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 I, claims 1-11, in the reply filed on 12-23-2025 is acknowledged.
Claims 12-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12-23-2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In claim 1, “thermalization means” and in claim 2, “means for increasing the thermal conductivity of the membrane” are being interpreted under 35 U.S.C. 112(f).
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “thermalization means” in claims 2-6 and “means for increasing the thermal conductivity of the membrane” in claims 7-11.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Objections
Claim 4 is objected to because of the following informalities: Line 3 recites “a heat transfer liquid”. This should be --the heat transfer liquid--, since claim 3 already recites “a heat transfer liquid”. 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 6 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 6 recites “a series of conduits” in line 2 and “a first series of conduits” in line 3. It is unclear if these conduits are part of the “at least one conduit” as recited in claim 3, or if these are separate conduits.
Claim 11 recites “the heat transfer fluid is cooling or heating”. It is unclear if this is attempting to recite a method step in the apparatus claim, or if it is attempting to recite a certain property of the heat transfer fluid or of the at least one conduit.
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) 1-6 and 8-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Luquain ‘800 (US 2015/0202800 A1).
Regarding claim 1, Luquain ‘800 teaches a shaping tool (¶ [0037]; Figs. 3-4) comprising a membrane made of a polymer material (first stacking 1+second stacking 3, Figs. 3-4; ¶ [0039], [0041], [0043], [0063], [0115]), said membrane having a shaping surface (top or bottom surface, capable of shaping, Figs. 3-4), and a thermalization means inserted into said membrane (heat carrying fluid circuit 2, Figs. 1-4; ¶ [0040], [0112], [0114], [0116]).
Regarding claim 2, Luquain ‘800 further teaches means for increasing the thermal conductivity of the membrane (“reinforcing fibers”, ¶ [0054]; “carbon fibers”, ¶ [0113]).
Regarding claim 3, Luquain ‘800 further teaches the thermalization means comprise at least one conduit traversing the membrane according to a profile of the membrane and wherein a heat transfer liquid flows (heat carrying fluid circuit 2, Figs. 1-4; ¶ [0040], [0112], [0114], [0116]).
Regarding claim 4, Luquain ‘800 further teaches the thermalization means comprise a series of conduits traversing the membrane according to said profile and wherein the heat transfer liquid flows, these conduits extending parallel to each other (straight, parallel conduits of the circuit 2, Figs. 1-2).
Regarding claim 5, Luquain ‘800 further teaches the heat transfer fluid in two adjacent conduits flows in opposite directions (Figs. 1-2 - Since the conduits are connected in series, adjacent conduits are capable of having heat transfer fluid flow in opposite directions. It is noted that this is a functional limitation that describes what the apparatus does, rather than what it is, and thus it is interpreted as a capability of the recited elements. See MPEP 2173.05(g).).
Regarding claim 6, Luquain ‘800 further teaches a series of conduits extending in a direction orthogonal to a direction wherein a first series of conduits extend (Fig. 2 - the straight conduits define a first series of conduits, and the curved conduits define another series of conduits, wherein the straight conduits extend in a left-right direction as illustrated, and the curved conduits extend in an up-down direction as illustrated, wherein the two directions are orthogonal).
Regarding claim 8, Luquain ‘800 further teaches the means for increasing the thermal conductivity of the membrane comprise metallic or carbon-based fibers (¶ [0054], [0113]).
Regarding claim 9, Luquain ‘800 further teaches the means for increasing the thermal conductivity of the membrane comprise a textile (“reinforcing fibers”, ¶ [0039]-[0040], [0054], “fabric”, ¶ [0070]-[0086]).
Regarding claim 10, Luquain ‘800 further teaches the textile is compose of metal fibers (¶ [0054]).
Regarding claim 11, Luquain ‘800 further teaches the heat transfer fluid is cooling or heating (¶ [0040], [0121)].
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luquain ‘800 (US 2015/0202800 A1) in view of Siltamaki ‘256 (US 2022/0234256 A1).
Regarding claim 7, Luquain ‘800 is silent regarding the means for increasing the thermal conductivity of the membrane comprising metallic or carbon-based particles embedded in the polymer material. In analogous art of shaping tool materials, Siltamaki ‘256 suggests embedding metallic or carbon-based particles in a polymer material as part of a shaping tool for the benefit of adjusting thermal conductivity and/or permittivity of a tool, and potentially enabling the tool to be heated by an electromagnetic field (¶ [0008], [0020]-[0026]). Siltamaki ‘256 recognizes the use of both fibers (as used by Luquain ‘800) and particles, and suggests they may be used in combination (¶ [0008], [0026]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of Luquain ‘800 by making the means for increasing the thermal conductivity of the membrane comprise metallic or carbon-based particles embedded in the polymer material for the benefit of adjusting thermal conductivity and/or permittivity of the tool, and potentially enabling the tool to be heated by an electromagnetic field, as suggested by Siltamaki ‘256.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erin Snelting whose telephone number is (571)272-7169. The examiner can normally be reached Monday to Friday, 8:00 to 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindenlang can be reached at (571) 270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN SNELTING/Primary Examiner, Art Unit 1741