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 Amendment
Applicant amendment filed 08/12/2025 has been entered and is currently under consideration. Claims 1-14 remain pending in the application.
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) 1, 4, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sozet (US2017/0361511 of record).
Regarding claim 1, Sozet teaches:
A compression mold (Fig 1a: mold 1) comprising:
a first mold where a resin material to be resin-molded can be arranged (Fig 1a: element 4, member 7; plastic material MP); and
a second mold being arranged as facing the first mold (Fig 1a: element 3), wherein
the first mold includes a side surface member (Fig 1a: element 4) and a bottom surface member (Fig 1a: member 7),
the side surface member includes a step height on a bottom surface member side of the side surface member (Fig 1a, annotated Fig 1a),
the step height includes a first surface of the side surface member, a second surface that extends from the first surface toward the bottom surface member, and a third surface that extends upward from the second surface (Fig 1a, annotated Fig 1a),
the bottom surface member includes an upper surface where a resin material can be arranged and a slide surface that extends downward from the upper surface (Fig 1a, annotated Fig 1a) and is slidable with respect to the third surface of the side surface member ([0049]).
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Sozet does not teach second mold arranged above the first mold.
However, it has been broadly held that rearrangement of parts is obvious. See MPEP 2144.04(VI)(C).
Sozet does not contain any teaching that an upside-down rearrangement would hinder operation of the prior art device. Therefore, such an arrangement would be considered merely an obvious matter of design choice. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have rearranged the first and second mold so that the second mold is arranged above the first mold.
Sozet does not explicitly recite that the compression mold is “for resin sealing an object”, However, the examiner notes that the limitation is 1) functional in nature, and 2) recited as intended use in the preamble and 3) does not on its own appear to imply any structure. The limitation appears to be linked with the body of the claim by a first mold where a resin material to be resin-molded can be arranged which is taught above, and a second mold where the object can be set, which is not explicitly recited by Sozet. This connection appears to elevate the limitation in the preamble above mere intended use. However, there is no additional structure implied by the subsequent limitations above beyond requiring the first and second molds. Therefore, the above limitations can only be properly interpreted as functional limitations, and "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See MPEP 2114. Element 3 is capable of making contact with an object during the molding process such as in Fig 1a of Sozet. Furthermore, since the prior art apparatus teaches the claimed structure, one of ordinary skill in the art would reasonably expect the prior art apparatus to be capable of performing the claimed functions as well. Given the above, the prior art apparatus would be capable of performing resin sealing of an object.
Regarding claim 4, Sozet teaches the apparatus of claim 1.
Sozet further teaches wherein the first surface of the side surface member is perpendicular to the second surface or inclined with respect to the second surface (Fig 1a, annotated Fig 1a).
Regarding claim 7, Sozet teaches the apparatus of claim 1.
Sozet further teaches a resin molding apparatus comprising the compression mold according to claim 1 (mold 1).
Regarding claim 9, Sozet teaches the apparatus of claim 7.
Sozet further teaches a resin molding system comprising the resin molding apparatus according to claim 7 (mold 1).
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sozet as applied to claim 1 above, and further in view of Howland et al. (US2018/0029315) hereinafter Howland.
Regarding claim 2, Sozet teaches the apparatus of claim 1.
Sozet does not teach a sealing material in the third surface of the side surface member.
In the same field of endeavor regarding molds, Howland teaches providing a sealing material on the moving parts of a mold for the motivation of creating an internal vacuum chamber and to retain the liquid resin (Fig 1-2: seals 15, 15b; [0014, 0034]).
It would have been obvious to one of ordinary skill in the art to have modified the third surface of the side surface member as taught by Sozet with the seal as taught by Howland in order to create an internal vacuum chamber and to retain the liquid resin.
Regarding claim 3, Sozet teaches the apparatus of claim 1.
Sozet does not teach a consumable arranged between the first surface and the second surface of the side surface member and the slide surface of the bottom surface member.
In the same field of endeavor regarding molds, Howland teaches providing a sealing material to the internal cavity of a mold for the motivation of creating an internal vacuum chamber and to retain the liquid resin (Fig 1-2: seals 15, 15b; [0014, 0034]).
It would have been obvious to one of ordinary skill in the art to have modified the mold cavity as taught by Sozet with the seal as taught by Howland in order to create an internal vacuum chamber and to retain the liquid resin.
Howland further teaches placing the seals 15b in a position in the mold cavity in Fig 1-2 that is analogous to a location of the mold cavity of Sozet in Fig 1a that is arranged between the first surface and the second surface of the side surface member and the slide surface of the bottom surface member.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sozet as applied to claim 1 above, and further in view of Takeaki (JP2012061728 of record with reference made to examiner provided machine translation).
