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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/15/2025 has been entered.
Response to Amendment
Applicant filed a response and amended claims 1, 5, 9, 25-26, 3025, 28-30 on 07/07/2025.
Response to Arguments
Applicant’s arguments are primarily drawn to the amended claims. The revised rejection below addresses the amended claims.
Claim Objections
Claim 25 is objected to because of the following informalities:
“a second lateral” should read –a second lateral wall--.
Appropriate correction is required.
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.
Claim 1-3, 5-7, 9-10, 12, 21-24, and 31 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 1, 5 and 9 recite an/the “electronic control device programmed to …”.
Based on the written description, there appears to be no disclosure of a programmable electronic control device. 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, at the time the application was filed, had possession of the claimed invention.
Examiner suggests amending the limitation to “electronic control device configured to …”.
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.
Claim 28 and 29 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.
Regarding claim 28-29, there appears to be a lack of antecedent basis for “the separation device”.
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 and its 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.
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.
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)(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 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over Hirabayashi (PG-PUB 2020/0055266).
Regarding claim 25, Hirabayashi teaches the mold assembly, comprising:
a first section (Figure 3 and 10, item 3E and [0106]-[0108]);
a second section coupled to the first section (Figure 3 and 10, item 3D and [0106]-[0108]), forming a seam where the first section abuts the second section (Figure 12, item 12 and 14);
a cavity to receive a part, the cavity being defined by a first lateral wall (Figure 3 and 10, surface of 3D), a second lateral wall (Figure 3 and 10, surface of 3E), and a floor (Figure 3 and 10, surface of 3B), the first wall fixedly connected (Figure 12); and
a sealing material between the first section and the second section (Figure 13 and 14, item 60 and [0136]-[0137], [0141]-[0142]), the sealing material is capable of maintaining a seal for a part placed in the cavity when the first section and second section abut each other (Figure 13 and 14 and [0108], [0137]), and releasing the seal causes the first and second lateral walls move farther apart from each other by removing the seal from a sealing cavity (Figure 13 and 14 and [0106]).
Hirabayashi does not explicitly teach releasing the seal during expansion of the part. However, 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)).
Given that the mold assembly of Hirabayashi is identical to the claimed mold assembly, the mold assembly of Hirabayashi would be capable of removing the seal during expansion.
Regarding claim 26, Hirabayashi teaches the mold assembly as applied to claim 25, wherein the cavity is open in a direction extending away from the opposed lateral walls (Figure 12 and [0119]).
Regarding claim 27, Hirabayashi teaches the mold assembly as applied to claim 26, wherein the sealing material is disposed outside of the cavity (Figure 12 and 15 and [0141]).
Regarding claim 28, Hirabayashi teaches the mold assembly as applied to claim 25, further including a hydraulic cylinder (i.e., mechanism) that couples the first section to the second section (Figure 13 and 14 and [0096]).
Regarding claim 29, Hirabayashi teaches the mold assembly as applied to claim 25, further including a mechanical device configured to separate the first section and the second section based on temperatures within an autoclave (Figure 13 and 14 and [0096]).
Regarding claim 30, Hirabayashi teaches the mold assembly as applied to claim 25, wherein the separation device includes a rod (i.e., movable member) configured to apply a force pushing the opposed lateral walls apart from eachother (Figure 10 and 14 and [0096], [0099]-[0100], [0139]).
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
Claim 1-3, 5-7, 9-10, 12, 23-24, and 31 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, set forth in this Office action.
Regarding claims 1 and 9, the closest prior art has been applied. The cited art do not teach or suggest 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.
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).
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HANA C PAGE/ Examiner, Art Unit 1745
/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745