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 .
Election/Restrictions
Applicant’s election without traverse of Group lI, claims 1-11, drawn to a mold part, in the reply filed on 04/21/2026 is acknowledged. Claims 12-14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/03/2026 has 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 4 and 8-10 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 the limitation “the protrusions and recesses” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation “a plurality of first pieces and second pieces” in line 2. It renders the claim indefinite since whether it is meant that the first piece comprises a plurality of first piece portions and the second piece comprises a plurality of second piece portions, or it is meant to be another new plurality of first pieces and second pieces. For the compact prosecution, Examiner has interpreted it as the former.
The remaining dependent claims 9 and 10 are also rejected under 112 (b) because they depend from, and thus include all the limitations of rejected claim 8.
Claim 10 recites the limitation “the connection section is not coincident with the connection section of the second pieces” in lines 2-3. It renders the claim indefinite since it is unclear the meanings of two “the connection section”s here. In the referred claim 8, “the connection section” is defined by the plurality of first pieces and second pieces connected one to another longitudinally, but in this claim, the first “the connection section” does not seem to be meant the same one recited in the referred claim 8. For the compact prosecution, Examiner has interpreted that -- a connection section of the stiffeners is not coincident with the connection section of the second pieces --.
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 and 3 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by McGinnis et al. (US 2019/0217508).
With respect to claim 1, McGinnis teaches a mold part (“mandrel 505”, Fig. 5B), comprising:
a first piece; and
a second piece covering at least partially the first piece, the second piece comprising an inner surface and an outer surface (See the annotated Fig. 5B below),
wherein at least the outer surface of the second piece comprises a plurality of protrusions and recesses (“the thermally expanding mandrel 505 may also be formed with one more surface features 508, 510, as described herein with respect to FIGS. 1C-1E, formed on one or more portions of the exterior surface of the mandrel 505. The various surface features may include corrugations 510, ribs 508, striations, protrusions, bumps, indentations, dimples, or other surface features, or combinations thereof.”, Pa [0110]).
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It is noted that the limitations “for manufacturing vertical joints of keystones, which is intended to be disposed on a framework of the keystone” and “configured to define a toothed surface in a concrete surface of the vertical joint of the keystone” are intended uses since the mandrel taught by McGinnis is capable of performing the claimed uses. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
With respect to claim 3, McGinnis as applied to claim 1 above further teaches that the second piece is a silicone piece (“the mandrel 505 may be formed from … silicone rubber microspheres, silicone rubber powder”, Pa [0095]).
Alternatively, claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by McGinnis et al. (US 2019/0217508).
With respect to claims 1 and 4, McGinnis teaches a mold part (“mandrel” and “one or more resin coatings”, Pa [0105]), comprising:
a first piece (“mandrel”); and
a second piece (“one or more resin coatings”) covering at least partially the first piece (“The one or more resin coatings may be applied to surfaces of a molding tool and/or one or more mandrels”, Pa [0105]), the second piece comprising an inner surface and an outer surface (Fig. 5B),
wherein at least the outer surface of the second piece comprises a plurality of protrusions and recesses (“the thermally expanding mandrel 505 may also be formed with one more surface features 508, 510, as described herein with respect to FIGS. 1C-1E, formed on one or more portions of the exterior surface of the mandrel 505. The various surface features may include corrugations 510, ribs 508, striations, protrusions, bumps, indentations, dimples, or other surface features, or combinations thereof.”, Pa [0110]).
It is noted that the limitations “for manufacturing vertical joints of keystones, which is intended to be disposed on a framework of the keystone” and “configured to define a toothed surface in a concrete surface of the vertical joint of the keystone” are intended uses since the mandrel taught by McGinnis is capable of performing the claimed uses. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Alternatively, claim 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Diefenderfer et al. (US 2012/0319324).
With respect to claim 1, Diefenderfer teaches a mold part (Fig. 6), comprising:
a first piece (“the mandrel body 12”); and
a second piece (“the mandrel surface 14”) covering at least partially the first piece (“The mandrel body 12 is generally cylindrical in the illustrated embodiment, and closely receives the mandrel surface 14 thereon such that the radially inner surface of the mandrel surface 14 is closely received over, and supported by, the mandrel body 12.”, Pa [0022]), the second piece comprising an inner surface and an outer surface (Fig. 6),
wherein at least the outer surface of the second piece comprises a plurality of protrusions and recesses (“The mandrel surface 14 has a plurality of radially-outwardly extending protrusions/teeth 16, and a radially-inwardly extending recesses 18 positioned between each tooth 16.”, Pa [0013]).
It is noted that the limitations “for manufacturing vertical joints of keystones, which is intended to be disposed on a framework of the keystone” and “configured to define a toothed surface in a concrete surface of the vertical joint of the keystone” are intended uses since the mandrel taught by Diefenderfer is capable of performing the claimed uses. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Alternatively, claim 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Scott (US 2004/0079043-of record).
With respect to claim 1, Scott teaches a mold part (Fig. 13), comprising:
a first piece (“guide 151”, Pa [0064]); and
a second piece (“a device 121”, Pa [0065]) covering at least partially the first piece (“The devices 121 then are placed around each mandrel 159”, Pa [0065]), the second piece comprising an inner surface and an outer surface, wherein at least the outer surface of the second piece comprises a plurality of protrusions and recesses (Fig. 13).
