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 Amendment
Applicant filed a response and amended claims 1, 5, 9, and 25 on 06/17/2026.
The 112(a) and 112(b) rejections previously presented are withdrawn in view of amendments.
Applicant explains an e-Terminal Disclaimer has been filed in the response of 06/17/2026, but no disclaimer is present in the file.
Claim Objections
Claim 9 appears to have the same informality that had been corrected in claim 11. Claim 9 is objected to because of the following informalities:
“to maintain a seal for a part placed in the space” should read --to maintain a seal for a part placed in the space--.
Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a separation device configured to increase a distance between the first section and second section” in claim 1, 9, and 25 and their dependents;
“a movable member configured to apply a force to push the first section or the second section” in claim 24; and
“a movable member configured to apply a force pushing the opposed lateral walls apart from eachother” in claim 30.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Based on the specification, the above limitations are interpreted as hydraulic cylinder [0046], springs [0044]; mechanical screw mechanism [0045]; scissor mechanism [0048] (Figures 7-10) and their equivalents.
Based on the specification and claims 1, 9, and 25, the “separation device” that is operated by the electronic control device would be the hydraulic cylinder, mechanical screw mechanism, scissor mechanisms, and their equivalents.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 1-3, 5-6, 9, 10, 12, and 21-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 5, 9, and 29 of U.S. Patent No. 11,207,808.
Claim 1 of U.S. Patent No. 11,207,808 discloses all of the limitations of claim 1 of the instant application, except for an electronic control device to cause the separation device to increase a distance between the first section and second section during expansion of a part.
U.S. Patent No. 11,207,808 claim a separation device, but is silent to how the separation device is operated.
To provide a mechanical or automatic means to replace manual activity, which accomplishes the same result, is within the ambit of a person of ordinary skill in the art (see MPEP § 2144.04). Accordingly, it would have been obvious to one of ordinary skill in the art to modify the claimed assembly of US Patent No. 11,207,808 with a controller configured to operate the separation device.
The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim (see MPEP §§ 2114 and 2173.05(g)).
Because the controller of U.S. Patent No. 11,207,808 is configured to cause the separation device to increase a distance between the first section and second section, the controller would be capable of activating this function at any time during the molding process, such heating of the mold assembly.
Claim 2 of U.S. Patent No. 11,207,808 discloses all of the limitations of claim 2 of the instant application.
Claim 3 of U.S. Patent No. 11,207,808 discloses all of the limitations of claim 3, 6, 21, and 22 of the instant application.
Claim 9 of U.S. Patent No. 11,207,808 discloses all of the limitations of claim 5 of the instant application, except for an electronic control device to cause the separation device to increase a distance between the first section and second section during expansion of a part.
U.S. Patent No. 11,207,808 claim a separation device, but is silent to how the separation device is operated.
To provide a mechanical or automatic means to replace manual activity, which accomplishes the same result, is within the ambit of a person of ordinary skill in the art (see MPEP § 2144.04). Accordingly, it would have been obvious to one of ordinary skill in the art to modify the claimed assembly of US Patent No. 11,207,808 with a controller configured to operate the separation device.
The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim (see MPEP §§ 2114 and 2173.05(g)).
Because the controller of U.S. Patent No. 11,207,808 is configured to cause the separation device to increase a distance between the first section and second section, the controller would be capable of activating this function at any time during the molding process.
Claim 5 of U.S. Patent No. 11,207,808 discloses all of the limitations of claim 9, 10, 12, 23, and 24 of the instant application.
Claim 9 of U.S. Patent No. 11,207,808 discloses all of the limitations of claim 25 -28 and 30 of the instant application.
Related to instant claim 25, the release of the seal when a separation device causes the opposed lateral walls to move farther apart from eachother during expansion of the part is not a structural limitation, except for an electronic control device to cause the separation device to increase a distance between the first section and second section during expansion of a part.
U.S. Patent No. 11,207,808 claim a separation device, but is silent to how the separation device is operated.
The manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim (see MPEP §§ 2114 and 2173.05(g)).
Because the mold assembly of U.S. Patent No. 11,207,808 is identical to the claimed mold assembly, the mold assembly of U.S. Patent No. 11,207,808 would be capable of activating this function at any time during the molding process, such during expansion of the part.
In regards to claim 29, U.S. Patent No. 11,207,808 does not disclose a separation of the first section and the second section based on temperatures within an autoclave.
However, given that the apparatus of the U.S. Patent No. 11,207,808 is identical to the instant claimed apparatus, the apparatus of U.S. Patent No. 11,207,808 would also be operating the mechanical device to separate the first section and second section based on temperatures within an autoclave.
Claim 7 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,207,808 in view of Hirabayashi and Dupen.
In regards to claims 7 and 31, U.S. Patent No. 11,207,808 does not recite disclose the separation device includes a resilient member and the movable member is actuated by a hydraulic cylinder.
U.S. Patent No. 11,207,808 discloses a sliding rod for actuating the scissor mechanism (Claims 8-10).
Hirabayashi teaches hydraulic cylinders coupled to a controlling device for actuation for the purpose of separating molds [0096]-[0099].
Both U.S. Patent No. 11,207,808 and Hirabayashi are drawn to the same field of endeavor pertaining actuating separation between molds. Hirabayashi teaches a known suitable mechanism of actuating a hydraulic cylinder to separate components. It would have been obvious to one of ordinary skill in the art to substitute the sliding rod of U.S. Patent No. 11,207,808 with the known suitable technique of using a hydraulic cylinder as taught by Hirabayashi for the purpose of actuating the scissor mechanism with the benefit of automating the actuation with a controlled configured to control the hydraulic cylinder as taught by Hirabayashi.
Dupen teaches there are various types of hydraulic cylinders, such as single-acting cylinders comprising a piston, rod, and cylinder, wherein the cylinder retracts under the force of a spring (i.e., resilient member) (Page 1).
U.S. Patent No. 11,207,808 in view of Hirabayashi does not explicitly teach a resilient member or a movable member configured to apply a force pushing the opposed lateral walls apart from each other.
Dupen teaches there are various types of hydraulic cylinders, such as single-acting cylinders comprising a piston, rod, and cylinder, wherein the cylinder retracts under the force of a spring (i.e., resilient member) (Page 1).
Both Hirabayashi and Dupen are drawn to the same field of endeavor pertaining to hydraulic cylinders. Hirabayashi is silent to the specific configuration of the hydraulic cylinder, prompting one to look elsewhere in the art. It would have been obvious to one of ordinary skill in the art to use a hydraulic cylinder with a spring mechanism as taught by Dupen for the purpose of providing a suitable hydraulic cylinder as desired by Hirabayashi.
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Regarding claims 1, 9, and 25 the closest prior art has been applied. The cited art do not teach or suggest the combination of limitations of claims 1, 9, and 25, respectively, in particularly an electronic control device programmed to: during heating of the mold assembly, operate the separation device and cause the separation device to increase a distance between the first and the second section during a molding process while heat is applied to the part.
Conclusion
THIS ACTION IS MADE FINAL. 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 HANA C PAGE whose telephone number is (571)272-1578. The examiner can normally be reached M-F, 9:00-5:30.
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, Phillip Tucker can be reached on 5712721095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANA C PAGE/ Examiner, Art Unit 1745
/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745
