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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
Figure 3 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 plasticizing unit configured to …” in claims 1 and 5 with corresponding structure disclosed at least in [0035-0040] and Fig. 2 of Applicant’s published application.
“a mixing and kneading unit configured to …” in claim 1 with corresponding structure disclosed at least in [0041-0045] and Fig. 2 of Applicant’s published application.
“a kneading and injection unit configured to …” in claims 1 and 5 with corresponding structure disclosed at least in [0046-0050] and Fig. 2 of Applicant’s published application.
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.
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 § 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.
Claim(s) 5 is/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.
In line 4, Claim 5 recites the limitation “the reinforcing fiber” which is indefinite. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation “mixing and kneading the thermoplastic resin and the reinforcing fiber while heating with a mixing and kneading screw having received the thermoplastic resin in the completely molten state by the plasticizing unit and the reinforcing fiber” which is indefinite. According to [0041-0045] and Fig. 2 of Applicant’s published application, a mixing and kneading screw is insufficient structure to perform all the claimed steps/functions. Thus, the limitation is indefinite because it is inconsistent with Applicant’s disclosure (see MPEP § 2173.03).
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.
Claim(s) 1, 3, and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shi (CN 106042322B with English machine translation - attached).
Regarding claim 1, Shi discloses an injection device comprising:
a plasticizing unit (first extruder 24) configured to cause a supplied thermoplastic resin to be in a completely molten state (Abstract, pg. 5, claim 2, Fig. 2; wherein the raw material fed to 24 is a thermoplastic resin: pg. 6; and wherein 24 reads on the claimed/disclosed plasticizing unit structurally and functionally);
a mixing and kneading unit (second extruder 25) configured to receive the thermoplastic resin in the completely molten state by the plasticizing unit and also configured to receive reinforcing fiber for mixing and kneading the thermoplastic resin and the reinforcing fiber while heating (Abstract, pg. 5, claim 2, and Fig. 2; and wherein 25 reads on the claimed/disclosed plasticizing unit structurally and functionally); and
a kneading and injection unit (annotated injection unit) configured to inject the thermoplastic resin and the reinforcing fiber, both mixed and kneaded together, into a cavity (annotated C) in a clamping device (annotated CD: pages 4-5 and annotated Fig. 2; wherein the taught/annotated injection unit performs the claimed injection function, and therefore, it reads on the claimed unit). Thus, Shi discloses the device substantially as claimed by applicant. See MPEP §§ 2112.01 I, 2114 I-II, and 2115. Shi further discloses Applicant’s inventive concept of separating resin melting from fiber mixing for the benefits of keeping the fibers length longer and improving molded part strength (pg. 3).
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Regarding claim 3, Shi discloses an injection molding machine comprising the injection device according to claim 1 (Abstract, Annotated Fig. 2 above, and rejection of claim 1 above).
Regarding claim 5, Shi discloses an injection molding method (Abstract, Annotated Fig. 2 above), comprising:
causing a supplied thermoplastic resin to be in a completely molten state by a plasticizing unit (melting a supplied raw material by a first extruder 24; Abstract, pg. 5, claim 2, Fig. 2; wherein the raw material supplied to 24 is a thermoplastic resin: pg. 6; and wherein 24 reads on the claimed/disclosed plasticizing unit structurally and functionally);
mixing and kneading the molten thermoplastic resin and a reinforcing fiber while heating with a mixing and kneading screw having received the thermoplastic resin in the completely molten state by the plasticizing unit and the reinforcing fiber (receiving a reinforcing fiber and mixing and compounding/kneading the molten raw material and the reinforcing fiber while heating with a second extruder 25 comprising a mixing and kneading screw having received the molten raw material in the completely molten state by 24 and the reinforcing fiber: Abstract, pg. 5, claim 2, and Fig. 2; and wherein 25 reads on the claimed/disclosed mixing and kneading screw structurally and functionally); and
injecting the thermoplastic resin and the reinforcing fiber, both mixed and kneaded together, into a cavity in a clamping device using a kneading and injection unit (receiving, the molten raw material and the reinforcing fiber, both mixed and kneaded together by 25, by the annotated injection unit and injecting thermoplastic resin and the reinforcing fiber into cavity C in a clamping device CD using the annotated injection unit: pages 4-5 and annotated Fig. 2 above; wherein the taught/annotated injection unit performs the claimed injection function, and therefore, it reads on the claimed unit). Thus, Shi discloses the method substantially as claimed by applicant. See MPEP §§ 2112.01 I and 2112.02 I. Shi further discloses Applicant’s inventive concept of separating resin melting from fiber mixing for the benefits of keeping the fibers length longer and improving molded part strength (pg. 3).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hawley (US 5185117).
