The arguments and amendments submitted 07/07/2026 have been considered. In light of amendments made, all prior USC § 112(b) rejections are hereby withdrawn. The merits of the claims, however, remain unpatentable over the prior art as set forth below.
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 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.
Claims 1-5, 7-10, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP S61-205104 (hereinafter referred to as JP ’104), previously made of record with an English translation provided by applicant.
Regarding claim 1, JP ’104 teaches a rubber mold (rubber mold with upper and lower parts in Section 1 of the Summary of the Invention on pg. 4 and as shown in Fig. 1) for cold isostatic pressing (“a rubber mold used for the CIP molding” per pg. 4) with a plate shape (disk-shaped per pg. 4 and as shown in Fig. 1) for subjecting a green compact (the recitation of a green compact is merely the material worked upon by the apparatus and therefore does not limit the apparatus per MPEP §2114.II) to cold isostatic pressing processing (pg. 4),
wherein one or more approximately columnar hole sections are provided on at least one or more bottom surfaces (“a large number of cylindrical holes 2 are formed in a lower mold 1” per pg. 4), and
wherein, for each of the one or more hole sections, a diameter of an opening of the hole section is denoted by a, and a maximum depth of the hole section is denoted by b and a maximum dimension of the green compact is denoted by L (these recitations are merely arbitrary definitions and thus do not limit the claim by themselves),
wherein a/b is approximately 1 (“The diameter and the depth of the holes are substantially equal to each other” per pg. 4 and therefore a/b is substantially equal to 1), thus falling within the claimed range of less than 2.0.
Regarding the recitation that 1.01 < a/L < 1.82 and 1.01 < b/L < 1.82, this recitation is based upon a property L of the green compact, which is not part of the claimed apparatus, and therefore does not further limit the apparatus per MPEP §2114.II for the reasons described above.
Regarding claim 2, JP ’104 teaches a depth of the hole section at an edge of a bottom surface of the hole section is denoted by g, the edge being an intersection between a side surface of the hole section and the bottom surface of the hole section, and g excludes any chamfered portion (this recitation is merely an arbitrary definition and thus does not limit the claim by itself), wherein (b - g)/b = 0 (for the square hole profile when viewed in the cross section as shown in the bottom half of Fig. 2, b = g and therefore (b - g)/b = 0), thus falling within the claimed range.
Regarding claim 3, JP ’104 teaches the rubber mold for cold isostatic pressing has an engaging section at one or more locations (engaging sections 4 and 5 as shown in Fig. 2).
Regarding claim 4, JP ’104 teaches the engaging section is provided at one or more locations that are closer to the edge of a bottom surface of the rubber mold for cold isostatic pressing than an intermediate line between a center of the bottom surface and an edge of the bottom surface (as shown in Fig. 1).
Regarding claims 5 and 8, JP ’104 teaches a ratio of the diameter with respect to the maximum depth of the hole section is 1 (“The diameter and the depth of the holes are substantially equal to each other” per pg. 4 and therefore a/b is substantially equal to 1), thus falling within the claimed range for each of these claims.
Regarding claim 7, these features are based upon a property of the green compact, which is not part of the claimed apparatus, and therefore these claims do not further limit the apparatus for the reasons described above.
Regarding claim 9, JP’104 teaches a plurality of the hole sections (as shown in Fig. 1),
wherein, for each of the plurality of hole sections, a diameter of an opening of the hole section is denoted by a, and a maximum depth of the hole section is denoted by b, and a horizontal distance between adjacent hole sections among the plurality of hole sections is denoted by c (these recitations are merely arbitrary definitions and thus do not limit the claim by themselves), and a/c and b/c are 1:1.4 to 1:2 (pg. 4), which are both less than 4:1 and thus fall within the claimed ranges.
Regarding claim 10, JP ’104 teaches these features as described above for claims 2, 7, and 8.
Regarding claim 14, JP ’104 teaches the rubber mold for cold isostatic pressing has a disc shape (disk-shaped per pg. 4 and as shown in Fig. 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 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 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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over JP S61-205104.
Regarding claim 11, JP ’104 teaches an engaging depression (4 in Fig. 2) and an engaging projection (5 in Fig. 2) for preventing surface disengagement (as shown).
JP ‘104 does not explicitly teach there is no depression with a depth of 1.5 mm or more and no projection with a height of 1.5 mm or more other than the engaging depression and the engaging projection. Instead, JP ‘104 implies that there are depressions and projections of 2 mm depth or height which form the hole sections of the mold (1st sentence in Example section of original reference which teaches that the diameter and height of the article formed by molding are both 2 mm).
However, the courts have held that a mere change in size of a component is an obvious modification within the capability of one of ordinary skill in the art and does not distinguish over a prior art structure performing the same as the claimed structure but differing in size. See MPEP § 2144.04.IV.A, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955), and In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) for further details.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP S61-205104, as applied to claim 1 above, in view of Araiyama (JP H09241704A).
Regarding claim 12, JP ‘104 does not teach this feature.
However, Araiyama teaches a rubber mold for cold isostatic pressing having a hardness of rubber of the rubber mold within a Shore hardness range of 35 to 70 (abstract), thus largely encompassing the claimed range and rendering it obvious. A prior art range which encompasses, partially overlaps, or touches the claimed range is sufficient to establish a prima facie case of obviousness, in the absence of any unexpected results. See MPEP § 2144.05.I and In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Regarding claim 13, JP ’104 teaches an engaging section being at one or more locations, and an engaging depression and an engaging projection for preventing surface disengagement (as shown in Fig. 2).
JP ‘104 does not explicitly teach there is no depression with a depth of 1.5 mm or more and no projection with a height of 1.5 mm or more other than the engaging depression and the engaging projection. Instead, JP ‘104 implies that there are depressions and projections of 2 mm depth or height which form the hole sections of the mold (1st sentence in Example section of original reference which teaches that the diameter and height of the article formed by molding are both 2 mm).
However, the courts have held that a mere change in size of a component is an obvious modification within the capability of one of ordinary skill in the art and does not distinguish over a prior art structure performing the same as the claimed structure but differing in size. See MPEP § 2144.04.IV.A, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955), and In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984) for further details.
Araiyama teaches a rubber mold for cold isostatic pressing having a hardness of rubber of the rubber mold within a Shore hardness range of 35 to 70 (abstract), thus largely encompassing the claimed range and rendering it obvious. A prior art range which encompasses, partially overlaps, or touches the claimed range is sufficient to establish a prima facie case of obviousness, in the absence of any unexpected results. See MPEP § 2144.05.I and In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Response to Arguments
Regarding claim 1, Applicant presents an argument contending that the recitation that 1.01 < a/L < 1.82 and 1.01 < b/L < 1.82 distinguishes over the mold of JP ‘104.
However, this argument is not persuasive because it fails to take into account that this type of recitation based on the maximum dimension L of the green compact material worked upon by the rubber mold cannot limit the claim or provide a basis for patentability for the claimed mold apparatus per MPEP § 2115. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” 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)).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JRS/
Examiner
Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
