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 .
Specification
The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
The disclosure is objected to because of the following informalities: The Specification provided by the Applicant does not follow the above requirements for format. In the instant Specification there are no sections at all, and the Specification should be amended to include the sections and formatting as detailed above.
Appropriate correction is required.
Election/Restrictions
Newly submitted claim 48 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The originally disclosed and examined claims did not present or require that “the step of shaping the composite comprises combinations of molding the composite in one mold of pre-defined shape and size, molding one or more parts of the composite in one or more molds of same shape and size, molding the composite in one or more molds of differing shapes and sizes, photolithographing the composite, photolithographing one or more parts of the composite, stereo lithographing the composite, stereo lithographing one or more parts of the composite, 3D printing the composite, 3D printing one or more parts of the composite, combining parts of the composite, cutting sections of material from the composite, and cutting sections of material from parts of the composite.” There is a substantial difference between requiring “at least one of the following steps” versus requiring “combinations [plural] of” a number of steps. The newly added claim represents an embodiment which is distinct from the originally examined embodiments and would require an overly burdensome search.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 48 has been withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 18 is objected to because of the following informalities: “A method of fabricating a programmable magnetic soft device in which magnetic micro/nanoparticles are embedded in soft polymers, wherein the magnetic soft device comprising one or more parts, and wherein the magnetic soft device having a Young's modulus of less than 500 MPa in one or more parts of the device,” (lines 1-4; emphasis added). This language is grammatically incorrect and difficult to read or understand. The word “comprising” should be changed to “comprises”. The phrase “and wherein the magnetic soft device having” should be changed to “and the magnetic soft device has” Appropriate correction is required.
Claim 47 is objected to because of the following informalities: “the step of shaping the composite comprises cutting sections of material from parts of the composite” (emphasis added). This claim should be amended in line with the other newly added claims to instead disclose: “the step of shaping the composite comprises cutting sections of material from one or more parts of the composite”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 18-29, 37-47 and 49-50 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is nothing anywhere in the original disclosure (specification, drawing figures or original claims) which requires or even implies that the method of manufacture is performed such that the temperature must be “measured in °C” (claim 18, line 14, as newly amended). This is a more specific embodiment than was originally disclosed and thus represents improperly added new matter. The original disclosure does not specify which thermal measurement units are used, and therefore any known temperature scale (e.g. K, °F) can be employed in the originally presented method, which does not require measurement only in °C.
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.
Claims 18-29, 37-47 and 49-50 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 18 discloses “A method of fabricating a programmable magnetic soft device” (lines 1-1-2; emphasis added); the claim further discloses a “magnetic soft device in which magnetic micro/nanoparticles are embedded in soft polymers, wherein the magnetic soft device comprising one or more parts, and wherein the magnetic soft device having a Young's modulus of less than 500 MPa in one or more parts of the device” (lines 2-4; emphasis added). This preamble language is indefinite and renders the claim indefinite.
With regards to the first quoted section, there is nothing the claims which indicates how a magnet would be “programmable”, which is confusing, because it is apparently important to the inventive concept (the term appears nearly 30 times in the specification). The product being formed is not a computer; it is simply a magnet, and thus the reader cannot apply the common definition of the term “programmable” in the claim. As such, the reader is left to guess what the intended meaning of the word may be, and/or to refer to the instant Specification in order to determine the intended definition of “programmable”. The Specification indicates that the programming may be directed toward changing the “shape” via “shape deformation” (pg. 1; further describing “programmable shape-deformation under magnetic fields” in pg. 24), but also discloses that the product may be programmable with respect to simply magnetizing of the device (pg. 4), and also the method may even be so advanced as to provide “magnetic devices which can be programmed to carry out specific tasks” (pg. 11), even further the programming apparently may entail “programmable three-dimensional magnetization and motions” (pg. 22).
With respect to the second quoted section, claim 18 does not have a single method step directed to embedding magnetic particles into anything, much less into a plurality of soft polymers. There is no mention in the body of the claim of any step of forming or providing any more than one part of the device. There is no discussion of selection of use of a material which has a Young’s modulus of less than 500 MPa. These supposed features of the product are in no way supported by the body of the claim where the actual method is recited. Further, it is not evident in the original specification that the magnetic particles are embedded in a plurality of soft polymers as recited in the preamble. The Applicant is being given the benefit of the doubt that this is a typographical error, rather than improper new matter warranting a 112(a) rejection; however, the claim should be amended to recite “a soft polymer” rather than “soft polymers”.
