein an injection moulding space (the mold cavity 21; see id.) is defined by a mould with a first mould half (the first member 22; see id.) and a second mould half (the second member 24; see id.) in a closed state of the mould (see Figure 1), and wherein at least one insert (the polymer intermediate(s) attached to the mold insert 28; see Figure 4 and paragraph 31) arranged in the injection moulding space (see Figures 1 and 4) is at least partially comprised of a polymer (see paragraph 30), said method comprising:
producing an injection moulded article (the green part 30; see paragraph 27 and Figure 1);
removing the injection moulded article from the at least one insert (see id.).
Hulseman does not disclose measuring the injection moulded article or any of the claimed alignment steps.
Whitney provides a method for precisely and accurately injection molding parts to achieve micron-range tolerances for molded mechanical features. See lines 5-46 in column 1 and line 40 in column 4 to line 45 in column 5. As shown in Figure 4, a cavity block 120 is located within a cavity of a mold half 102 and is movable relative to the mold half 102 via actuators 106 and 108. See lines 1-12 in column 7. The cavity block 120 holds a die insert 46 that defines structural features to be formed in the molded article. See lines 14-17 in column 3 and lines 2-4 in column 7. In one embodiment, a test cycle is carried out, the molded test article is measured, the measurements are sent to a controller 104, and the controller 104 determines positional corrections to apply via the actuators 106, 108. See lines 34-46 in column 7. Positional offset correction can be carried out as a series of incremental adjustments. See lines 55-64 in column 7.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the alignment method of Whitney in the injection molding method of Hulseman to ensure that the polymer intermediates are properly positioned to form the desired microstructured features (see paragraphs 3, 27, and 29-30 of Hulseman) given the known difficulty of accurately forming micron-range features (see lines 5-46 in column 1 of Whitney).
The resulting method would comprise:
measuring the injection moulded article (see lines 34-46 in column 7 of Whitney);
determining an alignment error by comparison with set values (see id.);
aligning the at least one insert (see id.) arranged in the injection moulding space (see Figures 1 and 4 of Hulseman and Figure 4 of Whitney), wherein the at least one insert is aligned in the closed state of the mould in the injection moulding space (see lines 26-32 in column 7 of Whitney); and
repeatedly carrying out the aligning to iteratively improve the alignment error (see lines 55-64 in column 7 of Whitney) until an accuracy of the aligning of the at least one insert and at least one further insert is better than 5 µm (Col. 6, Ll. 28-39; Col. 6, Ll. 63-67; Col. 8, Ll. 28-33; Col. 8, Ll. 40-52 of Whitney).
With respect to the alignment of the at least one further insert, Hulseman discloses that the polymer intermediates can be manufactured in sections as multiple tiles 54, 56, 58. See Figure 4 and paragraph 31. In such an arrangement, it would have been obvious to one of ordinary skill in the art to align the tiles 54, 56, 58 relative to each other and the mold. Note the void 62 shown in Figure 4C.
With respect to the limitation that the at least one insert and/or the at least one further insert is produced by imprint lithography, the text of Hulseman does not explicitly recite this feature. However, [0009] of Hulseman states:
The present invention incorporates by reference the technology from PCT Application PCT/US09/43307 for providing a flexible polymer intermediate unique to the applicant and, therefore, novel and non-obvious to the art.
The referenced PCT application corresponds to Cannon, which discloses that the microstructures of the polymer intermediate are formed by imprint lithography ([0037], [0070]-[0072], Fig. 3). Accordingly, Hulseman discloses that its polymer intermediates are formed by imprint lithography. Alternatively, this feature would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention given [0009] of Hulseman and [0037], [0070]-[0072], Fig. 3 of Cannon. See MPEP 2143(I)(A).
Please also note that, as discussed in MPEP 2113, product-by-process limitations are not limited to the manipulations of the recited steps, only the structure implied by the steps. The limitation that the insert or further insert is produced by imprint lithography is a product-by-process limitation and is being interpreted accordingly.
Regarding claim 27, modified Hulseman discloses wherein the aligning of the at least one insert and the at least one further insert includes aligning a moulding surface of the at least one insert and/or a moulding surface of the at least one further insert (see Figures 1 and 4 and paragraphs 27 and 31 of Hulseman; the tiles 54, 56, 58 have molding surfaces defining the mold cavity 21; aligning the tiles 54, 56, 58 would align their mold surfaces).
Regarding claim 29, modified Hulseman discloses wherein an alignment of the at least one insert and/or of the at least one further insert is carried out on the basis of a measurement of an injection moulded article (see lines 34-46 in column 7 of Whitney).
Regarding claim 30, modified Hulseman does not disclose wherein an alignment is carried out by a reworking of the at least one insert and/or of the at least one further insert. However, Whitney discloses that it is conventional in the art to dimensionally adjust a mold half by removing or depositing mold material to reduce measured errors in a test article. See lines 24-51 in column 3.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have dimensionally adjusted the polymer intermediates of Hulseman in cases where the alignment error was too large to correct using only the actuators 106, 108.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Hulseman in view of Whitney and Cannon, as applied to claim 26 above, and further in view of JP 2013-539427 (“Kast”) (cited in an IDS).
Regarding claim 28, modified Hulseman does not disclose wherein the at least one insert and/or the at least one further insert is/are aligned with the aid of a plurality of alignment marks provided on the at least one insert and/or the at least one further insert. However, the use of alignment marks is well known in the molding art. For example, Kast discloses the use of alignment marks 4-7 for aligning mold components and eliminating position errors. See page 4 of the translation provided by the applicant.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used alignment marks, as taught by Kast, since Whitney discloses that position sensing can be carried out “in a variety of ways and with a variety of known position sensing technologies” (see lines 39-41 in column 6) and Kast provides a suitable option. This would represent a simple substitution of one known element for another (one position sensing arrangement for another) to obtain predictable results. See MPEP 2143(I)(B).
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 John DeRusso whose telephone number is (571)270-1287. The examiner can normally be reached Monday-Friday, 10:00 AM-6:00 PM ET.
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/John J DeRusso/Primary Examiner, Art Unit 1744