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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/26/2026 has been entered.
Response to Amendment
Claims 1-2, 4-6, and 8-19 are pending. Claim 7 is canceled. Claims 9-13 remain withdrawn.
In view of the amendment, filed 02/26/2026, claim rejections under 35 U.S.C. 112(a) and 112(b) are withdrawn from the previous Office Action mailed 11/28/2025.
Prior art rejections and nonstatutory double patenting rejections are updated in response to claim amendments.
The examiner notes that a complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action. Such a response is required even when the nonstatutory double patenting rejection is provisional. As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. See MPEP 804. In this case, while the action is not fully responsive with respect to the NDSP rejections, the examiner is accepting the amendment as an adequate reply at this time, but Applicant is notified of the deficiency.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 4, 6, 8, and 17 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Becher et al., US 20170157812 A1 (of record).
Regarding claim 1, Becher discloses a gasket molding method for molding a gasket on a workpiece (method for producing a gasket on a component using a shaping tool, Abstract; the shaping tool being a mold, [0016]), comprising, in the order recited:
An application step (Fig. 3 step 1, introducing sealing material; the sealing material being applied by a squeegee, [0044]) for applying an active energy ray curable liquid (sealing material, [0044], which is curable by UV irradiation, [0046]) into a cavity of a molding die (into a cavity of the shaping tool, [0044]) using a dispenser (using a squeegee that applies sealing material into the cavity, [0044], i.e., that dispenses sealing material and thus is a dispenser);
A bonding step (Fig. 3 steps 2-3, placing the component onto the lower face of the shaping tool provided with the shaping material and pressing the component onto the tool, [0045]) for bonding the molding die coated with the active energy ray curable liquid and the workpiece (pressing the shaping tool provided with the sealing material and the component together, [0045]), wherein at least one of position control and load control is performed (the component is placed onto the molding tool and pressed onto the molding tool, [0045], such that both position control (positioning of the component relative to the molding tool by placing the component onto the molding tool) and load control (pressing the component onto the tool) are performed);
A curing step (Fig. 3 step 4, curing, [0046]) for curing the applied active energy ray curable liquid by irradiation with an active energy ray (curing the sealing material with UV irradiation, [0046]); and
A mold release step (Fig. 3 step 5, removing the tool, [0047]) for pulling off the gasket from the molding die together with the workpiece (the tool is removed from the component to be sealed and the gasket joined to the same, [0047]).
Regarding claim 2, Becher discloses the method according to claim 1, wherein, in the application step, the active energy ray curable liquid is applied in an amount equal to or more than 100% of a volume of the cavity (the sealing material is applied to the cavity until the cavity is completely filled with the sealing material, [0044]).
Regarding claim 4, Becher discloses the method according to claim 1, wherein the molding die has transparency (has UV transparency, [0031], [0041], UV transmissibility, [0046]).
Regarding claim 6, Becher discloses the method according to claim 1, wherein, in the curing step, the active energy ray is irradiated from a side of the molding die opposite to a molding surface, wherein the molding surface is a surface of the cavity of the molding die (is irradiated through the molding die, [0046], i.e., from a side opposite to the molding surface including the sealing material and component).
Regarding claim 8, Becher discloses the method according to claim 1, wherein the workpiece is a fuel cell component (the component being designed for use in fuel cells, [0018], [0020]).
Regarding claim 17, Becher discloses the method according to claim 1, wherein, in the application step, the dispenser applies the active energy ray curable liquid while moving (the sealing material is applied and pressed through a screen by way of the squeegee and introduced into the cavity, this step is repeated until the cavity is completely filled with the sealing material, [0044], i.e., there is movement of the dispenser relative to the cavity).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 5 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Becher et al., US 20170157812 A1, as applied to claim 1 and 17 above.
