Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[Uncle Melvin]

I know that this may seem like a very fundamental post, but I'm having a lot of trouble claiming an invention for my company.  I have 1.5 years of patent prosecution experience, am a registered agent, and thought I knew what "comprising" meant.

But I'm having trouble claiming this invention for my company.  My current claim is:
"1. A mold, comprising a release agent."

Our invention is that the mold is injection molded in a way to include the release agent, so that the release agent doesn't have to be sprayed onto the mold after the mold is made.

But the examiner rejected my claim based on a reference that teaches spraying a release agent onto the mold after the mold is formed.  She says that a mold with a release agent sprayed onto it "necessarily includes a release agent."

Is she right?  If so, is there any way I can claim this to get around this reference?

Thank you.

[MLM]

I think I understand what you are getting at, but "comprising" won't distinguish between a mold that is formed with the release agent and a mold that has a release agent applied after it is formed, because both molds include release agents regardless of how or when the release agent got there.  In other words, "comprising" does not mean "integral upon formation," which is what I think you are trying to claim.

[Uncle Melvin]

That's what I was afraid of.  Thanks MLM.  Is there any language I could use to distinguish it from the prior art?

[Uncle Melvin]

Oh sorry, I just re-read your post, MLM.  Are you saying that if I said something like "integral upon formation" that that would distinguish my claim over the prior art?

[MLM]

Oh sorry, I just re-read your post, MLM.  Are you saying that if I said something like "integral upon formation" that that would distinguish my claim over the prior art?

Well, that's the general idea, but it really depends on what support is in the specification. Hopefully there is some language there that might be useful.

[Uncle Melvin]

I have an embodiment where a release agent is included in a composition that is used to form the mold.  Would that be sufficient, in your opinion, to support such claim language?

[MLM]

I'm not going to offer a legal opinion, but I do appreciate your quandary. It has me scratching my head too. Maybe in the morning someone will chime in with a thought.

[Wiscagent]

Uncle,

If I came to you with a) a prior art mold (w/sprayed-on release agent), and b) the improved mold; how would you identify which is which?

(a) and (b) certainly are made using different processes, and that is one way to draft claims that would distinguish the two molds.  You can always write a product by process claim, but it would be better if you could draft a claim based on some compositional difference or difference in properties between (a) and (b).  Are there any inherent differences in the finished molds?   Do you have any technical data in the specification that shows those differences?

[BobRoberts]

Perhaps (but excuse the names I’ve given the various elements- you would of course use names that are non-limiting):

A method of building/creating a mold (for controlling the shape of a ____ material as it changes from a substantial liquid to a substantial solid), comprising:

providing a <material> material;
providing a release agent; and
mixing the <mateiral> material and the release agent to form a release mold material;
forming the mold from the release mold material.

or

providing a <material> material;
providing a release agent;
mixing the <mateiral> material and the release agent to form a mold mixture;
(sequentially) applying (spraying, painting) the mold mixture to a blank (or whatever you call it- I'm thinking concrete or plaster molds and am sure that there are plenty of other types of molds).

Specific  names of the various mixtures and compositions aside, can you claim it as a way of forming the mold?  Distant memories seem to recall that if only apparatus claims were included with the original application, that the addition of method claims could result in a restriction requirement?

A mold comprising:
a ______ base mold material; and
a release agent;
wherein the release agent is mixed with the base mold material prior to forming the mold.

A mold comprising:
a mold material including a mixture of a base mold material and release agent.

Anything that distinguishes the mold release from being applied to the surface vs. the release being integrated within the mold material.

Just some pre-coffee random thoughts.  Good luck.

[MLM]

A mold comprising:
a ______ base mold material; and
a release agent;
wherein the release agent is mixed with the base mold material prior to forming the mold.

A mold comprising:
a mold material including a mixture of a base mold material and release agent.

Anything that distinguishes the mold release from being applied to the surface vs. the release being integrated within the mold material.

It does seem like this lends itself better to a method claim, but there ought to be a way to do it as an apparatus claim too.  I too am tempted by the wherein clause but I don't like relying on wherein clauses as the sole point of novelty. The second proposal above is closer but I think depends on whether adequate support for the "mixture" exists and that "mixture" excludes the possibility of "mixing" the release agent by spraying it on. Perhaps a mold comprising: a compound having a release agent blended (or amalgamated) therein.