DETAILED ACTION
The papers submitted on 02 November 2023, amending claims 1-15, are acknowledged.
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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-13, drawn to a tool.
Group II, claims 14-15, drawn to a method.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the tool, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of WO 2020/050851 A1. See further the Written Opinion of parent PCT/EP2022/061457.
During a telephone conversation with Stephen Murray on 13 May 2025 a provisional election was made without traverse to prosecute the invention of group I, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-15 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: the instant specification lacks section headings which are conventional in US practice. Additionally, the instant specification recites a “LIST OF REFERENCE NUMERALS” at ¶¶ 55-64 which are not conventional in US practice.
Appropriate correction is required.
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, it may be omitted or the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
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 1-13 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.
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 2 recites the broad recitation “the main part comprises the same material as the insulator or a material different from the insulator”, and the claim also recites “the main part comprises… a tool steel.” which is the narrower statement of the range/limitation.
Claim 7 recites the broad recitation “cavities are provided within the insulator and/or the main part”, and the claim also recites “cavities are provided within the insulator and/or the main part… the cavities being fluid channels for conveying a temperature- control fluid” or “cavities are provided within the insulator and/or the main part… the cavities in particular being fluid channels for conveying… a temperature-control gas”. which are narrower statements of the range/limitation.
Claim 8 recites the broad recitation “the insulator is integrally applied… to the material of the main part”, and the claim also recites “the insulator is integrally applied… by a rapid manufacturing method, to the material of the main part” which is the narrower statement of the range/limitation.
Claim 11 recites the broad recitation “the surface of the insulator facing away from the main part is machined after production”, and the claim also recites “the surface of the insulator facing away from the main part is machined after production… by means of polishing, grinding, eroding or milling” which is the narrower statement of the range/limitation.
Claim 13 recites the broad recitation “[a] primary shaping tool”, and the claim also recites “a plastics primary shaping tool” 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.
Claims 1, 4-6, 8, and 11 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 "the molten material to be shaped" in line 3.
Claim 4 recites the limitation "the region of the insulator" in line 2.
Claim 5 recites the limitation "the thickness of the insulator" in line 2.
Claim 6 recites the limitation "the thickness of the insulator" in line 2.
Claim 8 recites the limitation "the material of the main part" in line 3.
Claim 11 recites the limitation "the surface of the insulator" in line 2.
There is insufficient antecedent basis for these limitations in the claims.
Claims 3, 9, 10, and 12 are rejected for their dependence.
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 1-5, 7-10, and 12-13 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Chen et al. (WO 2020/050851 A1).
Regarding claim 1, Chen discloses a tool insert for a primary shaping tool, comprising a thermal insulator 104 disposed on a main part 102 having a molding surface 106 contacted by the molten material to be shaped, said surface being at least partly spaced from the main part of the tool insert by a thermal insulator, wherein the thermal insulator comprises bulk metallic glass (FIG. 1; ¶ 16).
Regarding claim 2, Chen discloses the main part comprises the same material as the insulator or a material different from the insulator, in particular a tool steel (¶¶ 17-18).
Regarding claim 3, Chen discloses the molding surface of the tool insert or at least a region of the molding surface is formed by the insulator itself (FIG. 1).
Regarding claim 4, Chen discloses an anti- wear layer is disposed on the insulator (¶ 23).
Regarding claim 5, Chen discloses the thickness of the insulator is at least largely constant over its planar extension (¶ 19; FIG. 1).
Regarding claim 7, Chen discloses cooling channels for coolant (¶¶ 27, 29, 43).
Regarding claim 8, Chen discloses that the insulator is integrally applied to the material of the main part or to an insert introduced therein (¶¶ 33-34, 44).
Regarding claim 9, Chen disclose the bulk metallic glass is an alloy which is based on an element selected from the group consisting of Co, Fe, Ti, Zr, Cu, Au, Pt and Mg (¶ 18).
Regarding claim 10, Chen discloses the bulk metallic glass is an alloy containing Zr and Cu (¶ 18).
Regarding claim 12, Chen discloses the tool insert is for a plastics injection molding tool (title/abstract).
Regarding claim 13, Chen discloses a plastics primary shaping tool, comprising at least one cavity enclosed by at least two tool inserts, wherein at least one of said tool inserts is a tool insert according to claim 1 (title/abstract, ¶¶ 16+; FIG. 1).
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 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.
Alternatively, claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (WO 2020/050851 A1) as applied to claim 1 above, further in view of Krommer et al. (US 2011/0229595 A1).
Chen discloses cooling channels for coolant (¶¶ 27, 29, 43).
Chen does not appear to expressly disclose a temperature control gas.
However, Krommer discloses similar temperature control channels in a molding tool (title/abstract) for carbon dioxide gas (¶ 17, 20).
At the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the process of Chen to include the channels for gas of Krommer, because such a temperature control medium is conventional in the art and could be used with expected results.
Claims 6, 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (WO 2020/050851 A1) as applied to claim 1 above, further in view of Hofmann (US 9,579,718 B2).
Alternatively, regarding claim 8, Chen does not appear to expressly disclose integrally applying the insulator by a rapid manufacturing method.
However, Hofmann discloses a method of forming amorphous metal using additive manufacturing (title/abstract, 17:56+; FIG. 22).
At the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the process of Chen to include the rapid manufacturing of Hoffman, in order to create thicker layers of amorphous metals as desired (Hoffman 1:42+).
Regarding claim 6, Hoffman suggests the thickness of the amorphous metal can be varied over its planar extension (12:41+; FIG. 9A-9D).
Regarding claim 11, Hoffman suggests further machining the amorphous metal after production, such as by polishing, grinding, eroding or milling (16:64-17:55).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gläser; Tim et al.
US 20220118511 A1
Applicant’s related work
Stolpe; Moritz et al.
US 20220161312 A1
Hosoe, Shigeru
US 20040211222 A1
Mold with amorphous metal surface
Busch; Ralf et al.
US 11214854 B2
Applicant’s related work
Hinzpeter; Udo
US 9061445 B2
Mold with cooling channels and surface layers
Hirata; Toru
US 7919035 B2
Mold with amorphous metal surface; US version of Foreign IDS document
Bien; Elena et al.
US 11318649 B2
Applicant’s related work
Wachter; Hans Jürgen et al.
US 9499891 B2
ELSEN; Alexander et al.
US 20170151609 A1
FUJITA Y et al.
JP 2013067168 A
Mold with amorphous metal surface
KUERTEN CHRISTIAN et al.
DE 19918428 C1
Gas cooled injection mold
SCHOENHAMMER Christof
DE 102021108082 A1
Mold with cooling channels and surface layers
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin A Schiffman whose telephone number is (571)270-7626. The examiner can normally be reached M-F 9a-530p EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571)272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN A SCHIFFMAN/ Primary Examiner, Art Unit 1742