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 .
Election/Restrictions
Applicant's election with traverse of claims 7-14 in the reply filed on 13/31/2024 is acknowledged. The traversal is on the ground(s) that examination of all pending claims would not be a burden, much less a “serious burden” on the Examiner. This is not found persuasive because the examination on the merits of apparatus claims differs from that of method claims. Therefor the extra search and/or examination burden for addressing multiple inventions poses a serious burden to the examiner. The system requires at least a numerically controlled milling machine with at least seven axes whereas the method requires additional steps of processing, loading, centering, and creation of a tool path that would require different key words and class search which in turn return different art relevant to one group and not relevant to the second that there is a serious burden to search the two groups.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method and apparatus (mold), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/31/2024.
Claim Objections
Claims 1-6 are objected to because of the following informalities:
Claim 1 recites “at least seven axes (A, B, X, Y, Z, C, V) of which at least the axes (A, B, X, Y, Z) are used” in lines 2-3. It should recite “of which at least five axes are used” to positively recite the subject matter written in between the parentheses as the claim currently reads “at least seven axes of which at least the axes are used”.
Claims 1-6 should be rewritten for consistency to ensure “numerically controlled milling machine”, “milling machines”, “tools for mould”, “working tools”, “tools for working the piece”, “type”, etc. are referring to the same limitation and have antecedent basis.
Claim 3 recites the limitation “wherein the at least one working tool for the realization of a finished mould for cast cosmetics products “Hammer” type comprises…” in lines 3-4. This should be written for consistency. For examination purposes the claim will be interpreted to mean wherein the at least one working tool is a “Hammer” tool comprising a monocrystalline diamond at the tip with a shape suitable for hammering.
Claim 4 recites the limitation “wherein the at least one working tool for the realization of a finished mould for cast cosmetic products “Hydro” type is a…” in lines 2-3. This should be rewritten for consistency. For examination purposes the claim will be interpreted to mean wherein the at least one working tool is a “Hydro” tool comprising a monocrystalline diamond shaped in any desired shape.
Claim 5 recites the limitation “wherein said at least one working tool for the realization of a mould for cast cosmetic products “zetina” type comprises…” in lines 2-3. This should be rewritten for consistency. For examination purposes, the claim will be interpreted to mean wherein the at least one working tool is a “zetina” tool comprising a side facing the mold and said side is made like the section of a comb with alternating fine teeth.
Claims 3, 4, 5, and 6 recite “according to the preceding claims”. These claims should recite “according to claim 1” as amended in the claims submitted 11/22/2023.
Appropriate correction is required.
Claim Interpretation
The working tool “Hammer” is interpreted to be a cylinder-type tool, where a brazed diamond is fixed at the end based on Pg. 11, lines 24-29 of the instant specification dated 04/18/2023 and claim 3.
The working tool “Hydro” is interpreted to be a cylinder comprising a monocrystalline diamond shaped in any desired shape based on Pg. 13, lines 6-8 of the instant specification dated 04/18/2023 and claim 4.
The working tool “zetina” is interpreted to be a cylinder in the shape of a “cob” or comb with fixed cutting edges and alternating fine teeth based on Pg. 12, lines 7-19 of the instant specification dated 04/18/2023 and claim 5.
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 1-6 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.
Claim 1 recites “comprising at least the use of a numerically controlled milling machine”. It is unclear whether this limitation is interpreted to claim the numerically controlled milling machine or the process of using the numerically controlled milling machine. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite. See MPEP 2173.05. The claim is being interpreted as an apparatus claim as the withdrawn claims 7-13 are related to the process or method of using the apparatus.
Claim 1 recites the limitations “at least the use of a numerically controlled milling machine” in line 2 and "at least milling machines and/or other tools for mould processing" in line 5. It is unclear and ambiguous whether the “at least milling machines and/or other tools” refers to the numerically controlled milling machine or an additional milling machine. For examination purposes, the “at least milling machines and/or other tools” is interpreted to refer to the same “numerically controlled milling machine”.