Regarding claim 5, Sozet teaches the apparatus of claim 1.
Sozet does not teach wherein the upper surface of the bottom surface member is provided with a recess.
In the same field of endeavor regarding molds, Takeaki teaches a bottom surface member provided with a recess for the motivation of transferring a concave shape to the molding material (Fig 1: recess 143; [0022, 0029]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the upper surface of the bottom surface member as taught by Sozet with the recess as taught by Takeaki in order to transfer a concave shape to the molding material.
Regarding claim 6, Sozet in view of Takeaki teaches the apparatus of claim 5.
Takeaki further teaches wherein the recess includes a bottom surface and an inner peripheral surface that extends upward from the bottom surface, and the inner peripheral surface is perpendicular to the bottom surface or inclined with respect to the bottom surface (Fig 1).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sozet as applied to claim 7 above, and further in view of Neerinex et al. (US2018/0257282 of record) hereinafter Neerinex.
Regarding claim 8, Sozet teaches the apparatus of claim 7.
Sozet further teaches lifting and lowering the first mold and lowering one of the side surface member and the bottom surface member independently of the other (Fig 2-5; [0042-0046]).
Sozet does not teach a drive mechanism that lifts and lowers the first mold, wherein the drive mechanism lifts and lowers one of the side surface member and the bottom surface member independently of the other.
Sozet is silent as to how to drive the mold parts. One of ordinary skill in the art would be motivated to look to other molds for how to drive the mold parts.
In the same field of endeavor regarding molds, Neerinex teaches a mold drive mechanism that can independently lower and lift a mold half and movable mold elements (Fig 1: movable insert actuator 232; [0107, 0110]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have tried the mold drive mechanism as taught by Neerinex to drive the mold parts of Sozet and there would be a reasonable expectation of success since both references teach driving mold parts independently of each other.
Response to Arguments
Applicant's arguments filed 08/12/2025 have been fully considered but they are not persuasive.
Applicant argues that Sozet does not teach a compression mold for resin sealing an object. However, as applicant admits, Sozet teaches a compression mold. As acknowledged in the art rejection above, Sozet does not explicitly recite that the compression mold is “for resin sealing an object”, However, the examiner notes that the limitation is 1) functional in nature, and 2) recited as intended use in the preamble and 3) does not on its own appear to imply any structure. The limitation appears to be linked with the body of the claim by a first mold where a resin material to be resin-molded can be arranged which is taught above, and a second mold where the object can be set, which is not explicitly recited by Sozet. This connection appears to elevate the limitation in the preamble above mere intended use. However, there is no additional structure implied by the subsequent limitations above beyond requiring the first and second molds. Therefore, the above limitations can only be properly interpreted as functional limitations, and "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. See MPEP 2114. Element 3 is capable of making contact with an object during the molding process such as in Fig 1a of Sozet. Furthermore, since the prior art apparatus teaches the claimed structure, one of ordinary skill in the art would reasonably expect the prior art apparatus to be capable of performing the claimed functions as well. Given the above, the prior art apparatus would be capable of performing resin sealing of an object.
Applicant argues that Sozet does not teach plastic material is placed in the first mold. However, the examiner notes that the claim recites “a first mold where a resin material to be resin-molded can be arranged”. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Sozet teaches plastic material MP which is arranged in contact with element 4 (Fig 1a). Furthermore, in the rearranged configuration, the plastic material MP would be placed in element 4.
Applicant argues that Sozet fails to teach an object. However, the examiner notes that the claimed object is recited as functional limitation and not included in the structure of the claimed invention (“a second mold where the object can be set”). Furthermore, the object is material worked upon, and "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." See MPEP 2115.
Applicant argues that Sozet does not teach a second mold where the object can be set. However, Fig 1a shows element 3 in contact with plastic material MP to be worked upon. It is clear that element 3 would be capable of having an object be set in contact with element 3 as well.
Applicant argues that Sozet does not teach that the second mold is arranged above the first mold and that there is no grounds for an upside-down rearrangement. However, as cited in the art rejection, MPEP 2144.04(VI)(C) provides that rearrangement of a prior art device is an obvious matter of design choice when such a rearrangement would not have modified the operation of the device. Sozet does not contain any teaching that an upside-down rearrangement would hinder operation of the prior art device, and applicant has not provided any evidence to support such a finding.
Applicant argues that Sozet does not mention the introduction of molten liquid resin in between the constituent members of the compression mold. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). While Sozet does not explicitly recite the benefits of the instant invention, since the prior art apparatus teaches or makes obvious all of the structure of the claimed invention, it would be reasonable to assume that the prior art structure provides the same benefits as well. Furthermore, in regards to said benefits, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
For at least the above reasons, the application is not in condition for allowance.
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 ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison 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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/ALEXANDER A WANG/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741