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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/28/2026 has been considered by the examiner.
Response to Amendment
The Amendments filed 10/01/2026 responsive to the Office Action filed 06/02/2026 has been entered. Claims 1 and 24 have been amended. Claims 15-22 maintain withdrawn. Claims 1-5, 7-9 and 11-25 are pending in this application.
Response to Arguments
Claims 1 and 24 have been amended to address the informalities, thus the objection of claims has been withdrawn.
Applicant's arguments, filed 10/01/2026, with respect to claims 1 and 24 under 102 or 102/103 rejection, have been fully considered and at least one argument with respect to at least one heating element (page 9) is persuasive. Therefore, the rejection has been withdrawn and PROSECUTION IS HEREBY REOPENED. New ground of rejection is set forth below.
Applicant’s arguments, see Amendment filed 10/01/2026, with respect to claims 11 and 12 have been fully considered but are not persuasive.
Applicant argues that “First, claim 11 defines that " the mold is connected to an injector". Thus, the injector is a positively claimed structural element of the claim...” (pages 10-11).
This argument is found to be unpersuasive because:
The claimed invention is “A mold” and the claim 11 recites that “the mold is connected to an injector…”. Namely, “an injector” is a separate structure from “the mold”, thus not a positive structure. Since the mold of Winget can be used with an injector in order to inject the material into the mold cavity, the limitation “connected to an injector for injecting…” is an intended use.
Likewise, the claim 12 recites that “a pump is connected to the at least one porous insert”. Namely, “a pump” is a separate structure from “the mold”, thus not a positive structure. Since the mold of Winget can be used with a pump in order to suction the vented air, the limitation “a pump is connected to…” is an intended use.
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.
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 1-5, 7, 8 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Winget et al. (US 2002/0121718A1).
With respect to claims 1 and 5, Winget teaches a mold (“mold 90”, Pa [0036], Figs. 6, 7A, 7B) comprising:
at least one mold cavity (“an article defining cavity 96”) defined by at least a mold wall (“an article defining cavity 96 is defined between the mold halves 92 and 94”, Pa [0037]), wherein the mold is provided with at least one heating element (“a number of heating units 98”) for heating the mold cavity and moldable material inserted into said mold cavity for heating the moldable material inside the mold cavity to a molding temperature for the moldable material (“a number of heating units 98 that are used to heat the moldable material that is contained in the article defining cavity 96 during portions of the molding process.”, Pa [0037]).
In another embodiment of Fig. 8, Winget further teaches that at least one part of said wall is a porous part (“a sintered vent assembly 202”), wherein the at least one porous part is formed by or comprises a porous insert (“a porous plug 208”) inserted into an opening (“a mold cutout 204”) extending one of into and through said wall (Pa [0048]), wherein the at least one porous insert forms a first vent for the mold cavity (“porous plug 208 allows the air that is displaced by the introduction of a thermoplastic resin 218 into the honeycomb forming cavity 214 to be vented to atmosphere via the channel 212 and the porous plug 208.”, Pa [0048]). Thus, one would have found it obvious to provide the sintered vent assembly with the mold 90 in order to vent the air that is displaced by the introduction of a thermoplastic resin into the honeycomb forming cavity to atmosphere. Even though Winget is silent to at least one further vent, one would have found it obvious to provide another sintered vent assembly in order to vent the air from the cavity, since it has been held that the mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See In re Harza, 124 USPQ 378 (CCPA 1960) (see MPEP § 2144.04).
It is noted that the limitations “baking” in line 2 and “to a baking temperature for the liquid batter” in lines 4-5 are intended uses since the prior art structure is capable of performing the intended use. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987).
It is noted that the limitation “liquid batter” in lines 3-4 is an intended use since the prior art structure is capable of working the material during the operation. It has been held that “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
With respect to claim 2, Winget as applied to claim 1 above teaches that the at least one porous insert (“a porous plug 208”) is or comprises a porous body.
