DETAILED ACTION
This is in response to application filed on March 9th, 2023 in which claims 1-24 were presented for examination.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-13) and Species A in the reply filed on 2/17/26 is acknowledged.
Claim(s) 14-24 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected embodiment, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/17/26.
Examiner Notes
Pertaining to applicant remarks on page 2 of the response to restriction and election of species requirements of 2/17/26—though applicant states that the Weinberg reference utilized in the restriction requirement of 12/17/25 does not constitute prior art under 35 U.S.C. 102(b)(1)(A) because it shares inventorship with the present application—examiner respectfully disagrees. The Weinberg reference has a total of four inventors, only two of which are inventors on the instant application. As such, applicant would need to file an affidavit or declaration under CFR 1.130 in order for the reference to be an exception under 35 U.S.C. 102(b)(1)(A).
Information Disclosure Statement
The information disclosure statement filed 12/27/23 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because of the following:
Typographical error in non-patent literature document citation #60 has been corrected
Non-patent literature document citation #87 has not been provided and has therefore not been considered
Examiner notes that two version of non-patent literature document citation #13 has been provided—one with the proper 29 pages, one with only 13 pages; it is unclear if the one with only 13 pages was inadvertently uploaded instead of citation #87
It has been placed in the application file, but the information referred to therein (as indicated) has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
[0097] “shape memory yarn structures 14” is not in the figures, only 14A, 14B; examiner recommends using a curly bracket around 14A, 14B and designate 14
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
[0005] first sentence after “shape memory alloy” add –(SMA)—in order to establish the abbreviation as later used, such as in [0083]
[0005] first sentence after “nitinol” add –(also known as nickel-titanium alloy, NiTi)—in order to establish the abbreviation or term as later used, such as in [0022] and [0112]
[0054] after “over-twisted coiled yarn” add –(OTC)—in order to establish the abbreviation as later used, such as in [0070] and [0177]
[0087] first establishes abbreviations AF and MF; however, the abbreviations are inconsistent with similar abbreviations throughout the specification, such as in [0066] which indicated AF and MF; consistency is required; examiner notes that [0177], [0178], [0183] also uses subscripts
[0091] “yard” should read “yarn”
[0111] last sentence needs review, whether it should read “each of the plurality of microfilaments 60 has an average diameter” or whether it should read “the plurality of microfilaments 60 have an average diameter”
[0243] utilizes subscripts but the subscripts are lowercase; consistency is needed
[0269] “yard” should read “yarn”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim(s) 6, 8, 13 is/are rejected under U.S.C. 112(b).
The term “the plurality of microfilaments has an average diameter” in Claim 6 is unclear and therefore renders the claim indefinite. Especially in light of the specification objection for [0111] (the specification antecedent basis for the claim), it is unclear whether each microfilament has the average diameter or whether the microfilaments have an average diameter.
The term “microfilaments has an average diameter” in Claim 8 is unclear and therefore renders the claim indefinite for reasons similarly indicated for Claim 6.
The term “the shape memory yarn” in Claim 13 Line 2 is unclear and therefore renders the claim indefinite. It is unclear whether the term is directed to “the shape memory yarn” of Claim 13 or with one of the “one or more shape memory yarns” of Claim 13 Line 2. For the purposes of applying art and providing rejections, the term will be interpreted “wherein the shape memory yarn is a first yarn, further comprising plying the first yarn with one or more second shape memory yarns to torque balance the first yarn.”
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5, 7, 9, 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Farzin-Nia (USPN 6818076), herein Nia.
Regarding Claim 1, Nia teaches a shape memory coil (see Fig. 2; abstract "stranded wire…made of a shape memory and/or superelastic material, such as Ni/Ti or alloys thereof. Furthermore, the stranded wire may be coiled"; Col. 3 Line 30 "stranded and coiled wire 16 of the present invention") comprising:
a coiled shape memory yarn having a coil direction around a coil axis (see Fig. 1; Col. 2 Line 32 “stranded wire 10”),
wherein the coiled shape memory yarn comprises a plurality of microfilaments having a twist direction around a yarn axis (see Figs. 1, 2; Col. 2 Lines 33-37 "plurality of strands 12…are twisted…together. The stranded wire 10 comprises at least two strands 12"), and
wherein the plurality of microfilaments comprises a shape memory alloy (Col. 2 Line 54 “Ni/Ti-based alloys”).
Regarding Claim 3, Nia teaches the shape memory coil of claim 1, wherein the coil direction of the yarn and the twist direction of the plurality of microfilaments are the same (see Figs. 1, 2 wherein the coil angle of Fig. 2 and the twist angle of Fig. 1 are in the same direction).
