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 .
Response to Arguments
Applicant’s arguments, filed February 3, 2026, with respect to the rejection in view of Toyoshima (EP3730269) have been fully considered and are persuasive as the base material of Toyoshima is stainless steel. The rejection in view of Toyoshima (EP3730269) has been withdrawn.
Applicant's arguments filed February 3, 2026 with respect to the rejection in view of Yuasa (PGPub 2005/0242454) have been fully considered but they are not persuasive.
Applicant argues Yuasa teaches the bulk portion of the base material is only steel or stainless steel [0114] or contains iron [0130]; [0131].
Examiner respectfully disagrees with this assertion noting Yuasa teaches “the material of the base material 10 is not particularly limited, however, commonly used die material such as steel or stainless steel is preferable” [0114] and also teaches the amorphous alloy used in the master die (or metallic mold) “is not questioned” and can include “publicly known metallic glasses such as Pd series, Mg series, Ti series, Fe series, Zr series” [0031]. Thus, Yuasa teaches a bulk portion, a material of the bulk portion being a metal alloy wherein the metal alloy is selected from a titanium alloy and a nickel alloy.
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 17-18 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.
Claims 17 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the units of thermal diffusivity. For examination purposes, it will be assumed that the unit for the recited thermal diffusivities is mm2/s.
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, 4, 7-8, 16, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuasa (PGPub 2005/0242454 cited in IDS).
Regarding Claim 1, Yuasa teaches a mold insert (Abstract), comprising:
a bulk portion (Fig. 1g- master die 1; [0031]; [0042]), a material of the bulk portion being a metal alloy [0031]; [0042],
a functional surface plated on the bulk portion [0054],
a plurality of microstructures (Fig. 1g- amorphous alloy MG; [0030]) being formed on the functional surface (Fig. 1g- amorphous alloy MG on master die 1),
wherein the metal alloy is selected from a titanium alloy and a nickel alloy ([0031]- listing titanium alloy as an acceptable alloy in the master die),
the metal alloy has a thermal conductivity between 1 and 50 W/m-K ([0031]; [0042]- discussing acceptable metal alloys including titanium alloy; Examiner notes titanium alloy has a thermal conductivity of 6-22 W/m-K), and the metal alloy has a modulus of between 100 GPa and 1000 GPa ([0031]; [0042]- discussing acceptable metal alloys including titanium alloy; Examiner notes titanium alloy has a modulus of elasticity of 80-125 GPa).
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, Yuasa further teaches the thermal conductivity of the metal alloy is between 5 and 12 W/m-K ([0031]; [0042]- discussing acceptable metal alloys including titanium alloy; Examiner notes titanium alloy has a thermal conductivity of 6-22 W/m-K).
Regarding Claim 8, Yuasa further teaches a thickness of the functional surface is between 5 and 1000 µm [0112].
Regarding Claim 16, Yuasa teaches nickel as appropriate material for the function films [0042]-[0043] thus meeting the instant limitation of a material of the functional surface is NiP.
Regarding Claim 19, Yuasa teaches the material of the bulk portion may selected from various titanium alloys [0031] thus meeting the instant limitation of the material of the bulk portion is selected from nickel alloy hastelloy r-235, nickel alloy invar, titanium alloy Ti-A16-V4, titanium alloy Ti-A18-Mol-V1, titanium alloy Ti-A14-V4-Cr10, and titanium alloy imi 679 Ti-A12-Sn11-Zr5.
Claims 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuasa (PGPub 2005/0242454 cited in IDS) as evidenced by Materials Thermal Properties Database.
Regarding Claims 17 and 18, Yuasa teaches titanium alloys as acceptable material for the bulk portion and the functional surface [0031]; [0042]. Materials Thermal Properties Database teaches several titanium alloys possess a thermal diffusivity of less than or equal to 3.1 m2/s (3.1E-6 mm2/s) (see table) thus meeting the instant limitations of the material of the bulk portion (and the functional surface) has a thermal diffusivity of less than or equal to 3.1E-6 (Examiner assumes the units for these limitations should be mm2/s).
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yuasa (PGPub 2005/0242454 cited in IDS) in view of Hirota et al (PGPub 2005/0218538).
Regarding Claim 9, Yuasa does not specify a thickness of the bulk portion is between 5 and 100 mm.
Hirota teaches an alternative press molding device for molding optical lenses (Abstract) wherein a thickness of the bulk portion is between 5 and 100 mm (Table 1) in order to avoid warpage of the mother mold [0097].
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 Yuasa to include a thickness of the bulk portion is between 5 and 100 mm as taught by Hirota with reasonable expectation of success to avoid warpage of the mother mold [0097].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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).
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, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K./Examiner, Art Unit 1748 2/25/26
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748