DETAILED ACTION
Claims 1-9 were rejected on 11/12/2025.
Applicants filed a response, amended claims 1 and 10, and cancelled claims 3-4 on 01/26/2026.
Claims 1-2 and 5-20 are pending in this application, with withdrawn claims 10-20.
Applicant’s argument filed on 01/26/2026 with respect to the modification of the passive material of Herrera to be a material that responds to external control stimulus, Remarks p. 8, is persuasive. The previous 35 USC 103 rejection over Herrera in view of Song are withdrawn from record. However, upon further consideration of Herrera, a new set of rejection has been made as discussed below. Thus, this Office Action is a second non-final Office Action.
Claims 1-2 and 5-9 are rejected.
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 .
Claim Rejections - 35 USC § 103
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 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.
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 1-2, 5-6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Herrera et al. (US 7,582,349) (Herrera).
In reference to claims 1, 5-6 and 8, Herrera teaches a morphing cellular structure using tailorable, active materials that can be actuated to recover a memorized state (col. 1, lines 5-12; col. 2, lines 1-3) (corresponding to a programmable metamaterial). The cellular structure comprises a first group of unit cells and further comprises a second group of unit cells connected with the first group of unit cells, with each unit cell configured to have a cellular geometry (col. 2, lines 8-10; col. 3, lines 7-10; col. 7, lines 31-36) (corresponding to a lattice structure).
The first group of unit cells are formed of a first active material and the second group of unit cells are formed of a second active material, the second active material is connected with the first active material (col. 2, lines 10-13; col. 3, lines 10-11) (corresponding to a lattice structure comprising an active material and a passive material). By including a second active material, a user can selectively morph the cellular structure by using at least one of the first and second actuation signals (col. 3, lines 21-24). The active material may bend, expand or twist upon being exposed to the actuation (FIGS.5A-5D) (corresponding to the active material is disposed at predetermined regions of the lattice structure to enable softening of the predetermined regions upon exposure to a stimulus).
The second active material is responsive to the same actuation signal as the first active material, allowing a user to selectively alter the cellular structure by using at least one of a plurality of actuation signals (col. 7, lines 34-38).
FIGS. 2 and 3 show the morphing cellular structure 100 is formed from a plurality of struts of passive materials 200 and active materials 202 (col. 7, lines 44-56) (corresponding to including interconnected struts; the predetermined regions of the lattice structure comprise structs, portions of struts, and/or nodes).
Herrera further teaches the active material includes shape memory polymers (SMPs) including polycarbonates and poly(ethylene terephthalate) (col. 8, lines 7-9, 36-58) (corresponding to the passive and active materials comprise a polymer selected from the group consisting of: polyethylene terephthalate (PET), polycarbonate (PC)). Given that Herrera teaches the first active material and the second active material are SMPs that overlaps the presently claimed active material and passive material, including polycarbonate and poly(ethylene terephthalate), it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use poly(ethylene terephthalate) as the first active material and polycarbonate as the second active material, which is both taught by Herrera and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
As evidence by the instant application’s specification PET has a glass transition temperature 77ºC while PC has a glass transition temperature of 112ºC ([0063]) (corresponding to the active material has a glass transition temperature lower than that of the passive material).
Given that the morphing cellular structure of Herrera is substantially identical to the present claimed metamaterial in composition and structure, it is clear that the first active material of Herrera would inherently have a modulus with a higher stimulus dependence than that of the second active material, at an initial condition a storage modulus of the first active material would inherently differ from a storage modulus of the second active material by no more than +/- 10%, when exposed to the actuation signal the first active material would inherently soften more than the second active material and the storage modulus of the second active material would inherently be at least one order of magnitude greater than the storage modulus of the first active material.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Id. (MPEP 2112.01).
In reference to claim 2, Herrera teaches the limitations of claim 1, as discussed above. Herrera teaches the actuation signal is a temperature change or light change (col. 2, lines 64-65; FIGS. 5A-5D) (corresponding to the stimulus is selected from the group consisting of: a higher or lower temperature, a higher or lower intensity of light).
