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 without traverse of Group l, a mold, claims 1-14 in the reply filed on 10/17/2025 is acknowledged. Claims 15-22 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The information disclosure statement (IDS)s submitted on 08/21/2023, 01/24/2025 and 10/17/2025 have been considered by the examiner.
Claim Objections
Claims 6 and 7 are objected to because of the following informalities:
In claim 6, Applicant has been advised to replace “the at least one porous inserts” in line 2 to -- the at least one porous insert --; and
Applicant has been advised to replace “the porous inserts are” in line 2 to -- the at least one porous insert is --.
Appropriate correction is required.
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 1-14 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 the limitation “preferably” in line 4 which would be interpreted as “for example”, “or the like”, or “such as”. The phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 “extending into said wall”, and the claim also recites “extending through said wall” 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.
Claim 5 recites the limitation “preferably” in line 2. It renders the claim indefinite because of the same reason above.
Claim 7 recites the limitation “especially” in line 2. It renders the claim indefinite because of the same reason above.
Claim 8 recites the limitation “preferably” in line 3. It renders the claim indefinite because of the same reason above.
The remaining dependent claims 2-4, 6 and 9-14 are also rejected under 112 (b) because they depend from, and thus include all the limitations of rejected claim 1.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-3, 5-7, 9 and 11-14 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Matsumoto et al. (US 5,730,926).
With respect to claim 1, Matsumoto teaches a mold (Fig. 4) comprising at least one mold cavity (“mold cavity 2”, co 10 li 49) defined by at least a mold wall (“inner wall 2b of movable mold half 1b”, co 10 li 57), wherein at least one part of said wall is a porous part, wherein the at least one porous part is formed by or comprises a porous insert (“metallic porous material 14”) inserted into an opening extending through said wall (“vertically extending channel 12a”, co 10 li 51-52) (“The upper open end portion of vertical non-resin fluid channel 12a has metallic porous material 14 fittedly inserted therein.”, co 10 li 58-60).
With respect to claim 2, Matsumoto as applied to claim 1 above teaches that the at least one porous insert is or comprises a porous body (“metallic porous material 14”).
With respect to claim 3, Matsumoto as applied to claim 2 above teaches that the porous body is made of metal (“metallic porous material 14”).
With respect to claim 5, Matsumoto as applied to claim 1 above further teaches that a series of porous inserts is provided in said wall, preferably at least two porous inserts (Fig. 4).
With respect to claim 6, Matsumoto as applied to claim 1 above further teaches that the at least one porous inserts forms a first vent for the mold cavity (“additional route for the introduction of a pressurized non-resin fluid into mold cavity 2”, co 10 li 48-49; “the second inlet”, co 10 li 65), wherein at least one further vent is provided for the mold cavity (“the other source which communicates with the other non-resin fluid inlet (first inlet) positioned at the upper open end of ejector pin slide hole 5a.”,co 11 li 1-3).
With respect to claim 7, Matsumoto as applied to claim 1 above further teaches that the porous inserts are made using sintered material, especially sintered metal or ceramics (“Metallic porous material 14 is advantageously made of, for example, sintered granular stainless steel.”, co 10 li 63-65).
With respect to claim 9, Matsumoto as applied to claim 1 above further teaches that the mold cavity has a cavity surface and each porous insert has a porous surface in the cavity surface, facing the mold cavity (“Vertically extending non-resin fluid channel 12a has an open end in inner wall 2b of movable mold half 1b, the open end serving as a second inlet for the non-resin fluid. The upper open end portion of vertical non-resin fluid channel 12a has metallic porous material 14 fittedly inserted therein.”, co 10 li 55-60), 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 (Fig. 4).
With respect to claim 11, Matsumoto as applied to claim 1 above further teaches that the mold is provided with or connected to an injector for batter into the mold cavity (“the injection molding machine”, co 13 li 22). It is noted that the limitation “provided with or connected to an injector” is an intended use since the mold of Matsumoto 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).
With respect to claim 12, Matsumoto as applied to claim 1 above is silent to a pump connected to the at least one porous insert. However, it is noted that the limitation “a pump is connected to the at least one porous insert” is an intended use since the mold of Matsumoto 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).
With respect to claim 13, Matsumoto 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 (“It is required that metallic porous material 14 does not permit the molten resin to intrude thereinto”, co 10 li 60-62), and but permits the pressurized non-resin fluid to flow smoothly therethrough (co 10 li 62-63). It is noted that the limitation “removing vapor generated from the batter from the at least one mold cavity” in lines 3-4 is an intended use since the mold of Matsumoto is capable of performing 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).
With respect to claim 14, Matsumoto as applied to claim 1 above teaches that the upper open end portion of vertical non-resin fluid channel 12a has metallic porous material 14 fittedly inserted therein (co 10 li 58-60). It is noted that the limitation “the at least one porous insert is removably mounted in said mold wall, such that it can be cleaned outside the mold” is an intended use since the mold of Matsumoto is capable of performing 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 Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 4, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (US 5,730,926) as applied to claims 1 and 2 above.
With respect to claim 4, Matsumoto as applied to claim 2 above further teaches that in another embodiment (Fig. 5), the porous body is comprised in a sleeve (“ejector pin 5 may be designed to have a hollow structure serving as a non-resin fluid channel 12a having metallic porous material 14 fittedly inserted in its open end portion on the side of mold cavity 2.”, co 11 li 45-18).
With respect to claim 8, Matsumoto as applied to claim 1 above further teaches that 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 (co 10 li 60-63), but 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%, preferably at least 20%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the optimum porosity of Matsumoto’s metallic porous material by routine experimentation in order to not permit the molten resin to intrude thereinto, but permit the pressurized non-resin fluid to flow smoothly therethrough, 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 10, Matsumoto as applied to claim 1 above further teaches that in another embodiment (Fig. 6) the mold comprises at least one heating element for heating the mold cavity and material inserted into said mold cavity (“inductor coil 16 is closely contacted with cavity inner wall 2a, and induction heating of cavity inner wall 2a is effected.”, co 12 li 31-33).
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 8:00-4:00 EST M-Th; Flexing Fri.
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/YUNJU KIM/Primary Examiner, Art Unit 1742