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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 2, 2026 has been entered.
Response to Arguments
Applicant’s arguments, filed July 2, 2026, with respect to the rejection(s) of Claims 1, 4, 7-9 and 16-19 under 35 USC 102 in view of Yuasa et al (PGPub 2005/0242454) have been fully considered and are persuasive as Yuasa does not fairly teach or suggest the combination of NiP and the specific nickel/titanium alloys. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Chiu (PGPub 2003/0025226) as evidenced by cited property tables in view of Toyoshima (EP3730269 cited in IDS with references to related PGPub 2021/0387430).
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 (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 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.
Claims 1, 4, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chiu (PGPub 2003/0025226) as evidenced by cited property tables in view of Toyoshima (EP3730269 cited in IDS with references to related PGPub 2021/0387430).
Regarding Claim 1, Chiu teaches a mold insert (Abstract), comprising:
a bulk portion (Fig. 1- composite insert 2, 2’ comprising bases 3, 3’ and layers 4, 4’), a material of the bulk portion being a metal alloy ([0035]- suitable materials for layers 4, 4’ are listed in table I; [0037]- The materials mentioned in table I above are suitable for forming the bases 3, 3′ of the insert pieces 2, 2′), and
a functional surface coated on the bulk portion ([0042]- the mold cavity may be coated with one or several thin property enhancing coatings),
wherein the metal alloy is selected from a nickel alloy hastelloy r-235, nickel alloy invar, titanium alloy Ti-Al6-V4, titanium alloy Ti-Al8-Mo1-V1, titanium alloy Ti-Al4-V4-Cr10, and titanium alloy imi 679 Ti-A12-Sn11-Zr5 (Table I),
the metal alloy has a thermal conductivity between 1 and 50 W/m-K (Table I), and the metal alloy has a modulus of between 100 GPa and 1000 GPa (See cited property tables).
Chiu does not teach a material of the functional surface is NiP or a plurality of microstructures being formed on the functional surface.
Toyoshima teaches an alternative mold insert (Abstract) comprising a functional surface plated on the bulk portion (Fig. 3c; Fig. 4a- coating layer 28; Fig. 5- coating layer 52), wherein a material of the functional surface is NiP [0046]; [0051]; [0069]; [0073] and a plurality of microstructures are formed on the functional surface (Fig. 3d; Fig. 4a- recesses 28B; Fig. 5- recesses 52B; [0052]; [0074]) in order to form a lens mold having a minute recesses with high accuracy as a result of the ductile nature of nickel alloy avoiding chipping and the like [0012].
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 device of Chiu to include a functional surface plated on the bulk portion, wherein a material of the functional surface is NiP and a plurality of microstructures being formed on the functional surface as taught by Toyoshima with reasonable expectation of success to form a lens mold having a minute recesses with high accuracy as a result of the ductile nature of nickel alloy avoiding chipping and the like [0012].
Regarding Claim 4, “an optical power of a lens resulting from use of the mold insert is between and inclusive of -8.00 to +6.00 Diopter” is a recitation of the article worked upon. The "inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." MPEP 2115; In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus, the recitation of “an optical power of a lens resulting from use of the mold insert is between and inclusive of -8.00 to +6.00 Diopter” is not given significant patentable weight.
Regarding Claim 7, Chiu further teaches the thermal conductivity of the metal alloy is between 5 and 12 W/m-K (Table I).
Regarding Claim 8, Chiu further teaches a thickness of the functional surface is between 5 and 1000 µm [0043].
Regarding Claim 9, Chiu further teaches a thickness of the bulk portion is between 5 and 100 mm (In general, the whole thickness of the composite inserts will range from 3 to 5 cm (30-50 mm)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrianna Konves whose telephone number is (571)272-3958. The examiner can normally be reached Monday-Friday 8:00-4:00 MST (Arizona).
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/A.K./Examiner, Art Unit 1748 8/5/26
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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