With respect to claim 3, Winget as applied to claim 2 above further teaches that the porous body is made of metal (“Porous plug 208 comprises a sintered material such as, for example, aluminum, copper, nickel, steel, bronze…”, Pa [0049]).
With respect to claim 4, Winget as applied to claim 2 above further teaches that the porous body is comprised in a sleeve (“the body portion 206”) (“Porous plug 208 is mounted in sintered vent assembly 202 via a shoulder portion 210 that is defined in the body portion 206”, Pa [0048]).
With respect to claim 7, Winget as applied to claim 1 above further teaches that the porous inserts are made using sintered metal or ceramic (“Porous plug 208 comprises a sintered material such as, for example, aluminum, copper, nickel, steel, bronze, porcelain, and brass”, Pa [0049]).
With respect to claim 8, Winget as applied to claim 1 above does not explicitly teach that the at least one porous insert or a porous body of such insert has a porosity of at least 15%, but further teaches that porous plug 208 permits the flow of air therethrough, but generally prevents the passage of a moldable material such as, for example, a thermoplastic resin therethrough (Pa [0049]). One would have found it obvious to select the optimum porosity of the porous plug by routine experimentation in order to permit the flow of air therethrough but prevent the passage of a moldable material, since it has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); and The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
With respect to claim 11, Winget as applied to claim 1 above further teaches that a predetermined amount of a thermoplastic resin, elastomer, or like material is injected into the article defining cavity 96 (Pa [0039]), but is silent to an injector for injecting material into the mold cavity. It is noted that the limitation “connected to an injector for injecting…” is an intended use since the mold of Winget can be used with an injector. The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). Alternatively, one would have found it obvious to provide an injector with Winget’s mold in order to inject the material into the article defining cavity.
With respect to claim 12, Winget as applied to claim 1 above further teaches that porous plug 208 allows the air that is displaced by the introduction of a thermoplastic resin 218 into the honeycomb forming cavity 214 to be vented to atmosphere via the channel 212 and the porous plug 208 (Pa [0049]), but is silent to a pump connected to the at least one porous insert. It is noted that the limitation “a pump is connected to…” is an intended use since the mold of Winget can be used with a pump. The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). Alternatively, one would have found it obvious to provide a pump in order to suction the vented air.
With respect to claim 13, Winget as applied to claim 1 above further teaches that the at least one porous insert is designed for at least keeping batter inside the at least one mold cavity and removing vapor generated from the batter from the at least one mold cavity (“Porous plug 208 permits the flow of air therethrough, but generally prevents the passage of a moldable material such as, for example, a thermoplastic resin therethrough”, Pa [0049]).
With respect to claim 14, Winget as applied to claim 1 above further teaches that sintered vent assembly 202 is received within a mold cutout 204, and includes a body portion 206 and a porous plug 208 (Pa [0048]) and porous plug 208 comprises a sintered material such as, for example, aluminum, copper, nickel, steel, bronze, porcelain, and brass (Pa [0049]), thus the at least one porous insert is removably mounted in said mold wall. It is noted that the limitation “it can be cleaned outside the mold” is an intended use since the porous plug of Winget can be used for the claimed operation. The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Winget et al. (US 2002/0121718A1) as applied to claim 1 above, and further in view of Murphy (US 6,042,361A).
With respect to claim 9, Winget as applied to claim 1 above does not explicitly teach that the mold cavity has a cavity surface and each porous insert has a porous surface in the cavity surface, facing the mold cavity, wherein the porous surface of the one porous insert or the combined porous surface of the porous inserts has a surface area which is smaller than half of a surface area defined by the cavity surface.
