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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/11/2026 has been entered.
Claim Objections
Claim 18 is objected to because of the following informalities: “subsequentially” (line 12) appears to be a simple typographical error, combining “subsequently” and “sequentially”. It seems likely that “subsequently” is the intended word. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 18-29, 37, 39-40, 43-47 and 49-50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al. (WO 2020/257664 A1).
Regarding claim 18, Zhao discloses a method of fabricating a programmable magnetic soft device, wherein the magnetic soft device comprises one or more parts (Title; Abstract; pg. 19, lines 1-6), and wherein the magnetic soft device has a Young's modulus of less than 500 MPa in one or more parts of the device (pp. 11-12, lines 22-33 and 1-10), the method comprising the steps of: forming a composite of base material and magnetic elements distributed within said base material (figs. 2A-2B; pg. 2, lines 16-28; pg. 13, lines 15-16; pg. 38, lines 16-30); shaping (shaping and reshaping are disclosed) the composite to have a desired final shape for providing the one or more parts of the magnetic soft device (pp. 2-3, lines 22-33 and 1-20; pg. 19, lines 3-5; pp. 38-39, lines 30-33 and 1-5; and/or pg. 40, lines 5-13; pp. 40-41, lines 31-33 and 1-4), wherein after said shaping at last one part has a Young's modulus of less than 500 MPa (pp. 11-12, lines 22-33 and 1-10); heating the composite (heated to and/or just above the glass transition temps of 50°C-80°C)(pp. 2-3, lines 22-33 and 1-4; pg. 3, lines 12-20; pg. 10, lines 20-25); and subsequentially [sic, should be subsequently] cooling the composite while applying a magnetic field at the composite as a step of magnetization (pg. 3, lines 6-11), with the step of heating comprising heating the composite to a temperature selected in the range of 25% below the Curie temperature (disclosed as being from 30°C -600°C) to a temperature 25% above the Curie temperature of said magnetic elements (the heating temp is disclosed as being around 50°C-80°C, and this heating range falls within the disclosed Curie temperature range of 30°C-600°C, and even when subtracting 25% off or adding 25%, the range still falls within 37.5°C-100°C) (pg. 10, lines 20-25; pg. 18, lines 1-12).
Regarding claim 19, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of heating is carried out before the step of shaping (reshaping or reprogramming) the composite (pg. 3, lines 12-20).
Regarding claim 20, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping (the original shape forming) and the step of heating are carried out simultaneously (pg. 2, lines 22-30).
Regarding claim 21, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the applied magnetic field during the cooling step is below the coercive magnetic field of the magnetic element at its room temperature state (pp. 2-3, lines 33 and 1-9).
Regarding claim 22, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping the composite comprises molding the composite in one mold of pre-defined shape and size (pg. 40, lines 5-13; pp. 40-41, lines 31-33 and 1-4).
Regarding claim 23, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the melting temperature of the base material is higher than the maximum temperature applied to the magnetic composite during the heating step (pg. 10, lines 20-25).
Regarding claim 24, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the steps of heating and cooling the composite are carried out a plurality of times sequentially for different regions of the composite (pp. 2-3, lines 22-33 and 1-20; pg. 10, lines 13-25).
Regarding claim 25, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 24, wherein the step of magnetization is carried out for each step of cooling for each region of the composite so that each region is provided with its own magnetization direction (figs. 32A-34B; pg. 8, lines 3-23; pp. 52-53; lines 24-33 and 1-31).
Regarding claim 26, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of heating the composite is carried out with a light source, or wherein the step of heating the composite is carried out with one of a convection oven, a hot-plate and a heat-gun (hot-plate: pg. 53, lines 12-19).
Regarding claim 27, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the steps of heating and cooling the composite are carried out a single time globally for different regions of the composite (Zhao discloses that the product can be reprogrammed, which also means that it can be programmed only once) (pp. 2-3, lines 16-33 and 1-12; pg. 53, lines 12-19).
Regarding claim 28, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 27, wherein the step of magnetization is carried out for a single time during cooling for each region of the composite by using a magnetic master configured to generate desired magnetization profile so that each region is provided with its own magnetization direction (figs. 32A-34B; pg. 8, lines 3-23; pp. 52-53; lines 24-33 and 1-31).
Regarding claim 29, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of applying the magnetic field is carried out with a magnetic field having a magnitude selected in the range of 1 mT to 10 T (pg. 2, lines 29-33).
Regarding claim 37, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping the composite comprises molding two or more parts of the composite in one or more molds of same shape and size (pg. 40, lines 5-13).
Regarding claim 39, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping the composite comprises photolithographing the composite (pg. 2, lines 29-30).
Regarding claim 40, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping the composite comprises photolithographing one or more parts of the composite (pg. 2, lines 29-30).
Regarding claim 43, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping the composite comprises 3D printing the composite (pg. 3, lines 24-25; pg. 21, lines 26-29).