Claim 1 recites the limitation “ at least milling machines and/or other tools for mould processing characterized by the fact that at least one working tool is…” in lines 5-6. There is insufficient antecedent basis for this limitation “at least one working tool” in the claim. For examination purposes the claim is interpreted to mean the system comprising at least a numerically controlled milling machine wherein the at least numerically controlled milling machine has: at least one working tool that is a diamond tip or monocrystalline diamond tip, at least one working tool that is a “Hammer” tool, at least one working tool that is a “Hydro” tool, at least one working tool that is a “zetina” tool, and/or at least one working tool that comprises a monocrystalline diamond insert suitably shaped to work in removal, compression and polishing and the said working tools can be used in any combination with each other.
Claim 5 recites the limitation “ ‘zetina’ type comprises a side facing the piece” in line 3. There is insufficient antecedent basis for this limitation “the piece”. For examination purposes the claim is interpreted to mean the “zetina” tool comprises a side facing the intended material being worked on.
Claims 1-6 should be rewritten for consistency to ensure “numerically controlled milling machine”, “milling machines”, “tools for mould”, “working tools”, “tools for working the piece”, “type”, etc. are referring to the same limitation and have antecedent basis.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a) as being anticipated by Beaucamp et al. (US 2017/0246728 A1).
Claim 1: Regarding claim 1, Beaucamp discloses a system for the realization of molds (Abstract discloses shaping tool to perform grinding operation used for preparation of molds) comprising a numerically controlled milling machine with at least seven axes (¶s 6 and 22-29 discloses a polishing machine for shaping a workpiece and the machine having seven axes of control). Beaucamp discloses the at least one numerically controlled milling machine comprises at least one working tool (¶6 discloses the machine including a tool) wherein the at least one working tool is a diamond tip (¶6 discloses rigid pellets forming the working surface of the tool ¶42 discloses the pellets comprising diamonds), said working tools can be used in any combination with each other (Fig. 5a and 5b illustrates the different shaping tools that can be used, thus Beaucamp discloses the working tools can be any shape and can all be used), said system being suitable for making any mold with a surface finish (Abstract discloses the apparatus for shaping a mold cavity surface with a smooth surface finish).
The recitation “for the realization of molds for cosmetic products” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use for a structure, and where the body of the claim does not depend on the preamble for completeness but, instead the process steps of structural limitations are able to stand alone. See MPEP 2111.02.
The examiner wishes to point out that the recitation “of which at least the axes (A, B, X, Y, Z) are used for the realization of a mould, which includes at least one raw or semi-finished piece or a raw or semi-finished piece or a raw or semi-finished piece or a raw or semi-finished mold for cast cosmetic products” and “said system being suitable for making any mold for high-precision cast cosmetic products with a surface finish” are recitations of intended use. The claims are directed towards an apparatus and such the material worked upon or the process of using the apparatus are viewed as recitation of intended us and are given no patentable weight (See MPEP 2114 R1-2115 R2).
Claim 2: Regarding claim 2, Beaucamp discloses the system according to claim 1. Beaucamp discloses wherein said at least one working tool for making a mould comprises a diamond tip (¶6 discloses the machine including a tool and rigid pellets forming the working surface of the tool and ¶42 discloses the pellets comprising diamonds, thus Beaucamp discloses a tool diamond tip) and the diamond tip is adapted to remove material from the raw mold (¶57 discloses the tool moving over the workpiece surface (i.e. mold) and removes the excess material) and perform lapping of the mold for a smooth brilliant finish with a shiny surface (¶57 discloses the tool being controlled to remove the excess material, leaving the workpiece surface with the desired finish and ¶80 discloses the process of using the tool to grind and polish the coating to the required surface finish, thus Beaucamp teaches the tool being used to produce a smooth finish with a shiny (polished) surface), the diamond removes and compress the material through this action (¶61 discloses the tool being pressed against the workpiece and rotating to remove material from the workpiece and ¶42 discloses the pellets on the tool being diamond, thus Beaucamp teaches the diamond compressing and removing the material) to ensure the required surface finish is achieve (¶62). Beaucamp reads on the structure of the working tool as claimed, thus it is anticipated the tool is able to obtain a perfectly shiny surface with sharp edges.
