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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/25/2024 & 8/07/2025 have been considered by the examiner.
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 12-28 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 12 recites the limitation "providing " in line. It is unclear which injection mold is being referred to as the limitation has established more than one injection mold (i.e., injection molds). As claims 13-16 reference “the injection mold”, the limitation is read as “providing an injection mold for production of the object, wherein the injection mold has a counterstructure” for consistency with dependent claims 13-16.
Claims 13-28 are rejected for dependence on claim 12.
Claim 23-28 attempt to claim a material producible using the method as recited in claim 12, and the use of said material for a surface and hand of a power tool. However, claim 12 relates to “a method for producing an object having a microstructure”, not to a material. It is unclear how the method of claim 12 can be used to produce a material. Hence, the scope of the claims are unclear and are indefinite.
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.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen ( US 11,413,641 B2), in view of Downey (US 5,261,665 A).
Regarding Claim 12, Chen teaches a method for producing an object (Figures 1-2; col. 2, lines 42-50; claim 1) having a microstructure (pattern 13 in Figure 3), the method comprising the following steps:
a) providing a base material for producing the object (col. 2, liens 42-50; col. 3, line 1; claim 1; plastic material);
b) providing [an] injection [mold] for production of the object (Figure 9), wherein the injection mold has a counterstructure to the microstructure of the object (13 in Figure 3; col. 2, lines 10-11, The pattern 13 is defined on a mold for the spray gun 10 and form directly on the surface of the spray gun 10 during the injection; col. 2, lines 42-44, the mold comprises at least one cavity, the inner wall of the cavity has a plurality of marks arranged according to the carbon fiber pattern); and
c) injection molding the object, wherein the microstructure of the object is produced by the counterstructure of the injection mold (col. 2, lines 45-50, the plastic material is heated and melted…then injected into the mold. Then, the plastic material is filled in the cavity and solidified into the spray gun 10 and pattern 13 in the cavity and each mark respectively, and the faux carbon fiber pattern 13 can be manufactured with the spray gun 10.).
Chen teaches all the elements of claim 12, but does not disclose the base material includes at least one thermoplastic elastomer. However, the use of thermoplastic elastomers is well known in injection molding.
Downey teaches a method for producing an object (grip 10 in Figure 1) having a structure (protrusions 20), comprising: providing a base material for producing the object, wherein the base material is a thermoplastic elastomer (col. 4, lines 5-6, the materials of choice to produce both the socket and the jacket molded thereon are thermoplastic rubbers; claim 1, jacket of elastomeric thermoplastic); providing an injection mold for forming the object (Figures 2-3), where in the injection mold has a counterstructure to the structure of the object (indentations 36; col. 8, lines 54-56, The protrusions 20 which are produced on the socket core 18 correspond to the indentations 36 in the first die 28). Hence, the use of a thermoplastic elastomer for injecting molding an objection with a structure surface is known.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a thermoplastic elastomer in the method of Chen, since it have held to be within the ordinary skill of worker in the art to select a known material on the basis of its suitability for the intended use. Chen discloses changing the composition of the plastic material to obtain a desired softness/hardness with the pattern (col. 2, line 67 to col. 3, line 3); hence, one or ordinary skill in the art would have been motivated to use a thermoplastic elastomer for the purpose of a softer or more comfortable feel. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Claim(s) 13-15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Chen, in view of Downey and Parel (US 2013/0175067 A1).
Regarding Claims 13-15 and 17-19, Chen, as modified by Downey, teaches all the elements of claim 12, but does not teach a roughness depth of the injection mold; nor a texture depth of microstructure of the object.
Parel teaches a grip of a tool having a textured surface (Figures 2-5), the textured surface comprises a plurality of structures (protuberances 52; paragraphs 0015-0021). Parel discloses properties of the structures; specifically, a height thereof (paragraph 0021) aids in the feel or grip of the tool (paragraphs 0021-0023). Hence, the height of the structures directly relates to the properties of the grip. It would have been obvious for one of ordinary skill in the art to have optimized either a roughness depth of the injection mold or a texture depth of the microstructure of the invention of modified Chen for the purpose and benefit of better or more comfortable feel, as disclosed by Parel. Further, as Chen, Downey and Parel relate to structured and/or textured grips, one skilled in the art would have a reasonable expectation of success in doing so. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Chen, in view of Downey and Schulz "High-Level Laser Mold Texturing" (2019).
Regarding Claim 16, Chen, as modified by Downey, teaches all the elements of claim 12, but does not teach the counterstructure of the injection mold is obtained by laser structuring.
Schulze teaches methods of forming marks or patterns on surfaces of molds for using injection molding, wherein the marks or patters are formed by laser technology. The use of a laser allows creating complex contours with technical or decorative structures (pages 1-3). Hence, the use of laser for forming texturing injection molds is known. One of ordinary skill in the art could have applied this technique to the invention of modified Chen and the results would have been predictable to one skilled in the art. One would have been motivated to use a laser for higher precision.
Claim(s) 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Chen, in view of Downey and Umeda (US 2022/0258680 A1).
Regarding Claims 20-22, Chen, as modified by Downey, teaches all the elements of claim 12, but does not disclose a ratio between a texture depth of the microstructure and a roughness depth of the injection mold.
Umeda teaches a method for forming a surface structure on an object (groove 6 on object 4 Figure 1; paragraph 0026), the object being produced by injection molding (paragraphs 0016, 0021, 0037). Further, Umeda teaches wherein the dimensions of the groove determine the releasability of the object during molding (paragraph 0031, In case the groove depth D is less than 10 micrometers, there is a chance of a mold release failure in molding). It would have been obvious for one skilled in the art to optimize depth of the microstructure to a depth of the injection mold of modified Chen in order to improve the releasability of the object during injection molding. As disclosed by Umeda, the depth of the groove (i.e., microstructure) in relation to its cavity effects releasability therefrom. Absent a showing of unexpected results, one skilled in the art would have motivated to set a ratio between the depth of the microstructure to a depth of the injection mold for less surface contact therebetween thereby improving releasability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Smith (US 2023/0330915 A1) teaches de.
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/VIRAK NGUON/Examiner, Art Unit 1741 2/03/2026