Regarding Claim 5, Nia teaches the shape memory coil of claim 1, wherein the shape memory alloy comprises at least one of a nickel-titanium alloy or a copper-zinc-aluminum alloy (Col. 2 Line 54 “Ni/Ti-based alloys”).
Regarding Claim 7, Nia teaches a method for manufacturing a shape memory coil (if a prior art, in its normal and usual operation, would necessarily describe a device capable of performing the steps of the method or process, then the device claimed will be considered to be inherent by the prior art process or method. When the prior art process or method is the same as a process or method described in the specification for describing the claimed device, it can be assumed the process or method will inherently describe the claimed device capable of performing the different steps of the process or method. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). MPEP 2112.02; as such, for structure for the method, see Fig. 2; abstract "stranded wire…made of a shape memory and/or superelastic material, such as Ni/Ti or alloys thereof. Furthermore, the stranded wire may be coiled"; Col. 3 Line 30 "stranded and coiled wire 16 of the present invention") comprising:
coiling a shape memory yarn to form a coiled shape memory yarn that has a coil direction around a coil axis (see Fig. 1; Col. 2 Line 32 “stranded wire 10”),
wherein the coiled shape memory yarn comprises a plurality of microfilaments having a twist direction around a yarn axis (see Figs. 1, 2; Col. 2 Lines 33-37 "plurality of strands 12…are twisted…together. The stranded wire 10 comprises at least two strands 12"), and
wherein the plurality of microfilaments comprises a shape memory alloy (Col. 2 Line 54 “Ni/Ti-based alloys”).
Regarding Claim 9, Nia teaches the method of Claim 7, further comprising twisting the plurality of microfilaments to define the twist direction (see Fig. 1).
Regarding Claim 12, Nia teaches the method of Claim 7, wherein the yarn is coiled to create a torsional imbalance to define the coil direction *(see Figs. 1, 2 wherein the coil angle of Fig. 2 and the twist angle of Fig. 1 are in the same direction, and therefore torsional imbalance) and
wherein the coil direction of the yarn and the twist direction of the plurality of microfilaments are the same (see above).
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.
Claim(s) 2, 10, 11, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farzin-Nia (USPN 6818076), herein Nia, in view of Li et al (US Publication 2015/0219078), herein Li.
Regarding Claim 2, Nia teaches all the claimed limitations as discussed above in Claim 1.
Nia does not explicitly teach wherein the coil direction of the yarn and the twist direction of the plurality of microfilaments are different (see Figs. 1, 2 wherein the coil angle of Fig. 2 and the twist angle of Fig. 1 are in the same direction).
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nia such that the coil direction and twist direction are different as there are a finite number of solutions without unexpected results.
Nevertheless, Li also teaches wherein the coil direction and the twist direction are different (see Fig. 18A; where R is counterclockwise and r is clockwise; [0050] "turns…applied to the fiber (r), the twist…applied on the mandrel (R)", wherein R is coil direction, r is twist direction).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nia’s twist/coil direction to be different as taught by Li in order to counteract unwanted movement ([0204]), as is known in the art for coils.
Regarding Claim 10, Nia teaches all the claimed limitations as discussed above in Claim 7.
Nia teaches wherein the shape memory yarn is coiled to define the coil direction (see Fig. 2).
Nia does not explicitly teach wherein the coil direction of the yarn and the twist direction of the plurality of microfilaments are opposite (see Figs. 1, 2 wherein the coil angle of Fig. 2 and the twist angle of Fig. 1 are in the same direction).
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nia such that the coil direction and twist direction are different as there are a finite number of solutions without unexpected results.
Nevertheless, Li also teaches wherein the coil direction and the twist direction are different (see Fig. 18A; where R is counterclockwise and r is clockwise; [0050] "turns…applied to the fiber (r), the twist…applied on the mandrel (R)", wherein R is coil direction, r is twist direction).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nia’s twist/coil direction to be different as taught by Li in order to counteract unwanted movement ([0204]), as is known in the art for coils.
Nia also does not explicitly teach wherein the shape memory yarn is coiled around a mandrel to define the coil direction.
Li also teaches coiling around a mandrel (see Fig. 18B; [0051] "Fig. 18B shows…monofilament that has been coiled by wrapping on…mandrel"; see Fig. 18A; [0050] "Fig. 18A shows…apparatus for fiber coiling about a mandrel").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nia’s coiling to be around a mandrel as taught by Li as a known method for a filament coil.