Claim 3: Regarding claim 3, Beaucamp discloses the system according to claim 1. Beaucamp discloses wherein the at least one working tool is a “Hammer” tool which comprises a monocrystalline diamond at the tip (Fig. 5 illustrates cylindrical tool; ¶6 discloses the machine including a tool and rigid pellets forming the working surface of the tool and ¶42 discloses the pellets comprising diamonds particles, thus Beaucamp discloses a tool with a diamond particle (monocrystalline as it is a diamond particle) tip) with a shape suitable for hammering (all shapes are suitable for hammering), thus it is suitable for obtaining a hammer-tip of “hammered” effect on the finished cosmetic mold.
Claim 4: Regarding claim 4, Beaucamp discloses the system according to the claim 1. Beaucamp discloses wherein the at least one working tool is a “Hydro” tool comprising a cylinder comprising a monocrystalline diamond shaped in any desired shape (Fig. 5 illustrates cylindrical tool; ¶6 discloses the machine including a tool and rigid pellets forming the working surface of the tool, ¶42 discloses the pellets comprising diamonds particles and the particles varying in sizes, thus Beaucamp discloses a tool comprising diamond particles (monocrystalline as it is a diamond particle) in any desired shape), the Hydro tool works by removal like a milling machine or a tip like drill (¶57 discloses the tool moving over the workpiece surface (i.e. mold) and removes the excess material, leaving the workpiece surface with the desired finish) and includes different profiles that allow you to create different effects on the mould to be worked according to the shape of said profiles (¶28 discloses the tool is generally circular for a flat workpiece surface, but may deviate from the circular shape if the workpiece is curved and ¶38 discloses the size and shapes of the pellets on the tool may be different sizes and shapes, thus Beaucamp discloses a tool having different profiles), which can be semi-spheres (Fig. 5 illustrates the tool being a hemisphere, cup-shaped membrane 82) with truncated cones of different diameters (Fig. 5 illustrates the pellets which are in the same of truncated cones and ¶38 discloses the size and shapes of the pellets can vary and be arranged in different patterns). Beaucamp reads on the structure of the working tool as claimed, thus it is anticipated the tool is able to obtain a finish of the mold with a “pearl” effect “set” brilliant diamonds, or finishes such as glossy hemispheres in the mold to create a “necklace effect”.
Claim 5: Regarding claim 5, Beaucamp discloses the system according to claim 1. Beaucamp discloses wherein said at least one working tool is the “zetina” tool comprising a side facing the milled material and said side is made like the section of a comb with alternating fine teeth (¶38 discloses the tool comprising pellets arranged on the working surface of the tool which contacts the workpiece and Fig. 5 illustrates the pellets arranged as alternating fine teeth like a comb with spaces in between the pellets) wherein the pattern is arranged to create any desirable surface finish of the workpiece (¶35). Beaucamp reads on the structure of the “zetina” tool as claimed, thus it is anticipated the tool is able to create a satin and brushed effect on the workpiece.
Claim 6: Regarding claim 6, Beaucamp discloses the system according to the claim 1. Beaucamp discloses wherein the at least one working tool is any tool (¶6 discloses the machine including a tool and rigid pellets forming the working surface of the tool) as long as it is suitable for precision machining (Fig. 7 illustrates the shape adaptive grinding process to achieve the same surface roughness as ultra-precision grinding and ¶s 22-29 discloses the shape adaptive grinding process including the control of the tool, thus Beaucamp discloses the working tool is suitable for milling ultra-precise surfaces) and the shape of the tools can vary (¶38 discloses the size and shapes of the pellets on the tool may vary) allowing to obtain different finishing effects (¶38 discloses the size and shapes of the pellets can vary and be arranged in different patterns and ¶57 discloses the tool being controlled to remove the material and leave the workpiece surface with the desired finished, thus Beaucamp discloses modifying the tool and control of the tool to achieve desired finishes, desired finished will vary according to tool and toolpath modification.
The recitation of “for precision machining in cosmetics” is a recitation of intended use. It is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it anticipates the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KERAN V NGUYEN whose telephone number is (703)756-4615. The examiner can normally be reached Monday - Friday 8 AM - 4 PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison L Hindenlang can be reached on (571) 270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KERAN V NGUYEN/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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