It is noted that the limitations “for manufacturing vertical joints of keystones, which is intended to be disposed on a framework of the keystone” and “configured to define a toothed surface in a concrete surface of the vertical joint of the keystone” are intended uses since the mandrel taught by Scott is capable of performing the claimed uses. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Alternatively, claim 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Rossart (US 12,129,672).
With respect to claim 1, Rossart teaches a mold part (“an insert 20”, Figs. 1-3), comprising:
a first piece (“the support 42”, co 7 li 7); and
a second piece (“a tube 22”,co 6 li 6) covering at least partially the first piece (“A support 42 is coupled to the base plate 28 and extends in the axial bore 40.”, co 7 li 6-8), the second piece comprising an inner surface and an outer surface (“The insert 20 further includes a longitudinal axial bore 40 extending into the tube 22 along the longitudinal axial direction X from the first end 24 to the second end 26.”, co 7 li 4-6), wherein at least the outer surface of the second piece comprises a plurality of protrusions and recesses (“The tube 22 further includes a plurality of ridges 34 extending from the tube 22 and a corresponding plurality of recess 36 between the ridges 34.”, co 6 li 30-32).
It is noted that the limitations “for manufacturing vertical joints of keystones, which is intended to be disposed on a framework of the keystone” and “configured to define a toothed surface in a concrete surface of the vertical joint of the keystone” are intended uses since the mandrel taught by Rossart is capable of performing the claimed uses. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 2 is rejected under 35 U.S.C. 103 as being unpatentable over McGinnis et al. (US 2019/0217508) as applied to claim 1 above, and further in view of Sachs (US 3,831,898).
With respect to claim 2, McGinnis as applied to claim 1 above does not explicitly teach that the first piece is a foam piece.
In the same field of endeavor, mandrel for production of molded structure, Sachs teaches a mandrel comprising a metal, e.g., aluminum, hollow tube is provided with predetermined spaced holes therein, which communicate with a permeable open cell, flexible, e.g., polyurethane, foam outer sleeve which is securely adhered to the outer surfaces of the tube, and a non-permeable flexible plastic sheath or skin is securely disposed around the flexible permeable foam sleeve, the permeable foam sleeve and nonpermeable outer plastic skin extending substantially the entire length of the mandrel, and this structure permits compression of the outer flexible sleeve and outer plastic skin carried on the tube against a casting, e.g., a cement, composition poured into a mold (co 2 li 7-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify McGinnis with the teachings of Sachs to form the first piece of a permeable open cell, flexible, e.g., polyurethane, foam material in order to permit compression of the mandrel against a casting composition poured into a mold.
Claims 8, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over McGinnis et al. (US 2019/0217508) as applied to claim 1 above.
With respect to claim 8, McGinnis as applied to claim 1 above does not explicitly teach that the mold part comprises a plurality of first pieces and second pieces connected one to another longitudinally, thus, defining a connection section. However, one would have found it obvious to make a plurality of first pieces and second pieces to form the mandrel taught by McGinnis, since the Courts have held that making known elements separable is within the skill of a person of ordinary skill in the art. See In re Dulberg, 129 USPQ 348 (CCPA 1961) (see MPEP § 2144.04).
With respect to claim 9, McGinnis as applied to claim 8 above does not explicitly teach that the second pieces comprise tongue-and-groove joints in the connection section of the second pieces. However, one would have found it obvious to connect the second pieces by the known tongue-and-groove joints, since it has been held that Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
With respect to claim 11, McGinnis as applied to claim 8 above further teaches that the plurality of protrusions and recesses define a sequence of polygonal or circular shapes (“the component 102 may also be formed with one or more other surface features 110 formed on one or more internal skins 106 of the component 102. The surface features 110 may be formed by corresponding surface features included in surfaces of corresponding mandrels.”, Pa [0039] and Figs. 1C, 1D).
Allowable Subject Matter
Claims 5-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 5, the prior art (McGinnis et al., US 2019/0217508) teaches a mandrel comprising a first piece and a second piece (Fig. 5B), but does not explicitly teach that the second piece is a cover comprising two lateral surfaces and a base surface, wherein the second piece comprises a gap between the lateral surfaces opposed to the base surface. Other prior arts (Diefenderfer et al. (US 2012/0319324), Scott (US 2004/0079043), Rossart (US 12,129,672)) also teach a mandrel comprising a first piece and a second piece, but does not teach or suggest the deficit of McGinnis.
Claims 6 and 7 are allowable because they depend from, and thus include all the limitations of claim 5.
With respect to claim 10, in the prior art (McGinnis et al., US 2019/0217508), one would have found it obvious to make a plurality of first pieces and second pieces to form the mandrel taught by McGinnis. However, McGinnis does not teach or suggest a plurality of stiffeners connected one to another longitudinally such that the connection section of the stiffeners is not coincident with the connection section of the second pieces. None of the prior arts does teach or suggest the deficit of McGinnis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUNJU KIM whose telephone number is (571)270-1146. The examiner can normally be reached 8:00-4:00 EST M-Th; Flexing Fri.
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/YUNJU KIM/Primary Examiner, Art Unit 1742
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