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 .
Acknowledgment is made of amendments received 03-05-2026.
Election/Restrictions
Newly submitted claim 6 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 4-5, drawn to a mold, classified in C03B 11/08.
II. Claim 6, drawn to a method, classified in C03B 11/16.
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used to practice another and materially different process, such as making the first distance and the second distance equal, or molding a metal preform, or removing the upper mold from the side-surface mold.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 6 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03. It is noted that new claims 4-5 correspond to previously examined claims 1-3, which were also directed to a mold for an optical element.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 recites “an outer-diameter height line is defined as a line orthogonal to a direction of the hole halfway between radial extents of the upper-surface forming surface and the lower-surface forming surface when inserted” in lines 11-13. The specification defines “outer-diameter height line” as “a straight line passing the side surface of the optical element to be molded at the half height of the side surface and orthogonal to a direction of the hole” in ¶ [0012]. These are not necessarily equivalent measures, particularly because “when inserted” does not have a clear or static definition. The upper and/or lower forming surfaces would have a varying distance therebetween as the upper mold and the lower mold are inserted and as the optical element is pressed, and so a halfway point would move as the molds move. Further, the specification does not use the term “radial extents”, and it is not clear what the intended meaning is based on the figures. It seems that it would mean outermost edges (left-to-right in the figures) of each forming surface, but the line H13 in Figs. 1 and 2 does not appear to be anywhere close to halfway between such edges.
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 4-5 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 4 recites “an outer-diameter height line” in line 11. The meaning of this term is unclear because it is defined relative to the upper-surface forming surface and the lower-surface forming surface “when inserted”. The claimed mold is not a static structure. The upper mold and/or the lower mold move as they are assembled with the side-surface mold and the sleeve, and as the optical element is pressed therebetween, all of which time may be considered “when inserted”, and which may also depend on the particular longitudinal dimensions of the first neck part, second neck part, side-surface mold, and sleeve. Thus the outer-diameter height line would change depending on when in a process of use it is measured, which would then change the measurement of the “first distance” and the “second distance” as recited in lines 14-17, and which may then change the required clearances as recited in lines 22-26.
Accordingly, the conditional relationships of the first clearance and the second clearance as recited in lines 22-26 are also unclear because they depend on the relationship of the first distance and the second distance. Additionally, it is unclear what the first clearance and second clearance should be if the first distance is equal to the second distance.
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) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoneda ‘650 (JP 2006-273650 A - English language translation provided previously and referenced herein)
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.
(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) 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoneda ‘650 (JP 2006-273650 A - English language translation provided previously and referenced herein).
Regarding claim 4, as best the Examiner understands the claims, Yoneda ‘650 teaches:
an upper mold including a first neck part with an upper-surface forming surface on a distal end of the first neck part (upper mold 10 including small diameter portion 13 with molding surface 14)
a lower mold including a second neck part with a lower-surface forming surface on a distal end of the second neck part (lower mold 20 including small diameter portion 23 with molding surface 24)
a side-surface mold including a hole surface forming a hole into which the first neck part of the upper mold and the second neck part of the lower mold are inserted to form a cavity corresponding to an optical element defined by a portion of the hole between the upper-surface forming surface and the lower-surface forming surface when inserted (inner body mold 35 with surface of inner peripheral small diameter portion 33, having an open space into which small diameter portion 13 and small diameter portion 23 are inserted, Figs. 1, 6, 9, 10; ¶ [0001])
an outer-diameter height line is defined as a line orthogonal to a direction of the hole halfway between radial extents of the upper-surface forming surface and the lower-surface forming surface when inserted (a direction of the hole can be defined as a left-to-right direction in the figures because a hole is a three-dimensional space and has an infinite number of directions, and thus an orthogonal line can be defined in a vertical up-to-down direction in the figures; Yoneda ‘650 teaches that the upper and lower molds are reliably positioned on the same straight line parallel to an axial direction of the mold 30 (¶ [0016], [0017], [0038]-[0040]), and thus halfway between the radial extends would run vertically through the middles of small diameter portion 13 and small diameter portion 23)
a first distance is defined as a distance between a center of curvature of the lower-surface forming surface and the outer diameter height line (the center of curvature would lie on the outer diameter height line in a center of small diameter portion 23, and thus the first distance would be zero)
a second distance is defined as a distance between a center of curvature of the upper-surface forming surface and the outer diameter height line (the center of curvature would lie on the outer diameter height line in a center of small diameter portion 13, and thus the second distance would be zero)
a first clearance is defined as a clearance between the hole surface and an outer surface of the second neck part (distance between the surface of inner peripheral small diameter portion 33 and small diameter portion 23; Figs. 1, 6, 9, 10)
a second clearance is defined as a clearance between the hole surface and an outer surface of the first neck part (distance between the surface of inner peripheral small diameter portion 33 and small diameter portion 13; Figs. 1, 6, 9, 10)
Therefore, the first distance is equal to the second distance. Lines 23-26 of claim 1 are considered to be optional (“if”), and thus the claim is considered to be met.