Regarding claim 5, Becher discloses the method according to claim 1. In the exemplified method, Becher discloses the molding die is made from silicone ([0041], [0044]) and thus does not disclose the molding die is made of one or more materials selected from a group consisting of polymethyl methacrylate, cycloolefin polymer, polycarbonate, and glass. However, Becher further discloses that, instead of silicone, suitable materials for the mold cavity include at least glass, polycarbonate, and polymethyl methacrylate (PMMA) ([0026]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute polymethyl methacrylate, polycarbonate, and/or glass in place of the silicone material as a substitution of one known UV-transparent mold material for another yielding predictable results. MPEP 2143(I)(B). Note also that the selection of a known material based on its suitability for its intended use has been shown to support a prima facie obviousness determination (MPEP 2144.07).
Regarding claim 18, Becher discloses the method according to claim 17. Becher is silent as to the dispenser moving in a unicursal trajectory.
However, Becher discloses the shaping tool 14 and the cavity 13 have an approximately square shape and could alternately have a shape such as a circle or ellipse ([0043], Fig. 2). Accordingly, the cavity into which the liquid is dispensed has a simple, regular shape with no disclosure of overlapping or discontinuous geometry. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further specify the dispenser moves in a unicursal trajectory, e.g., while applying the liquid into the cavity having a unicursal shape, in order to predictably fill the cavity with the liquid.
Claim(s) 14-16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Becher et al., US 20170157812 A1, as applied to claim 1 above, in view of Namiki, JP 2008307443 A (of record, text citations to Espacenet translation provided 11/28/2025), and Barrall et al., US 20080280040 A1 (of record).
Regarding claim 14, Becher discloses the method according to claim 1. Becher discloses applying the curable liquid into the cavity by screen printing with a squeegee ([0021], [0044]) or an automated robotic system ([0023]). Becher does not disclose the dispenser comprises a tank or syringe, and a pump.
In the analogous art of manufacturing sealing members ([0001]), Namiki discloses a dispenser for dispensing a sealing material (dispensing apparatus 1, Figs. 1-2, [0009]). Namiki discloses the dispenser comprises a tank (sealing material reservoir 22, Figs. 1-2, [0010]) or syringe (valve unit 10, Figs. 1-2) and a pump (pressuring means 21, Figs. 1-2, [0010]).
Analogous art Barrall in the field of seal manufacturing (Abstract) teaches that syringe dispensing was a known alternative to screen printing or other automatic dispensing methods for dispensing sealing material for forming a gasket ([0099]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the dispenser of Namiki comprising a syringe and a pump for syringe dispensing in place of the dispenser of Becher comprising a squeegee for screen printing because the substitution of one known element for another yields predictable results to one of ordinary skill in the art. MPEP 2143(I)(B). In this case, each type of dispensing technique was known in the art for dispensing sealing material.
Regarding claim 15, modified Becher discloses the method according to claim 14, and the combination discloses, in the application step, the pump controls the flowrate of active energy ray curable liquid applied by the dispenser (Namiki: the sealing material is pressurized and sent to the valve section 10 by the pressurizing means 21, such that an amount of the liquid to be applied from the valve section 10 is controlled by the pressurizing means 21, in line with the present application, [0022]).
Regarding claim 16, modified Becher discloses the method according to claim 14, and the combination discloses the dispenser comprises a volumetric piston system with a plunger (Namiki: valve unit 10 includes piston 11 and plunger rod 12, Figs. 1-2, [0010]).
Regarding claim 19, Becher discloses the method according to claim 1. Becher discloses applying the curable liquid into the cavity by screen printing with a squeegee ([0021], [0044]) or an automated robotic system ([0023]). Becher does not disclose the dispenser comprises a nozzle that discharges the liquid in the application step.
In the analogous art of manufacturing sealing members ([0001]), Namiki discloses a dispenser for dispensing a sealing material (dispensing apparatus 1, Figs. 1-2). Namiki discloses the dispenser includes a syringe (valve unit 10) comprising a nozzle 15 for discharging sealing material (Figs. 1-2, [0010]).