In reference to claim 9, Herrera teaches the limitations of claim 1, as discussed above. Herrera teaches the cellular geometry of the cellular structure is cubic, tetragonal, orthorhombic, rhombohedral, hexagonal, monoclinic or triclinic (col. 6, lines 9-19) (corresponding to the lattice structure, when viewed along a plane perpendicular to a thickness direction, comprises a 2D lattice selected from the group consisting of triangular lattice, square lattice, hexagonal lattice, rectangular lattice, and oblique lattice).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Herrera as applied to claim 1 above, and further in view of Reversible energy absorbing meta-sandwiches by FDM 4D printing (Bodaghi).
In reference to claim 7, Herrera teaches the limitations of claim 1, as discussed above.
Herrera does not explicitly teach the first active material and/or the second active material includes filler particles configured to alter electrical, optical, magnetic and/or mechanical properties of the cellular structure, as presently claimed. However, Herrera teaches the active material may be a shape memory polymer (col. 8, lines 37-58).
Bodaghi teaches dual-material auxetic meta-sandwiches (Abstract). Bodaghi further teaches a remotely controllable and personalized shape memory polymer (SMP) occlusion devices (p. 2, Introduction). By incorporating Fe3O4 magnetic particles into the SMP matrix, the deployment of the occluders could be controlled remotely after implantation (p. 2, Introduction).
In light of the disclosure by Herrera, it would have been obvious to one of ordinary skill in the art to include Fe3O4 magnetic particles in the SMP material of the active materials, in order to provide magnetic properties to the cellular structure and allow for the morphing cellular structure to be remotely controlled, and thereby arriving at the presently claimed invention.
Response to Arguments
In response to amended claim 1, the previous 35 USC 102(a)(1) rejection over Kornbluh et al. (US 8,436,508), 35 USC 102(a)(1) rejection over Reconfigurable mesostructures with prestressing, reverse stiffness and shape memory effects and 35 USC 102(a)(1) and 103 rejections over Herrera are withdrawn from record. However, upon further consideration of Herrera, a new set of rejection is set forth above.
Applicant primarily argues:
“Given the explicit teachings of Herrera, the skilled artisan would have understood that the shape memory polymers (SMPs) listed in col. 8, lines 37-58 under the heading "ACTIVE MATERIALS" change their shape in response to an external control stimulus or control signal and thus are not suitable for use as passive materials. There is no teaching in Herrera that would have led the skilled artisan to pick through the listing of SMPs – all of which are provided as examples of active materials - and select one of them (polycarbonate) for use a passive material, as was done in the Office Action. The only way to make this contrary selection in view of the unambiguous teachings of Herrera is through hindsight reasoning based on Applicant's specification, which is impermissible via MPEP 2142.”
Remarks, p. 9
The examiner respectfully traverses as follows:
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Herrera explicitly teaches a cellular structure including first unit cells of a first active material connected with second unit cells of a second active material (col. 3, lines 7-24; col. 7, lines 31-34). The active materials are responsive to the same actuation signal (i.e., temperature change, light change, etc.). Herrera further teaches the active materials are shape memory polymers (SMPs), wherein the SMPs include polycarbonate (PC) and poly(ethylene terephthalate) (PET) (col. 8, lines 7-9, 36-58).
While PC and PET are one from a list of many SMPs, the fact remains that it would have been obvious to choose any SMP from the list for the first and second active materials, including PET for the first active material and PC for the second active material. Absent evidence to the contrary. Further, the mere fact that a reference teaches alternatives does not by itself render any particular alternative any less obvious. See Merck, 874 F.2d at 807; Susi, 440 F.2d at 445; Kubin, 561 F.3d at 1359.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The
examiner can normally be reached M-F 8am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARY I OMORI/Primary Examiner, Art Unit 1784