Regarding claim 44, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping the composite comprises 3D printing one or more parts of the composite (pg. 3, lines 24-25; pg. 21, lines 26-29).
Regarding claim 45, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping the composite comprises combining parts of the composite (pg. 40, lines 5-13).
Regarding claim 46, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping the composite comprises cutting sections of material from the composite (pg. 40, lines 5-13).
Regarding claim 47, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping the composite comprises cutting sections of material from one or more parts of the composite (pg. 40, lines 5-13).
Regarding claim 49, Zhao discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of heating is carried out after the step of shaping the composite (Zhao discloses iterative steps, wherein the heating can be performed another time after the original heating and shaping: pp. 2-3, lines 22-33 and 1-20).
Regarding claim 50, Zhao discloses the9 method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of heating is carried out during the step of shaping the composite (pg. 3, lines 12-16).
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 of this title, 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 38 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao, in view of Gorter et al. (US 2,762,778).
Regarding claim 38, Zhao discloses all of the elements of the current invention as detailed above with respect to claim 18. Zhao further discloses that the step of shaping the composite comprises molding the composite in at least two molds (“acrylic molds”: pg. 40, lines 5-13; pp. 40-41, lines 31-33 and 1-4). Zhao, however, does not explicitly disclose that the step of shaping the composite comprises molding the composite in two or more molds of differing shapes and sizes.
Gorter teaches that it is well known to perform a similar a method of fabricating a programmable magnetic soft device, wherein the magnetic soft device comprises one or more parts, the method comprising the steps of: forming a composite of base material (Ba, Sr and/or Pb, and/or polyvinyl acetate) and magnetic elements (iron) distributed within said base material (col. 1, lines 17-40 and 64-68; col. 3, lines 43-58); shaping the composite to have a desired final shape for providing the one or more parts of the magnetic soft device (col. 2, lines 10-28); heating the composite (col. 1, lines 36-40; col. 3, lines 59-69; or col. 2, lines 10-18); and cooling the composite while applying a magnetic field at the composite as a step of magnetization (cols. 3-4, lines 70-75 and 1-4), with the step of heating comprising heating the composite to a temperature selected in the range of 25% below the Curie temperature to a temperature 25% above the Curie temperature of said magnetic elements (col. 2, lines 66-70); wherein the step of shaping the composite comprises molding one or more parts of the composite in two or more molds (metal shroud or closed tube; and brass die) of differing shapes and sizes (col. 2, lines 24-32; col. 3, lines 59-69; col. 4, lines 24-26).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Zhao to incorporate the molds having differing shapes and sizes of Gorter. It has been held by the courts that a change in shape or configuration, without any criticality in operation of the device, is nothing more than one of numerous shapes that one of ordinary skill in the art will find obvious to provide based on the suitability for the intended final application. Further, it has been held by the courts that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. POSITA would have realized that molding of composite materials with any number of molds having any number of different shapes/sizes can be easily and readily performed to achieve the desired final shape and dimensions of the molded object. Moreover, there is no indication in the instant disclosure that any special molds or molding step(s) was devised or that any surprising results were derived from simply using the old method of Zhao with the well-known differently sized/shaped molds of Gorter. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Claims 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao, in view of Wildes et al. (US 11,806,191 B2).
Regarding claim 41, Zhao discloses all of the elements of the current invention as detailed above with respect to claim 18. Zhao, however, does not explicitly disclose that the step of shaping the composite comprises stereo lithographing the composite.
Wildes teaches that it is well known to perform a similar additive manufacturing method (Title; Abstract; col. 7, lines 61-64), wherein the step of shaping the composite comprises stereo lithographing the composite (col. 8, lines 3-14).
Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have modified the current invention of Zhao to incorporate the stereo-lithography composite shaping of Wildes. POSITA would have realized that stereo-lithography can be easily and readily substituted for the molding of Zhao as known and obvious alternative expedients in the art to achieve the desired precision in forming the desired shape, repeatability of forming products and thus benefitting from the known decrease in manufacturing time and costs associated therewith. Moreover, there is no indication in the instant disclosure that any special stereo-lithography step was devised or that any surprising results were derived from simply using the old method of Zhao with the well-known stereo-lithography shaping of Wildes. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 42, Zhao discloses the method of claim 18 as detailed above. Zhao, however, does not disclose that the step of shaping the composite comprises stereo lithographing one or more parts of the composite.
Wildes teaches that it is well known that the step of shaping the composite comprises stereo lithographing one or more parts of the composite (col. 8, lines 3-14).
Regarding the rationale for combination, please refer to the rejection of claim 41, above, as the rationale provided therein is equally applicable to this claim.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the arguments do not apply to the references as they are currently being used in the instant rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the concurrently mailed PTO-892, as all of those cited references are considered to be pertinent to the claimed invention. For example, Ucar et al. (US 2018/0228442 A1) is particularly relevant to the claimed invention and discloses the use of magnetic material embedded in soft polymer in at least pars [0009 and 0043].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey T Carley whose telephone number is (571)270-5609. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729
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