Analogous art Barrall in the field of seal manufacturing (Abstract) evidences that syringe dispensing was a known alternative to screen printing or other automatic dispensing methods for dispensing sealing material for forming a gasket ([0099]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the dispenser of Namiki comprising a nozzle for syringe dispensing, such that, in the application step, the nozzle discharges the liquid, in place of the dispenser of Becher comprising a squeegee for screen printing because the substitution of one known element for another yields predictable results to one of ordinary skill in the art. MPEP 2143(I)(B). In this case, each type of dispensing technique was known in the art for dispensing sealing material.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-6, 8, and 17-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 10-11 of copending Application No. 18/879329 (reference application) in view of Becher et al., US 20170157812 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 1, claim 1 of the reference application recites the same method steps in the same order including an application step (application step), a bonding step (bonding step), a curing step (provisional curing step), and a mold release step (demolding step). Reference claim 1 recites that the molding die is bonded with the workpiece and thus it would have been obvious to one of ordinary skill in the art to recite at least one of position and/or load control being performed to predictably achieve said bonding, as taught by Becher (Fig. 3, placing and pressing) as applied above. Instant claim 1 is otherwise generic to reference claims 1-6 and 10-11 and thus is not patentably distinct from the reference application claims. Reference claim 4 recites the application step is performed using a dispenser.
Regarding instant claim 2, the reference claims are silent as to an application amount; however, it would have been obvious to one of ordinary skill in the art to apply an amount at least equal to 100% of a volume of the cavity in order to ensure complete filling of the molding die cavity.
Regarding instant claim 4, reference claim 1 recites the molding die is transparent.
Regarding instant claim 5, reference claim 5 recites the molding die is made of the same materials.
Regarding instant claim 6, reference claim 1 recites the molding die is transparent, implying the capability of light transmission through the molding die, and thus it would have been obvious to one of ordinary skill in the art to recite that the active energy ray is irradiated from an opposite side of the cavity from the sealing material, the light transmissive molding die side.
Regarding instant claim 8, reference claims 6 and 10 recite that the workpiece is a fuel cell component.
Regarding instant claim 17, reference claim 4 does not recite the dispenser applies the liquid while moving; however, doing so would have been obvious in order to press the liquid into the cavity and to move a sufficient amount of the liquid into the cavity for complete filling, as taught by Becher ([0021], [0044]).
Regarding instant claim 18, reference claim 4 does not recite the dispenser moves in a unicursal trajectory; however, doing so would have been obvious in order to dispense the liquid according to standard unicursal seal shapes, such as a square, circle, or ellipse, as taught by Becher ([0043]).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 14-16 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of copending Application No. 18/879329 (reference application) in view of Becher et al., US 20170157812 A1, as applied to claim 1 above, and Namiki, JP 2008307443 A, as applied above. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 14, reference claim 4 does not recite the dispenser comprises a tank or syringe, and a pump. Analogous art Namiki, as applied above, discloses that dispensers comprising a tank or syringe and a pump (Figs. 1-2) were known in the art for dispensing sealing material. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the dispenser included known structure such as a tank or syringe and a pump for performing the liquid application.
Regarding instant claim 15, reference claim 4 does not recite the pump controls the flowrate of the liquid applied by the dispenser in the application step. Analogous art Namiki discloses the pump controls the flowrate of liquid applied by the dispenser during the application (Namiki: the sealing material is pressurized and sent to the valve section 10 by the pressurizing means 21, such that an amount of the liquid to be applied from the valve section 10 is controlled by the pressurizing means 21, in line with the present application, [0022]). It would have been obvious to one of ordinary skill in the art to recite the pump controls the flowrate of the liquid applied by the dispenser in the application step in defining known structure for controllably providing the sealing material for dispensing.
