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 .
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 54 and 55 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 54 recites the limitation "the peripheral recess" in the last line. There is insufficient antecedent basis for this limitation in the claim. In this instance, it is believed that "the peripheral recess" should be replaced with "the peripheral recess surface" to obtain proper antecedent basis with "a peripheral recess surface" in the 2nd line of claim 53. Since claim 55 depends from claim 54, claim 55 is rejected under 35 USC 112(b) for the same reason.
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.
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.
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.
Claims 47, 49, and 51-65 are rejected under 35 U.S.C. 103 as being unpatentable over Koppenhofer (US 4,733,712) in view of Rocco et al. (US 2013/0221192), and further in view of Kohl et al. (US 2,790,218).
Regarding independent claim 47 and claim 64, Koppenhofer discloses a method and a mold for casting products (abstract; column 1, lines 56-68; column 2, lines 1-35 and 55-68; column 3, lines 1-42; and Figures 1-3), in which the mold includes the following structural features:
a mold insert (24,28) comprised of sand and a binding agent (column 3, lines 1-5); and
a mold base (20,30) comprised of sand and a binding agent packed within a casting flask (column 2, lines 65-68; column 3, lines 25-33; and Figure 2),
wherein the mold insert (24,28) is mated with the mold base (20,30) to form the mold and is a customized portion of the mold with one or more customized features, and the mold base (20,30) is a standardized portion of the mold defining a generic geometry of the product (see Figure 2), wherein the mold cavity is formed by one or more surfaces of the mold base (20,30) and one or more surfaces of the mold insert (24,28).
Koppenhofer fails to explicitly disclose that the mold insert comprises alternating layers of sand while having different binding agents that are distinct with regard to type and curing conditions.
However, Rocco et al. disclose a molding tool for making mold inserts (abstract; paragraphs [0062] and [0063]; and Figure 12), wherein the molding tool includes providing stacked particulate layers (14) of sand with a binding agent (16) with alternating layers, for the purpose of accurately making inserts to fit in the molding tool (abstract; and paragraphs [0062] and [0063]).
Therefore, it would have been obvious to one of ordinary skill in the art to include alternating layers of sand and binding agent for the molding tool for making mold inserts disclosed by Rocco et al., into the teachings of Koppenhofer, in order to create accurate and replaceable inserts to fit in the molding tool (Rocco et al.; abstract; and paragraphs [0062] and [0063]).
The combined teachings of Koppenhofer and Rocco et al. fail to explicitly teach that there are two different binders having different curing environmental conditions in the mold.
However, Kohl et al. disclose a mold defining shell layers that include different binders in the inner shell layer and the outer shell layer of the mold (see column 18, line 51 through column 19, line 68), in which the different binders of each shell layer are advantageous in compensating for molten metal expansion and obtaining higher mold strength (see column 19, lines 15-30 and 61-68).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the applicants’ invention was made to provide different types of binders having different curing environmental conditions, as taught by Kohl et al., into the mold disclosed/suggested by the combined teachings of Koppenhofer and Rocco et al., in order to compensate for high temperatures of the molten metal with higher mold strength (Kohl et al.; column 19, lines 15-30 and 61-68).
Regarding the new limitation of independent claim 47 that the mold insert is “generated from a digital product design that defines a negative impression of product-specific surface features of the product”, it is noted that a product-by-process claim has no patentable weight per MPEP 2113, since the claimed product (mold insert) can be made by any process, and thus does not provide patentable weight to the mold insert within the claimed mold of claim 47. In this instance, the examiner is taking the position that the mold insert was taught by the prior art, and how it was made is not distinguishable based on structure thereof.
Regarding claim 49 and new claim 65, and in referring to the newly underlined portions pertaining to the generic geometry defined by the mold base corresponding to a standard design (standardized portion of the mold) common to a plurality of different products of independent claim 47 above, the mold comprises a mold cavity configured to cast a product including one or more customized (product-specific surface) features that differ among the plurality of different products, including images and/or borders (in which “customized features” would be broadly and reasonably interpreted as product-specific surface features – see Figure 1 of Koppenhofer).
