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 .
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.
Election/Restrictions
Applicant’s election without traverse of Species I (claims 13-26, 28, and 30-33) in the reply filed on 3/20/26 is acknowledged.
Claim Objections
Claim 28 is objected to because of the following informalities: line 2, “groupconsisting” should be changed to --group consisting--. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claim(s) 13-19, 21-26, and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kojima (WO 2013/121851 A1, cited in IDS filed 7/18/23).
Regarding independent claim 13, Kojima teaches a method of preventing a metal or metal alloy die cast part from attaching to a mold (paragraph [0007]) comprising:
applying a release agent (paragraph [0008], die-casting release agent emulsion composition) comprising a water-soluble silicone polymer (paragraph [0008], organopolysiloxane containing a polyether group) to an inner surface of a mold (paragraph [0058], applying to a mold, implied inner surface as composition used as a release agent); and injecting a molten metal or metal alloy into the mold after applying the release agent to the inner surface of the mold (paragraph [0002], for die casting, paragraph [0074], molten aluminum).
Regarding independent claim 17, Kojima teaches a method of casting a metal or metal alloy part (paragraph [0002], die casting, paragraph [0074], molten aluminum) comprising:
applying a release agent (paragraph [0008], release agent emulsion composition) comprising a water-soluble silicone polymer (paragraph [0008], organopolysiloxane containing a polyether group) to an inner surface of a mold (paragraph [0058], applying to a mold, implied inner surface as composition used as a release agent); and
injecting a molten metal or metal alloy into the mold (paragraph [0002], for die casting, paragraph [0074], molten aluminum was poured into a space, allowed to solidify).
Regarding claims 14 and 30, Kojima teaches wherein applying comprises spraying (paragraph [0058], spray).
Regarding claims 15, 18, and 19, Kojima teaches diluting the release agent with a solvent, wherein the solvent is water (paragraph [0008], includes water).
Regarding claim 16, Kojima teaches allowing the molten metal or metal alloy material to cool to form a solid part (implied by die casting with release agent and then releasing, paragraph [0074], allowed to solidify), and releasing the metal or metal alloy die cast part from the mold (implied by die casting with release agent and then releasing, paragraph [0074], release resistance was evaluated).
Regarding claim 21, Kojima teaches cooling the molten metal or metal alloy to form a cast metal or metal alloy piece (implied by die casting, note paragraph [0074], where molten aluminum was solidified, thus implying the molten aluminum was cooled).
Regarding claim 22, Kojima teaches releasing the metal or metal alloy part from the mold (implied by die casting with release agent and then releasing, paragraph [0074], release resistance was evaluated).
Regarding claim 23, Kojima teaches the water-soluble silicone polymer is a dimethicone copolymer (paragraph [0012], note formula (1) showing a polysiloxane, A1 may be R or R1, where R may be a monovalent hydrocarbon group of 1 to 20 atoms, thus encompassing a dimethicone).
Regarding claim 24, Kojima teaches the dimethicone copolymer comprises polyethylene glycol (paragraph [0012], note R1 is a polyoxylalkylene group and represented by -(CH2)o - (OC2H4)p - (OCH2CH(CH3))q - B, where -B may be OH, and p is 0 to 100 (note the group under p corresponds to the polyethylene glycol)).
Regarding claim 25, Kojima teaches the dimethicone copolymer comprises polypropylene glycol (paragraph [0012], note R1 is a polyoxylalkylene group and represented by -(CH2)o - (OC2H4)p - (OCH2CH(CH3))q - B, where -B may be OH, and q is 0 to 100 (note the group under q corresponds to the polypropylene glycol)).
Regarding claim 26, Kojima teaches dimethicone copolymer is branched (paragraph [0038], not particularly limited, polyether group may be attached to a side chain, one end, both ends, or both the side chain and both ends of the organopolysiloxane, see paragraph [0064-0065] showing polyether groups attached at side chains, construed as branched).
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.
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.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima in view of Miki et al (US 4,252,174).
Regarding claim 20, Kojima teaches die casting, but is quiet to where the molten metal or metal alloy is injected at a pressure of about 150 to about 6500 tons.
However, Miki et al teaches a 250 ton die casting machine is known (col 3 lines 25-50).
It would have been obvious to one of ordinary skill in the art to modify Kojima such that the molten metal is injected at a pressure within the claimed range, as the injection pressure is a known process parameter one would optimize through routine experimentation so as to operate in a normal operating condition.
"[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima.
Regarding claim 28, Kojima teaches the dimethicone copolymer comprises polypropylene glycol (paragraph [0012], note R1 is a polyoxylalkylene group and represented by -(CH2)o - (OC2H4)p - (OCH2CH(CH3))q - B, where -B may be OH, p is 0 to 100 and q is 0 to 100 (note the p group corresponds to polyethylene glycol and the q group corresponds to the polypropylene glycol), where p+q is 2 to 100). Kojima thus teaches a PEG Dimethicone and/or PEG/PPG Dimethicone with amounts of PEG/PPG ranging from 2 to 100, which encompasses the claimed composition.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Claim(s) 31-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima in view of Sakai et al (US 2011/0180228 A).
Regarding claims 31-33, Kojima teaches spraying, but is quiet to spraying at a pressure from about 60 psi to about 200 psi, from about 100 psi to about 750 psi, or at about 10 psi.
Sakai et al teaches a casting apparatus (abstract) having a release agent application unit (abstract). The release agent nozzles have a spraying air pressure of 0.01 to 10 MPa (paragraph [0173], note that this corresponds to 1.5 to 1450 psi). Sakai further teaches that the amount of the release agent is controlled by selecting the application time or the application flow rate of the spray (paragraph [0178]).
It would have been obvious to one of ordinary skill in the art to modify Kojima such that the mold release agent is sprayed within the claimed ranges, as the spray pressure is a result-effective variable that affects the amount of the release agent applied.
"[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKY YUEN whose telephone number is (571)270-5749. The examiner can normally be reached 9:30 - 6:00.
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/JACKY YUEN/
Examiner
Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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