Further compounding the difficulty in ascertaining the actually intended method, is the fact that there is nothing in the entire body of the claim which provides any steps that are described as being directed to the potential programming, or soft polymers, or more than one part of the device, or materials which would have a Young’s modulus of less than 500 MPa from the preamble. As such, there is no nexus of connection between the preamble and the body of the claim; nothing in the body which discloses that the device is “programmable”, or that there are micro/nanoparticles embedded in soft polymers, or the number of parts being greater than one, or the Young’s modulus being as recited. The body of the claim does not address any of these limitations in any discernable manner. Therefore at least the cited portion of the preamble is not found to breathe life and meaning into the claim and is thus not afforded patentable weight.
Careful reading of the specification gives the impression that the inventive concept is directed to a method of providing a magnetic soft device comprising magnetic micro/nanoparticles embedded in one or more soft polymers, and then imparting magnetic fields in order to “program” the device to change the shape of the magnetic soft device product. If this is the case, then it is curious that the Applicant has so assiduously avoided any disclosure of such a method in the actually claimed invention, even going so far as to contradict the inventive concept in claim 18 by disclosing “shaping the composite to have a desired final shape”.
The preamble is not being ignored in the current claim interpretation, but is being given the weight appropriate for the manner in which it, and the body of the claim, are recited. As such, the “programmable” language in the preamble is interpreted to describe the intended capability of the product to be formed, and therefore, if the prior art discloses a magnetic soft device which can be magnetized, shaped, made to change in shape or able to carry out tasks, then it is held to anticipate the capability of the product being formed in the claimed method. Similarly, the magnetic soft device may have magnetic particles embedded in a soft polymer, but the body of the claim requires no such thing and thus it is not found to be a limitation of the method. The same is true of the device comprising more than one part, and of the device having a Young’s modulus of less than 500 MPa.
If these limitations are important, why are they not recited in the body of the claim as part of the patentably limiting method? The Applicant is again strongly encouraged to determine the intended inventive concept and to recite as much in the claimed method.
Claims 19-29, 37-47 and 49-50 are rejected as indefinite by virtue of their dependency upon the indefinite subject matter of claim 18.
Claim 21 is further found to be indefinite, as the claim discloses “the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the applied magnetic field during the heating and/or cooling step” (lines 1-3; emphasis added). There is a lack of antecedent basis for applying a magnetic field “during the heating [step]”. Claim 18 discloses applying the magnetic field only during the cooling step.
Claim 37 is further found to be indefinite, as the claim discloses “the step of shaping the composite comprises molding one or more parts of the composite in one or more molds of same shape and size” (lines 2-3; emphasis added). This claim is indefinite because under the entirely reasonable interpretation of molding in “one” mold, there is nothing for that one mold to be the same shape and size as. Further, the claim should state “the same shape and size”.
Claim 38 is indefinite for effectively the same reason as claim 37. If there is only one mold (as is reasonable to interpret based upon the applicant’s own claim language) then there is nothing else to compare that mold’s shape and size to.
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 18-25, 27-29, 37-38, 45 and 49-50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gorter et al. (US 2,762,778). Due to the above noted indefiniteness issues, all claims examined as best understood.
Regarding claim 18, Gorter discloses a method of fabricating a programmable magnetic soft device in which magnetic micro/nanoparticles [can be] embedded in soft polymers (PVA in liquid form), wherein the magnetic soft device comprising one or more parts, and wherein the magnetic soft device having a Young's modulus of less than 500 MPa in one or more parts of the device, 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 (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 close to or above the Curie temperature of said magnetic elements (col. 2, lines 66-70).
NOTE: as currently presented, the method of at least claim 18 does not require all of the steps to be performed in the order presented. The “forming a composite” step must be performed prior to the other steps; however, the “shaping”, “heating” and “cooling” steps can be performed in any order thereafter.
Regarding claim 19, Gorter discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of heating is carried out before, and/or after and/or during the step of shaping the composite (col. 1, lines 36-40; col. 3, lines 59-69).
Regarding claim 20, Gorter discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping and the step of heating are carried out simultaneously (col. 2, lines 10-18).