Regarding claims 51 and 52, the mold insert (24,28) of Koppenhofer comprises a peripheral insert surface having a draft angle of about zero degrees.
Regarding claims 53 and 54, Koppenhofer discloses that the mold base (20,30) comprises a peripheral recess surface sized and configured to receive the mold insert (24,28) therein to form the mold, wherein a peripheral recess surface comprises a draft angle (of about zero degrees) configured to mate with a peripheral insert surface of the mold insert (24,28), wherein the depth of the recess corresponds to the depth of the mold insert (24,28), as shown in Figures 1 and 2, wherein the depth of the mold insert (24,28) and the draft angle would be capable of preventing seating of the mold insert (24,28) in the peripheral recess surface in an inverted orientation.
Regarding claim 55, although the combined teachings of Koppenhofer, Rocco et al., and Kohl et al. disclose and/or suggest the combined features of claims 47, 53, and 54, Koppenhofer, Rocco et al., and Kohl et al. fail to teach that the depth of the mold insert is between 0.5 and 1.5 inches. However, it would have been obvious to one of ordinary skill in the art to provide a depth of the mold insert to be of any dimension, since selection of depth would depend on the design choice of a cast product to be made with the mold insert mated with the mold base to form the mold. Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980).
Regarding claim 56, the mold insert (24,28) of Koppenhofer is mated to the mold base (20,30). Regarding the functional language (e.g., by baking the mold base around the mold insert), the Examiner has considered it. However, the Applicant is reminded that apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities.
Regarding claims 57 and 58, Koppenhofer discloses that the mold insert (24,28) has a predetermined set of standardized dimensions that can be selected based on a size of the product to be cast (see column 2, lines 65-68; column 3, lines 25-33; and Figures 1 and 2).
Regarding claims 59 and 60, although the mold insert (24,28) of Koppenhofer comprises channels along peripheral edges to enhance interlocking with the mold base (20,30) when foundry sand is filled around the mold insert (24,28), as shown in Figure 1, Koppenhofer does not explicitly disclose that the channels have a width of about 0.125 inches. However, it would have been obvious to one of ordinary skill in the art to provide a width of the channels to be of any dimension, since selection of width would depend on the design choice of a cast product to be made with the mold insert mated with the mold base to form the mold. Moreover, it would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (1980). Furthermore, the sand of the mold base (20,30) extends into the one or more channels to mechanically interlock the mold insert (24,28) with the mold base (20,30), as shown in Figures 1 and 2 of Koppenhofer.
Regarding claim 61, the mold insert (24,28) of Koppenhofer has a textured surface that is configured to increase surface area between the mold insert (24,28) and the mold base (20,30), as shown in Figure 1 (also see column 2, lines 65-68; and column 3, lines 25-33).
Regarding claims 62 and 63, the mold insert (24,28) of Koppenhofer has an adaptive slicing pattern with varying layer thickness based on different regions within the mold insert (24,28), in which the mold base (20,30) is formed using a modified pattern that includes an extended core volume corresponding to dimensions of the mold insert (24,28), as shown in Figure 1 (also see column 2, lines 65-68; and column 3, lines 25-33).
Response to Arguments
The examiner acknowledges the applicants’ amendment provided with the request for continued examination received by the USPTO on July 13, 2026. The applicants have amended independent claim 47 and a portion of the dependent claims, and an amendment to claim 54 raises a new 35 USC 112(b) rejection (see above section 2). The applicants have added new claim 65. Claims 47, 49, and 51-65 are currently under consideration in the application.
Applicants’ arguments with respect to claims 47, 49, and 51-65 have been considered but are moot because the argument pertaining to the new limitations has been addressed in the newly underlined portions applied above in the 35 USC 103 rejection addressing the applicants’ amendments to independent claim 47 and addition of new claim 65.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN P KERNS whose telephone number is (571)272-1178. The examiner can normally be reached Monday-Friday 8am-430pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN P KERNS/Primary Examiner, Art Unit 1735 July 24, 2026
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