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 .
Claims 1-2, 4-8 and 10-14 are pending with claims 1-2, 4-8 and 10-11 under examination. Claims 12-14 are withdrawn.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/16/2026 has been entered.
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 1-2, 4-8, and 10-11 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.
Regarding claim 1, Claim 1 recites the limitation "the molding unit" in the amended portion of the claim. There is insufficient antecedent basis for this limitation in the claim. The claim introduces “two molding devices” and “the molding devices each comprise a molding unit” – meaning that there is more than one “molding unit” introduced in the claim, thus rendering the scope of “the molding unit” to be unclear since it is not clear which of the described “molding units” would be referred to here with “the molding unit.”
*The same issue as above exists with the recitation of “the core of the less elastic material” since there are two molding units that would have a core.
Furthermore, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation [“more elastic material”; “less elastic material”], and the claim also recites [“at least one of a rubber material and a silicone material”; “metal material”] which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2, 4-8, and 10-11 are also rejected at least due to their dependence or ultimate dependence upon claim 1.
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.
Claim(s) 1-2, 4-8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Meggiolan (US 2002/0108249).
Regarding claims 1-2 and 4-5, Meggiolan discloses a tool device for manufacturing a rim (par. 0006, 0008) comprising: two molding devices (inner elements 8) and a circular device (outer element 9) (par. 0036-0037); wherein the molding devices each comprise contact surfaces (11) for forming at least part of a rim flank and rim flanges (“designed to delimit . . . the outer surface of the inner peripheral wall and the two sides (flanks) of the rim”), the circular device forms the rim well and the internal surfaces of the flanges (par. 0036-0037)(see Fig. 1-6), the circular device comprises an annular unit (Fig. 7, par. 0038 states that the ring can be split into sections), and the molding devices each comprise a molding unit; where in Fig. 9, the annular unit comprises a core of a less elastic material (the mold itself) and a “cover” (‘core’ in the reference) of a more elastic material (Fig. 9, par. 0041).
In Fig. 3, the “core” (14) is part of the outer element (9), while in Fig. 4 (and others), the “core” 14 is a separate element. In Fig. 9, this “core portion” is attached (or covers and thus is considered to be the cover within the claim) the extension of the mold which would map where the claimed “core” is located. To clarify further, the reference’s termed “core” would map to the claimed “cover.”
Meggiolan does not explicitly disclose the thickness of the cover being between 0.5 and 5 mm or the selection of materials used in the mold.
However, it has been held that changes in shape/size support a case of prima facie obviousness as well as a scaling up/down as to produce a scaled up/down product of the same type. A scaling up or down can involve producing a model of a much smaller or larger size than the original. Accordingly, one of ordinary skill in the art would have found it obvious before the effective filing date of the claimed invention to have modified the above to have specified that the cover is of an appropriate thickness to have molded an object as required to be sized. In the alternative, one of ordinary skill in the art would have found it obvious to have modified the thickness of the silicone sheath as provided by Meggiolan as is required to fit into the apparatus for a size of a rim being manufactured.
Regarding the selection of material, it has been held that the selection of a known material based on its suitability for an intended purpose or use supports a case of prima facie obviousness. In this case, one of ordinary skill in the art would have found it obvious to have specified that the materials of the mold are selected as to have had an appropriate thermal conductivity/resistivity with respect to the mold and the object being molded as to have held the object at an appropriate temperature for molding, with portions of the object being cooler than others.
Regarding claim 6, Meggiolan discloses the subject matter of claim 1, and further discloses that there are at least two spaced apart pressing rings (see Fig. 7) as to form the rim flanges.
Regarding claim 7, Meggiolan discloses the subject matter of claim 1, and the mold material is considered to be less elastic than the silicone as described in claim 1 above.
Regarding claim 8, Meggiolan discloses the subject matter of claim 1, and further discloses that the portion that is read to be the “cover” above (the core 14 as in par. 0041, Fig. 9) is a silicone sheath made in one piece or in sectors.
Regarding claim 10, Meggiolan discloses the subject matter of claim 1, but does not explicitly disclose the thickness of the cover as required in claims 3 or 10. It is noted that claim 1 requires “at least one cover” but does not require “a mold cover” or “a ring cover.”
However, as is outlined in claim 1 above, one of ordinary skill in the art would have found it obvious to have modified the above to have specified the thicknesses of the parts are as to have produced an item of an appropriate size.
Regarding claim 11, this claim relates to the intended use of the claimed structure. As such, this is not limiting to the claimed device. See MPEP 2114.
Response to Arguments
Applicant's arguments filed 6/16/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed below.
In response to the arguments, it is pointed out that the claim scope as currently drafted is not clear (since there are multiple components that can include a “cover”), and so it is being interpreted more broadly than is interpreted and argued by Applicant in the remarks. It seems that clarification of the scope of the claim in accordance with the above would also necessitate a narrowing of the BRI of the claim. Since the “annular unit” can also have a cover in the claimed invention, it would seem that these elements would be interchangeable in the prior art as well. Furthermore, the selection of the materials for the “more elastic” or “less elastic” material are now specified, but it is not clear whether these are an example or are the materials required by the claim (and the remarks, see p. 6-7, seem to argue that these specific materials are exemplary and not required by the claim). Examiner’s position is that one of ordinary skill in the art would have found it obvious to have selected the materials of the mold based upon the desired temperature of the surface contacting the object. While this is different from Applicant’s approach, 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).
Additionally, Examiner notes that there is no process being claimed here under examination, the claim is directed at a tool device (the “for manufacturing a rim for at least partially muscle-powered vehicles” is an intended use and does not limit the claim). 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 (i.e., the specification) 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). Accordingly, the rejections are maintained as updated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
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