Regarding claim 21, Gorter discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the applied magnetic field (2000 Oersteds) during the heating and/or cooling step is below the coercive magnetic field (remanent field = 2650 Gauss = 2650 Oersteds) of the magnetic element at its room temperature state (col. 4, lines 30-45).
Regarding claim 22, Gorter 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 (col. 2, lines 10-14; col. 3, lines 59-65).
Regarding claim 23, Gorter discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the melting temperature of the base material (melting temperature of Strontium is 1431 °C) is higher than the maximum temperature (max temp in Example 1 is 1280 °C) applied to the magnetic composite during the heating step (col. 4, lines 10-45).
Regarding claim 24, Gorter 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 (col. 4, lines 10-45).
Regarding claim 25, Gorter 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 (cols. 3-4, lines 70-75 and 1-4).
Regarding claim 27, Gorter 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 (col. 2, lines 24-32; cols. 3-4, lines 70-75 and 1-4).
Regarding claim 28, Gorter 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 (the magnetization direction of each region happens to be the same) (cols. 3-4, lines 70-75 and 1-4).
Regarding claim 29, Gorter 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 (700 oersted = 0.07 T = 70 mT) (col. 2, lines 25-28).
Regarding claim 37, Gorter discloses the method of fabricating a programmable magnetic soft device in accordance with claim 18, wherein the step of shaping the composite comprises molding one or more parts of the composite in one or more molds of same shape and size (col. 3, lines 59-69).
Regarding claim 38, Gorter 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 or more molds of differing shapes and sizes (col. 2, lines 24-32; col. 3, lines 59-69; col. 4, lines 24-26).
Regarding claim 45, Gorter 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 (col. 2, lines 24-32; col. 3, lines 59-69; col. 4, lines 24-26).
Regarding claim 49, Gorter 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 (col. 3, lines 59-65).
Regarding claim 50, Gorter discloses the 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 (col. 2, lines 10-18; col. 3, lines 59-53).
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 26 is rejected under 35 U.S.C. 103 as being unpatentable over Gorter, in view of Rajendran et al. (US 10,573,948 B2).
Regarding claim 26, Gorter discloses all of the elements of the current invention as detailed above with respect to claim 18. Gorter, however, does not explicitly disclose that 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.
Rajendran teaches that it is well known to perform a similar method of fabricating a magnetic soft device, the method comprising the steps of: forming a composite of base material and magnetic elements distributed within said base material (fig. 3A; col 14, lines 55-67); and heating the composite while applying or not applying a magnetic field at the composite, 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 (light source, i.e. laser: col. 25, lines 57-63).
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 Gorter to incorporate the laser heating device of Rajendran. POSITA would have realized that laser light can be easily and readily used for material heating to achieve the desired depth and area of heating, and precision of heat application, predictably allowing for excellent control of the regions to be heated. Moreover, there is no indication in the instant disclosure that any special heating device was devised or that any surprising results were derived from simply using the old method of Gorter with the well-known laser heating of Rajendran. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Claims 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Gorter, in view of Sitti et al. (US 2014/0225694 A1).
Regarding claim 39, Gorter discloses all of the elements of the current invention as detailed above with respect to claim 18. Gorter, however, does not explicitly disclose that the step of shaping the composite comprises photolithographing the composite.
Sitti teaches that it is well known to perform a similar method (Title; Abstract), wherein the step of shaping the composite comprises photolithographing the composite (pars. 0114 and 0132).
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 Gorter to incorporate the known use of photolithography for shaping part or all of the composite of Sitti. POSITA would have realized that the photolithography replica molding from Sitti can be easily and readily substituted for the molding of Gorter 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 lithography step was devised or that any surprising results were derived from simply using the old method of Gorter with the well-known photolithographic shaping of Sitti. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 40, Gorter discloses the method of claim 18 as detailed above. Gorter, however, does not disclose that the step of shaping the composite comprises photolithographing one or more parts of the composite.
Sitti teaches that it is well known that the step of shaping the composite comprises photolithographing one or more parts of the composite (pars. 0114 and 0132).
Regarding the rationale for combination, please refer to the rejection of claim 39, above, as the rationale provided therein is equally applicable to this claim.