Regarding instant claim 16, reference claim 4 does not recite the claimed limitations. Namiki discloses the dispenser comprises a volumetric piston system with a plunger (Namiki: valve unit 10 includes piston 11 and plunger rod 12, Figs. 1-2). It would have been obvious to one of ordinary skill in the art to recite the dispenser comprises a volumetric piston system with a plunger in order to define known structure for accurately dispensing the sealing liquid as taught by Namiki.
Regarding instant claim 19, reference claim 4 does not recite the claimed limitations. Namiki discloses the dispenser includes a nozzle 15 for discharging sealing material (Figs. 1-2). It would have been obvious to one of ordinary skill in the art to specify the dispenser comprises a nozzle and, in the application step, the nozzle discharges the active energy ray curable liquid in order to define a known structure for dispensing sealing material for the application.
Claims 1-2, 4-6, 8, and 17-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 14-17 of copending Application No. 19/104437 (reference application) in view of Becher et al., US 20170157812 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 1, claims 1 and 3 of the reference application recite the same method steps in the same order including an application step (application step), a bonding step (bonding step), a curing step (curing step), and a mold release step (demolding step). Reference claims 1/3 recite that the molding die is bonded with the workpiece and thus it would have been obvious to one of ordinary skill in the art to recite at least one of position and/or load control being performed to predictably achieve said bonding, as taught by Becher (Fig. 3, placing and pressing) as applied above. Instant claim 1 is otherwise generic to reference claims 1-6 and 14-17 and thus is not patentably distinct from the reference application claims. Reference claims 5 and 16 recite the application step is performed using a dispenser.
Regarding instant claim 2, the reference claims are silent as to an application amount; however, it would have been obvious to one of ordinary skill in the art to apply an amount at least equal to 100% of a volume of the cavity in order to predictably ensure complete filling of the molding die cavity.
Regarding instant claim 4, reference claims 1 and 3 recite the mold is transparent.
Regarding instant claim 5, reference claims 1/3 recite a transparent mold but are silent as to the mold materials. However, it would have been obvious to recite the transparent mold was made from one of the listed materials including at least PMMA, polycarbonate, and/or glass, which were all known transparent molding die materials suitable for the same use, as taught by Becher as indicated above.
Regarding instant claim 6, reference claims 1/3 recite the molding die is transparent, implying the capability of light transmission through the molding die, and thus it would have been obvious to one of ordinary skill in the art to recite that the active energy ray is irradiated from an opposite side of the cavity from the sealing material, the light transmissive molding die side.
Regarding instant claim 8, reference claims 1/3 recite forming a gasket on a workpiece but are silent as to the workpiece being a fuel cell component; however, it would have been obvious to one of ordinary skill in the art to recite the workpiece is a fuel cell component since the similar method steps for forming a gasket were known as useful for forming a gasket on a fuel cell component, as taught by Becher as indicated above.
Regarding instant claim 17, reference claims 5/16 do not recite the dispenser applies the liquid while moving; however, doing so would have been obvious in order to press the liquid into the cavity and to move a sufficient amount of the liquid into the cavity for complete filling, as taught by Becher ([0021], [0044]).
Regarding instant claim 18, reference claims 5/16 do not recite the dispenser moves in a unicursal trajectory; however, doing so would have been obvious in order to dispense the liquid according to standard unicursal seal shapes, such as a square, circle, or ellipse, as taught by Becher ([0043]).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 14-16 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, and 16 of copending Application No. 19/104437 (reference application) in view of in view of Becher et al., US 20170157812 A1, as applied to claim 1 above, and Namiki, JP 2008307443 A, as applied above. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 14, reference claims 5/16 do not recite the dispenser comprises a tank or syringe, and a pump. Analogous art Namiki, as applied above, discloses that dispensers comprising a tank or syringe and a pump (Figs. 1-2) were known in the art for dispensing sealing material. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the dispenser included known structure such as a tank or syringe and a pump for performing the liquid application.
