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 .
DETAILED ACTION
Response to Amendment
Applicant's response filed on 07/06/2026 have been entered. Claims 1, 3-5, 8, 12-15, 19, 23-24, 26 and 28-30 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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.
Claims 1, 4-5, 12-15, 19, 23-24, 26 and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Bose et al (US 2009/0173908, ‘908 hereafter).
Regarding claims 1, 4-5, 12-15, 19, 23-24 and 28-29, ‘908 discloses a magnetic shape-memory composition ([0007]) comprising a shape memory polymer matric being elastomeric material polynorbornene having Tg being around 37°C, which has Young’s modulus satisfying present claims 4 and 5 ([0008]-[0010], since the polynorbornene having Tg around 37°C, the polymer at 25°C is in the glass state which generally has Young’s modulus in the presently claimed range as in claim 5, the polymer in the temperature higher than Tg (in rubber state) generally has Young’s modulus in the range of present claim 4); and a population of hard-magnetic particle having particle size 1 to 999 microns ([0015]) including NdFeB being a rare earth-transition metal-metalloid and Barium ferrite being a hexagonal ferrite ([0012]). ‘908 discloses that the magnetic particles can be either hard magnetic particle, soft magnetic particle or the mixture of these particles ([0011]-[0013]), but does not specifically set forth a composition comprising two magnetic particles as presently claimed. However, since ‘908 teaches that both soft magnetic particles and hard magnetic particles can be used to make the composition having desired mechanic properties for a damping application ([0001], [0011]-[0014]), it would have been obvious to one of ordinary skill in the art to be motivated to further use these particles together in the composition disclosed by ‘908, to render the composite having desired properties. It is well settled that it is prima facie obvious to combine two ingredients each of which is taught by the prior art to be useful for the same purpose. The idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (See MPEP 2144.06). The soft magenetic particle can be iron or iron alloy powders ([0011]), which natually has coercive force lower than the hard magetiv particles as recited in the presetn claims 25 and 26. ‘908 also discloses that the volume concentration of magnetic particle can be 10 to 50 vol% ([0015]), and the particle content and size satisfying present claims 28 and 29 ([0015]). ‘908 does not expressly set forth that the composition exhibits reversible, fast and controllable transforming deformation; shape-locking and reprogramming capabilities, however, since 908 fairly suggests a compostion being substantially identical to the presently claimed magnetic shape-memory composition; it is reasonable to expected that the prior art composition would have possessed the same properties; including reversible, fast and controllable transforming deformation, shape-locking and reprogramming capabilities as presently claimed; in absence of an objective showing to the contrary (See MPEP 2112).
Regarding claim 30, ‘908 also discloses an article can be made from the composition ([0030], [0031]).
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Bose et al (US 2009/0173908, ‘908 hereafter) in view of Lahelin et al (Composite part A, 2009, p125-129, of record, see IDS filed on 12/20/2021).
Regarding claims 3 and 8, ‘908 teaches all the limitations of claim 1, but ‘908 does not disclose that the polymer matric is one of the resins as recited in the present claim 8, However, in the same field of endeavor, Lahelin et al discloses a magnetic shape memory composition comprising magnetic particles and a polymer matrix (Table 1, page 127), wherein an epoxy resin is used to make the composite for the epoxy resin has good adhesion with magnetic particles (See Results and discussion section, page 127). In light of these teachings, one of ordinary skill in the art would have use epoxy resin as known in the art, to modify the composition of ‘908, in order to render a composition having better mechanic properties by taking the advantage of better adhesion between polymer matrix and embedded magnetic particles. Lahelin et al discloses that the Tg of the resin can be in the range as recited in the present claim 3 (peaks of Tan Delta, see Fig. 3a and Fig 3b, pages127-128).
Response to Arguments
Applicant's arguments filed on 07/06/2026 have been fully considered but they are not persuasive.
Applicant argues that the Bose fails to disclose or suggest a shape memory polymer matrix having Tg of at least 25°C because addition of plasticizer decrease the Tg of the polymer matrix. However, the magnetic shape-memory composition as presently claimed does not require the polymer matrix having Tg being at least 25°C. “the polymer matrix comprises a polymer or blend of polymers having a Tg of at least 25°C” as recited in the claim requires that the polymer or blend of polymers has Tg as argued.
Applicant also argues that the cited prior art does not have “shape-locking capability”, however, as cited in the applicant’s remark, in paragraph [0025] of Bose recites that “the new shape is maintained as long as the magnetic field is in operation” , which clearly states that the composition of Bose can be “shape-locked” under magnetic field, which satisfies the function of “shape-locking” as presently claimed. In addition, nowhere in Bose sets forth that the hard magnetic particles and soft magnetic particles as alternatives for tuning mechanical and damping properties. In fact, both hard magnetic particles and soft magnetic particles affect mechanic properties which can be used to adjust mechanic and damping properties, thus obviously can be used together in a composition to render the composition having desire mechanic and damping properties.
Regarding the performance characteristics of the magnetic shape-memory compositions as claimed. The applicant is invited to provide experimental data to demonstrate that the combination of a shape memory polymer matrix, a hard-magnetic particles and an auxiliary magnetic particles as claimed shows unexpected effects on the properties such as deformation, shape-locking and reprogramming capabilities; especially comparisons between a composition having hard-magnetic particle and soft-magnetic particle together, with a composition having hard-magnetic particle alone and a composition having soft-magnetic particle alone.
For the reasons set forth above and of record, the claims stand properly rejected.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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