In the same field of endeavor, injection mold, Murphy teaches that the venting pin 50 of the assembly 11 has an end face or surface 49 with a gas hole 51 formed therethrough to permit air from the article-defining cavity 16 to pass through an insert 52 positioned in an elongated aperture 54 of the pin 50, the elongated aperture 54 is formed completely through the venting pin 50 in communication with the article-defining cavity 16 through the gas hole 51, the insert 52 permits the flow of air therethrough but prevents the passage of molten plastic through the gas hole 51 and into the aperture 54, and the venting pin 50 may comprise a conventional ejector pin which has been hollowed out to form the aperture 54 therethrough (co 4 li 11-22), and the insert 52 and the gas hole 51 are sized so that the insert 52 and the end surface 49 form a "Class A" surface on the article formed within the article-defining cavity 16 (co 4 li 30-33). Murphy further shows in Fig. 1 that the porous surface of the insert 52 has a surface area which is smaller than half of a surface area defined by the cavity surface.
It has been obvious to one of ordinary skill in the art before the effective filing of the invention to modify Winget with the teachings of Murphy to substitute Murphy’s venting pin for Winget’s vent assembly in order to vent air from the cavity and eject the article having a "Class A" surface.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Winget et al. (US 2002/0121718A1) as applied to claim 1 above, and further in view of Matsumoto et al. (US 5,730,926A-of record).
With respect to claim 23, Winget as applied to claim 12 above is silent to the pump arranged for suction and pressurizing, but since Winget teaches that porous plug 208 allows the air that is displaced by the introduction of a thermoplastic resin 218 into the honeycomb forming cavity 214 to be vented to atmosphere via the channel 212 and the porous plug 208 (Pa [0049]), one would have found it obvious to provide a pump in order to suction the vented air. But Winget does not teach a pump arranged for pressurizing.
In the same field of endeavor, injection molding, Matsumoto teaches that the upper open end portion of vertical non-resin fluid channel 12a has metallic porous material 14 fittedly inserted therein, it is required that metallic porous material 14 does not permit the molten resin to intrude thereinto, but permits the pressurized non-resin fluid to flow smoothly therethrough, and metallic porous material 14 is advantageously made of, for example, sintered granular stainless steel (co 10 li 58-65). Matsumoto further teaches that a pressurized non-resin fluid is introduced into the mold cavity on a side of the first surface of the molten resin mass to thereby press the molten resin mass against a cavity inner wall facing the second surface (which cavity inner wall is remote from the side of the introduction of the non-resin fluid), the occurrence of a sink mark can be effectively prevented without the occurrence of a burr, thereby producing a shaped resin article having an excellent surface finish (co 3 li 41-49).
It has been obvious to one of ordinary skill in the art before the effective filing of the invention to modify Winget with the teachings of Matsumoto to perform introducing a pressurized non-resin fluid into the mold cavity via the channel 212 and the porous plug 208 of Winget in order to effectively prevent the occurrence of a sink mark, and one would have found it obvious to allow the pump for pressurizing in order to supply the pressurized non-resin fluid into the mold cavity as well.
Claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Winget et al. (US 2002/0121718A1) in view of Matsumoto et al. (US 5,730,926A-of record).
With respect to claim 24, Winget teaches a mold (“mold 90”, Pa [0036], Figs. 6, 7A, 7B) comprising:
a mold including a mold cavity (“an article defining cavity 96”);
at least one heating element (“a number of heating units 98”) for heating the mold cavity and material inserted into said mold cavity (“a number of heating units 98 that are used to heat the moldable material that is contained in the article defining cavity 96 during portions of the molding process.”, Pa [0037]), wherein the at least one mold cavity is defined by at least a mold wall (“an article defining cavity 96 is defined between the mold halves 92 and 94”, Pa [0037]).