Regarding instant claim 15, reference claims 5/16 do not recite the pump controls the flowrate of the liquid applied by the dispenser in the application step. Analogous art Namiki discloses the pump controls the flowrate of liquid applied by the dispenser during the application (Namiki: the sealing material is pressurized and sent to the valve section 10 by the pressurizing means 21, such that an amount of the liquid to be applied from the valve section 10 is controlled by the pressurizing means 21, in line with the present application, [0022]). It would have been obvious to one of ordinary skill in the art to recite the pump controls the flowrate of the liquid applied by the dispenser in the application step in defining known structure for controllably providing the sealing material for dispensing.
Regarding instant claim 16, reference claims 5/16 do not recite the claimed limitations. Namiki discloses the dispenser comprises a volumetric piston system with a plunger (Namiki: valve unit 10 includes piston 11 and plunger rod 12, Figs. 1-2). It would have been obvious to one of ordinary skill in the art to recite the dispenser comprises a volumetric piston system with a plunger in order to define known structure for accurately dispensing the sealing liquid as taught by Namiki.
Regarding instant claim 19, reference claims 5/16 do not recite the claimed limitations. Namiki discloses the dispenser includes a nozzle 15 for discharging sealing material (Figs. 1-2). It would have been obvious to one of ordinary skill in the art to specify the dispenser comprises a nozzle and, in the application step, the nozzle discharges the active energy ray curable liquid in order to define a known structure for dispensing sealing material for the application.
Claims 1-2, 4-6, 8, and 17-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 17 of copending Application No. 19/128294 (reference application) in view of Becher et al., US 20170157812 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 1, claim 1 of the reference application recites the same method steps in the same order including an application step (application step), a bonding step (bonding step), a curing step (curing step), and a mold release step (mold release step). Reference claim 1 recites that the molding die is bonded with the workpiece and thus it would have been obvious to one of ordinary skill in the art to recite at least one of position and/or load control being performed to predictably achieve said bonding, as taught by Becher (Fig. 3, placing and pressing) as applied above. Instant claim 1 is otherwise generic to reference claims 1-12 and 17 and thus is not patentably distinct from the reference application claims. Reference claim 8 recites the application step is performed using a dispenser.
Regarding instant claim 2, the reference claims are silent as to an application amount; however, it would have been obvious to one of ordinary skill in the art to apply an amount at least equal to 100% of a volume of the cavity in order to ensure complete filling of the molding die cavity.
Regarding instant claim 4, reference claim 1 recites a molding die but is silent as to mold transparency. However, it would have been obvious to one of ordinary skill in the art to recite the mold has transparency in order to provide the capability of irradiating light through the mold for curing the contained sealing material, as was well known in the art and taught by Becher as applied above.
Regarding instant claim 5, reference claim 1 recites a molding die but is silent as to the mold materials. However, it would have been obvious to recite the mold was made from one of the listed materials including at least PMMA, polycarbonate, and/or glass, which were all known gasket molding die materials suitable for the same use, as taught by Becher as indicated above.
Regarding instant claim 6, reference claim 1 recites a step of irradiating but is silent as to an irradiation side. However, in the absence of an irradiation side specification, it would have been obvious to one of ordinary skill in the art to recite that the active energy ray is irradiated from an opposite side of the cavity of the molding die, as was known in the art for predictably forming gaskets onto workpieces, as taught by Becher as applied above.
Regarding instant claim 8, reference claim 1 is silent as to a fuel cell component; however, reference claim 14 recites the method being used to obtain a gasket on a fuel cell component and thus it would have been obvious to one of ordinary skill in the art to recite the workpiece is a fuel cell component.
Regarding instant claim 17, reference claim 8 does not recite the dispenser applies the liquid while moving; however, reference claim 1 refers to application trajectories, implying movement, and doing so would have been obvious in order to press the liquid into the cavity and to move a sufficient amount of the liquid into the cavity for complete filling, as taught by Becher ([0021], [0044]).