Regarding claim 1, Hawley ‘117 discloses an injection device (1) comprising:
a plasticizing unit (resin extruder 4) configured to cause a supplied thermoplastic resin to be in a completely molten state (C5, L33 to C6, L55 and Figs. 1-3; furthermore, the resin extruder 4 is structurally and functionally equivalent to the claimed/disclosed plasticizing unit);
a mixing and kneading unit (compounding extruder 8) configured to receive the thermoplastic resin in the completely molten state by the plasticizing unit and also configured to receive reinforcing fiber for mixing and kneading the thermoplastic resin and the reinforcing fiber while heating (C6, L56 to C7, L68 and Figs. 1-3; furthermore, the compounding extruder 8 is structurally and functionally equivalent to the claimed/disclosed mixing and kneading unit); and
a kneading and injection unit (extruder 88) configured to inject the thermoplastic resin and the reinforcing fiber, both mixed and kneaded together, into a cavity in a clamping device (extruder 88 is capable of injecting/discharging the mixture obtained by 8 into a cavity of any molding device including a clamping device: C8, L42 to C9, L25; furthermore, the extruder 88 is structurally and functionally equivalent to the claimed/disclosed kneading and injection unit). Thus, Hawley ‘117 discloses the injection device substantially as claimed by applicant. See MPEP §§ 2112.01 I, 2114 I-II, and 2115. Hawley ‘117 further discloses Applicant’s inventive concept of separating resin melting from fiber mixing for the benefits of keeping the fibers length longer and improving molded part strength (C7, L56 to C9, L15).
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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.
The factual inquiries 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.
Claim(s) 2 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shi as applied to claim 1 above, and further in view of Hawley (US 6431847).
Regarding claim 2, Shi fails to disclose wherein the kneading and injection unit has a kneading and injection screw and a kneading and injection screw-operation mechanism configured to rotate and move forward and backward the kneading and injection screw.
In the same field of endeavor, injection molding machines for compounding and injecting thermoplastic resin and fiber, Hawley ‘847 discloses the technique of using a feed extruder (16) as a suitable kneading and injection unit, the feed extruder comprising a kneading and injection screw (66) and a kneading and injection screw-operation mechanism (70) configured to rotate and move forward and backward the kneading and injection screw (C6, L52 to C7, L4, Fig. 1), the kneading and injection screw-operation mechanism is operated to perform kneading, dispersion, measurement, and injection of the thermoplastic resin and the reinforcing fiber in the kneading and injection unit (since the feed extruder 16 of Hawley is structurally identical to the claimed kneading and injection unit, the feed extruder 16 of Hawley is expected to be capable of performing the claimed functions: See MPEP §§ 2112.01 I and 2114 I; Furthermore, the rotation of 66 in barrel 62 is expected to inherently achieve kneading and dispersion of the fibers within the molten resin, the backward movement of 66 is expected to inherently achieve the measuring of the mixture, and the forward movement of 66 is expected to inherently achieve the injection of the mixture: See MPEP §§ 2112.01 I and 2114) for benefit(s) of applying a final dispersement, impregnating and wetting of the fiber strands by the resin (C7, L29-43). A person having ordinary skill in the art would have recognized that kneading and injection unit of Hawley is superior than the injection unit of Shi because it maintains/enhances kneading and dispersion of the fibers within the molten resin by movements of the kneading and injection screw.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the device of Shi in view of Hawley ‘847 by replacing the injection unit of Shi with the kneading and injection unit of Hawley ‘847 for the benefit(s) of applying a final dispersement, impregnating and wetting of the fiber strands by the resin and/or maintaining/enhancing kneading and dispersion of the fibers within the molten resin by movements of the kneading and injection screw as suggested by Hawley ‘847.
Regarding claim 4, Shi, as modified above in claim 2 above, further discloses an injection molding machine comprising the injection device according to claim 2 (Abstract, Annotated Fig. 2 above, and rejection of claim 2 above). See MPEP §§ 2143 I B, 2143 I C, 2143 I G, and/or 2144 II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERZI H MORENO HERNANDEZ whose telephone number is (571)272-0625. The examiner can normally be reached 1:00-10:00 PM PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JERZI H. MORENO HERNANDEZ
Primary Examiner
Art Unit 1743
/JERZI H MORENO HERNANDEZ/ Primary Examiner, Art Unit 1743
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