Regarding Claim 11, modified Nia teaches all the claimed limitations as discussed above in Claim 10.
Nia further teaches heat treating the yarn to torque balance the yarn (Col. 4 Lines 15-16 "twisted wire is subjected to a heat treatment to set the shape of the twisted configuration. This heat treatment prevents the stranded wire from unraveling"; Nia teaches the prevention of unraveling and therefore the recitation of torque balance).
Regarding Claim 13, modified Nia teaches all the claimed limitations as discussed above in Claim 12.
Nia does not explicitly teach plying the shape memory yarn with one or more shape memory yarns to torque balance the shape memory yarn (as best understood in light of the 112(b) rejections).
Li teaches plying to torque balance ([0055] "Figs. 21A-21D…SZ plying the coiled nylon fiber to produce a torque balanced two-ply structure"; [0156] "plying two...twisted fibers using...coiling to produce a SZ two-ply fiber").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li’s yarn to be plied as taught by Li in order to torque balance ([0055]), and/or counteract unwanted movements ([0204]).
Claim(s) 4, 6, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farzin-Nia (USPN 6818076), herein Nia.
Regarding Claim 4, Nia teaches all the claimed limitations as discussed above in Claim 1.
Nia at least suggests wherein the plurality of microfilaments includes between about 10 and about 1000 microfilaments (see Fig. 1; Col. 2 Lines 36-38 "Stranded wire 10 comprises at least two strands 12 and up to as many strands 12 as may be practical for the particular application. By way of example and not limitation, about 2 to 7 strands", wherein 7 can be considered close to or equal to the claimed about 10, especially in light of the expansive range claimed).
Nia discloses the general conditions of the claimed invention except for the express disclosure of 10 microfilaments. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to increase the number of strands/microfilaments, since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Even if the range measured did not overlap but was merely close, a prima facie case of obviousness still exists. See MPEP 2144.05, Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nia’s strands/microfilaments to be at least 10 based on the application desired (Col. 2 Lines 36-38), without unexpected results.
Regarding Claim 6, Nia teaches all the claimed limitations as discussed above in Claim 1.
Nia at least suggests wherein the plurality of microfilaments has an average diameter less than about 10 micrometers (as best understood in light of the 112(b) rejections-- Col. 2 Lines 38-40 "by way of example and not limitation, about 2 to 7 strands having a diameter of about 0.0005 inch to about 0.007 inch" , which is 12.7 micrometers- 177.8 micrometers; wherein about 12.7 micrometers can be considered close to or equal to the claimed about 10 micrometers, especially in light of the expansive range claimed; Col. 2 Lines 36-38 "Stranded wire 10 comprises at least two strands 12 and up to as many strands 12 as may be practical for the particular application. By way of example and not limitation, about 2 to 7 strands").
Nia discloses the general conditions of the claimed invention except for the express disclosure of 10 micrometers. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention decrease the diameter, since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Even if the range measured did not overlap but was merely close, a prima facie case of obviousness still exists. See MPEP 2144.05, Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nia’s strands/microfilaments to be about 10 based on the application desired (Col. 2 Lines 36-38), without unexpected results.
Regarding Claim 8, Nia teaches all the claimed limitations as discussed above in Claim 7.
The body of Claim 8 is the same as the body of Claim 6. As such, see the aforementioned rejection of the body of Claim 6 for the rejection of the body of Claim 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and can be used to formulate a rejection if necessary: Murayama (JP 2001/123937) directed to shape memory yarn having microfilaments with a twist direction and shape memory alloy of Ti-Ni or Cu-Zn-Al alloy; Ridley et al (USPN 10793979), Goktepe et al (USPN 11773516) directed to mandrel method; Witham et al (US Publication 2024/0271338) directed to coiled polymer actuators; Lenhert et al (USPN 8382534) directed to coil yarn; Zhang (US Publication 2024/0263361) directed to coil; Ferrera et al (USPN 6241691), Ferrera et al (USPN 6159165), Ferrera et al (USPN 6616617), Zhu et al (US Publication 2019/0360125) directed to coil with twisted microfilaments; Wallshein (USPN 4086702) directed to coil direction and twist direction being opposite; Carlsson et al (USPN 10829870) directed to ply balancing torque.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Grace Huang whose telephone number is (571)270-5969. The examiner can normally be reached M-Th 8:30am-5:30pm EST.
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, Khoa Huynh can be reached on 571-272-4888. 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.
/GRACE HUANG/Primary Examiner, Art Unit 3732