Regarding claim 5, Yoneda ‘650 further teaches a sleeve into which the upper mold, the lower mold, and the side-surface mold are inserted (outer trunk mold 34, Figs. 1, 6, 9, 10), wherein a clearance between an inner surface of the sleeve and an outer surface of the upper mold (clearance proximate C in Fig. 2 for upper mold 10, which is described as the mold being in contact with an inner surface 34, ¶ [0040]) and a clearance between the inner surface of the sleeve and an outer surface of the lower mold (clearance proximate C in Fig. 2 for lower mold 20, which is described as the mold being in contact with an inner surface 34, ¶ [0040]) are both smaller than a clearance between the inner surface of the sleeve and an outer surface of the side-surface mold (see annotated copy of Fig. 1 below with a “Clearance” marked between an inner surface of 34 and inner body mold 35, which is a larger clearance).
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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) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoneda ‘650 (JP 2006-273650 A - English language translation provided previously and referenced herein).
Regarding claim 4, as best the Examiner understands the claims, in an alternative interpretation, Yoneda ‘650 teaches:
an upper mold including a first neck part with an upper-surface forming surface on a distal end of the first neck part (upper mold 10 including small diameter portion 13 with molding surface 14)
a lower mold including a second neck part with a lower-surface forming surface on a distal end of the second neck part (lower mold 20 including small diameter portion 23 with molding surface 24)
a side-surface mold including a hole surface forming a hole into which the first neck part of the upper mold and the second neck part of the lower mold are inserted to form a cavity corresponding to an optical element defined by a portion of the hole between the upper-surface forming surface and the lower-surface forming surface when inserted (inner body mold 35 with surface of inner peripheral small diameter portion 33, having an open space into which small diameter portion 13 and small diameter portion 23 are inserted, Figs. 1, 6, 9, 10; ¶ [0001])
an outer-diameter height line is defined as a line orthogonal to a direction of the hole halfway between radial extents of the upper-surface forming surface and the lower-surface forming surface when inserted (a horizontal line halfway between radial extents of molding surface 14 and molding surface 24)
a first distance is defined as a distance between a center of curvature of the lower-surface forming surface and the outer diameter height line (a distance between a center of curvature of molding surface 24 and the outer diameter height line)
a second distance is defined as a distance between a center of curvature of the upper-surface forming surface and the outer diameter height line (a distance between a center of curvature of molding surface 14 and the outer diameter height line)
a first clearance is defined as a clearance between the hole surface and an outer surface of the second neck part (distance between the surface of inner peripheral small diameter portion 33 and small diameter portion 23; Figs. 1, 6, 9, 10)
a second clearance is defined as a clearance between the hole surface and an outer surface of the first neck part (distance between the surface of inner peripheral small diameter portion 33 and small diameter portion 13; Figs. 1, 6, 9, 10).
Yoneda ‘650 teaches that the upper-surface forming surface and the lower-surface forming surface can have any shape including concave, convex, and flat, depending on the desired shape of the produced optical element (¶ [0036]), and thus a full range of locations of centers of curvature of the upper-surface forming surface and the lower-surface forming surface are encompassed. Additionally, since the upper mold and the lower mold are movable (e.g., Figs. 9, 10), an outer-diameter height line will vary at different points in the process. Thus the first distance and the second distance will change depending upon at what point in the process they are measured. Further, Yoneda ‘650 suggests that the first clearance and the second clearance should be selected in order to optimize eccentric accuracy of the produced optical element (¶ [0037]), and that the first clearance and second clearance may vary depending on where on the outer surface of the respective neck parts such clearances are defined because of the shifting by pressure contact means 40 (Figs. 1, 2, 6, 9, 10; ¶ [0038]). Thus, 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 Yoneda ‘650 by selecting a first clearance and a second clearance, and accordingly a relationship between them, in order to optimize eccentric accuracy of the produced optical element.
Regarding claim 5, Yoneda ‘650 further teaches a sleeve into which the upper mold, the lower mold, and the side-surface mold are inserted (outer trunk mold 34, Figs. 1, 6, 9, 10), wherein a clearance between an inner surface of the sleeve and an outer surface of the upper mold (clearance proximate C in Fig. 2 for upper mold 10, which is described as the mold being in contact with an inner surface 34, ¶ [0040]) and a clearance between the inner surface of the sleeve and an outer surface of the lower mold (clearance proximate C in Fig. 2 for lower mold 20, which is described as the mold being in contact with an inner surface 34, ¶ [0040]) are both smaller than a clearance between the inner surface of the sleeve and an outer surface of the side-surface mold (see annotated copy of Fig. 1 above with a “Clearance” marked between an inner surface of 34 and inner body mold 35, which is a larger clearance).
Response to Arguments
Applicant's arguments filed 03-05-2026 have been fully considered but they are not persuasive. Applicant argues that Yoneda ‘650 does not teach the limitations now recited in claims 4 and 5. The newly presented claims are newly mapped to Yoneda ‘650 under two different interpretations above. Additionally, the claims introduce clarity issues which complicate interpretation of the claims in view of the prior art.
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 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
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