Claims 41-44 and 46-47 are rejected under 35 U.S.C. 103 as being unpatentable over Gorter, in view of Wildes et al. (US 11,806,191 B2).
Regarding claim 41, Gorter discloses all of the elements of the current invention as detailed above with respect to claim 18. Gorter, 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 Gorter 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 Gorter 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 Gorter 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, Gorter discloses the method of claim 18 as detailed above. Gorter, 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.
Regarding claim 43, Gorter discloses the method of claim 18 as detailed above. Gorter, however, does not disclose that the step of shaping the composite comprises 3D printing the composite.
Wildes teaches that it is well known that the step of shaping the composite comprises 3D printing 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.
Regarding claim 44, Gorter discloses the method of claim 18 as detailed above. Gorter, however, does not disclose that the step of shaping the composite comprises 3D printing one or more parts of the composite.
Wildes teaches that it is well known that the step of shaping the composite comprises 3D printing 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.
Regarding claim 46, Gorter discloses the method of claim 18 as detailed above. Gorter, however, does not disclose that the step of shaping the composite comprises cutting sections of material from the composite.
Wildes teaches that it is well known that the step of shaping the composite comprises cutting sections of material from the composite (cols. 12-13, lines 42-67 and 1-13).
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 Gorter to incorporate the cutting of the composition of Wildes. POSITA would have realized that formed composites can be easily and readily cut to achieve the desired shape and size as is well understood and routinely performed in the art. Moreover, there is no indication in the instant disclosure that any special cutting step or tool was devised or that any surprising results were derived from simply using the old method of Gorter with the well-known cutting to preferred shape and size of Wildes. This combination would have been easily performed with knowledge of the commonly understood advantages and with reasonable expectations of success.
Regarding claim 47, Gorter discloses the method of claim 18 as detailed above. Gorter, however, does not disclose that the step of shaping the composite comprises cutting sections of material from parts of the composite.
Wildes teaches that it is well known that the step of shaping the composite comprises cutting sections of material from parts of the composite (cols. 12-13, lines 42-67 and 1-13).
Regarding the rationale for combination, please refer to the rejection of claim 46, above, as the rationale provided therein is equally applicable to this claim.
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive.
Applicant has argued that Gorter is directed to a different method and that in Gorter, the “permanent magnets provided and described in Gorter are rigid crystals and in particular cannot be considered as “magnetic soft devices”, not to mention programmable magnetic soft devices.” Respectfully, and as noted above, there is literally nothing in the body of the claims which requires anything at all that dictates the subjectively defined “softness” of the devices to be formed or the timeframe in which they are considered soft. The body of the claims never even once mentions the inclusion of any polymers, soft or otherwise, and the preamble has not been found to breathe life into the claim. Further, the term programmable remains vague and is not defined in any reasonable manner, nor is it even mentioned in the body of the claims. Further still, in the instant specification “programmable” is given numerous disparate definitions, including simply magnetizing the product to be formed, which is explicitly disclosed by Gorter, thus satisfying this term which, is not even mentioned in the body of the claims and is certainly not a method step therein. The Applicant is strongly encouraged to review the claimed method and understand what is actually claimed. The first step of claim 18 is “forming a composite of base material and magnetic elements distributed within said base material”. This does not disclose “forming a composite of base material comprising a soft polymer and magnetic elements comprising magnetic micro/nanoparticles distributed within said base material”, as argued. If the Applicant wishes for these limitations to be features of the claimed method, then why won’t they claim as much? It would be a simple matter to amend the body of the claims in this manner, but this has not been done. The claim further discloses “cooling the composite while applying a magnetic field at the composite as a step of magnetization”. It does not disclose “programming the composite by way of cooling the composite while applying a magnetic field at the composite as a step of magnetization”, and even if it did, the cited portion of Gorter explicitly disclosed this exact limitation. If the Applicant wishes for the final product to be flexible or pliable or deformable or capable of shape changing, they why do they refuse to claim as much? Whatever the answer may be, the fact is that these argued limitations are not disclosed in the claimed method and are not part of the body of the claims. As such, all of the currently presented and expressly recited steps and structures of the body of the claims have been clearly demonstrated as anticipated or taught by the prior art and the arguments are not found to be compelling.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 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].
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571)272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY T CARLEY/Primary Examiner, Art Unit 3729