Regarding instant claim 18, reference claim 8 does not recite the dispenser moves in a unicursal trajectory; however, doing so would have been obvious in order to dispense the liquid according to standard unicursal seal shapes, such as a square, circle, or ellipse, as taught by Becher ([0043]).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 14-16 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of copending Application No. 19/128294 (reference application) in view of in view of Becher et al., US 20170157812 A1, as applied to claim 1 above, and Namiki, JP 2008307443 A, as applied above. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 14, reference claim 8 does not recite the dispenser comprises a tank or syringe, and a pump. Analogous art Namiki, as applied above, discloses that dispensers comprising a tank or syringe and a pump (Figs. 1-2) were known in the art for dispensing sealing material. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the dispenser included known structure such as a tank or syringe and a pump for performing the liquid application.
Regarding instant claim 15, reference claim 8 does not recite the pump controls the flowrate of the liquid applied by the dispenser in the application step. Analogous art Namiki discloses the pump controls the flowrate of liquid applied by the dispenser during the application (Namiki: the sealing material is pressurized and sent to the valve section 10 by the pressurizing means 21, such that an amount of the liquid to be applied from the valve section 10 is controlled by the pressurizing means 21, in line with the present application, [0022]). It would have been obvious to one of ordinary skill in the art to recite the pump controls the flowrate of the liquid applied by the dispenser in the application step in defining known structure for controllably providing the sealing material for dispensing.
Regarding instant claim 16, reference claim 8 does not recite the claimed limitations. Namiki discloses the dispenser comprises a volumetric piston system with a plunger (Namiki: valve unit 10 includes piston 11 and plunger rod 12, Figs. 1-2). It would have been obvious to one of ordinary skill in the art to recite the dispenser comprises a volumetric piston system with a plunger in order to define known structure for accurately dispensing the sealing liquid as taught by Namiki.
Regarding instant claim 19, reference claim 8 does not recite the claimed limitations. Namiki discloses the dispenser includes a nozzle 15 for discharging sealing material (Figs. 1-2). It would have been obvious to one of ordinary skill in the art to specify the dispenser comprises a nozzle and, in the application step, the nozzle discharges the active energy ray curable liquid in order to define a known structure for dispensing sealing material for the application.
Response to Arguments
Applicant’s arguments, see pp. 4-5, with respect to claim rejections under 35 U.S.C. 112(a) have been fully considered and are persuasive. The rejection has been withdrawn.
Applicant's arguments filed 02/26/2026 with respect to prior art rejections have been fully considered but they are not persuasive. Regarding amended claim 1, applicant argues (pp. 5-6) that Becher does not disclose performing position or load control to reduce the load placed on the workpiece while still achieving sufficient bonding between the molding die and the workpiece and does not contemplate achieving uniformity of the bonding load with position or load control.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., performing position or load control to reduce the load placed on the workpiece while still achieving sufficient bonding between the molding die and the workpiece, achieving uniformity of the bonding load with position or load control) are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Additionally, the argued features relate to intended results of a process step rather than manipulative steps. The claim recites “at least one of position control and load control is performed.” As set forth above, Becher discloses the component is placed onto the molding tool and pressed onto the molding tool ([0045], Fig. 3), such that both position control (positioning of the component relative to the molding tool by placing the component onto the molding tool) and load control (pressing the component onto the tool) are performed.
Regarding the nonstatutory double patenting rejections, as indicated above, a response cannot be deferred. See MPEP 804.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20130062818 A1, DeCato et al. disclose a gasket molding method for molding a gasket on workpiece including application, bonding, curing, and mold release steps.
US 20110115132 A1, Burdzy et al., disclose a relevant mold-in-place gasketing process (Fig. 4).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER L GROUX whose telephone number is (571)272-7938. The examiner can normally be reached Monday - Friday: 9am - 5pm ET.
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/J.L.G./Examiner, Art Unit 1754
/SUSAN D LEONG/Supervisory Patent Examiner, Art Unit 1754