In another embodiment of Fig. 8, Winget further teaches that at least one part of said wall is a porous part (“a sintered vent assembly 202”), wherein the at least one porous part is formed by or comprises a porous insert (“a porous plug 208”) inserted into an opening (“a mold cutout 204”) extending into or through said wall (Pa [0048]), wherein the at least one porous insert is designed for at least keeping material inside the at least one mold cavity and removing vapor generated from the material from the at least one mold cavity (“porous plug 208 allows the air that is displaced by the introduction of a thermoplastic resin 218 into the honeycomb forming cavity 214 to be vented to atmosphere via the channel 212 and the porous plug 208.”, Pa [0048]; “Porous plug 208 permits the flow of air therethrough, but generally prevents the passage of a moldable material such as, for example, a thermoplastic resin therethrough.”, Pa [0049]). Thus, one would have found it obvious to provide the sintered vent assembly with the mold 90 in order to vent the air that is displaced by the introduction of a thermoplastic resin into the honeycomb forming cavity to atmosphere.
It is noted that the limitation “baking” in lines 1-2 is an intended use since the prior art structure is capable of performing the intended use. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987).
It is noted that the limitation “liquid batter” in lines 1, 3, etc. is an intended use since the prior art structure is capable of working the material during the operation. It has been held that “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Winget as applied above further teaches that a predetermined amount of a thermoplastic resin, elastomer, or like material is injected into the article defining cavity 96 (Pa [0039]), but is silent to an injector operably connected to the mold cavity for injecting the material into the mold cavity. One would have found it obvious to provide an injector with Winget’s mold in order to inject the material into the article defining cavity.
Winget as applied above does not explicitly teach that a pump is connected to the at least one porous insert, wherein the pump is designed for providing suction through the at least one porous insert when the mold is closed and overpressure when the mold is open for expelling a product from the mold cavity, but since Winget teaches that porous plug 208 allows the air that is displaced by the introduction of a thermoplastic resin 218 into the honeycomb forming cavity 214 to be vented to atmosphere via the channel 212 and the porous plug 208 (Pa [0049]), one would have found it obvious to provide a pump in order to suction the vented air. But Winget does not teach a pump arranged for providing overpressure when the mold is open for expelling a product from the mold cavity.
In the same field of endeavor, injection molding, Matsumoto teaches that the upper open end portion of vertical non-resin fluid channel 12a has metallic porous material 14 fittedly inserted therein, it is required that metallic porous material 14 does not permit the molten resin to intrude thereinto, but permits the pressurized non-resin fluid to flow smoothly therethrough, and metallic porous material 14 is advantageously made of, for example, sintered granular stainless steel (co 10 li 58-65). Matsumoto further teaches that a pressurized non-resin fluid is introduced into the mold cavity on a side of the first surface of the molten resin mass to thereby press the molten resin mass against a cavity inner wall facing the second surface (which cavity inner wall is remote from the side of the introduction of the non-resin fluid), the occurrence of a sink mark can be effectively prevented without the occurrence of a burr, thereby producing a shaped resin article having an excellent surface finish (co 3 li 41-49).
It has been obvious to one of ordinary skill in the art before the effective filing of the invention to modify Winget with the teachings of Matsumoto to perform introducing a pressurized non-resin fluid into the mold cavity via the channel 212 and the porous plug 208 of Winget in order to effectively prevent the occurrence of a sink mark, and one would have found it obvious to allow the pump for pressurizing in order to supply the pressurized non-resin fluid into the mold cavity as well.
With respect to claim 25, the combination as applied to claim 24 above further teaches that the porous inserts have a combined surface area facing the at least one mold cavity (Matsumoto , Fig. 4), further comprising a product formed inside the at least one mold cavity which has a dry weight, but does not explicitly teach that the ratio of the combined surface area for the or each mold cavity and the dry weight of the product formed therein is between 0.07 and 0.7 cm2/gram.
It is noted that the limitation “the ratio of the combined surface area for the or each mold cavity and the dry weight of the product formed therein …” is an intended use since the mold of the prior arts is capable of forming the product having the claim ratio. The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUNJU KIM whose telephone number is (571)270-1146. The examiner can normally be reached on 8:00-4:00 EST M-Th; Flexing Fri.
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/YUNJU KIM/Primary Examiner, Art Unit 1742
