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 .
Election/Restrictions
Applicant’s election with traverse of claims 1-15 in the reply filed on1/20/2026 is acknowledged.
Claims 16-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/20/2026.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation " wherein a seed layer…by an electroless silver plating process" in lines 2-3. It is unclear if the claim is an apparatus claim or a method of making claim. Also, it is unclear if the seed layer is the plating layer or not. Note: for the purpose of examination, the applicant is advised to amend the claim such as "a seed layer is deposited on a surface of each of the plurality of self-sensing shape-shifting spring coil actuators including a coating layer configured to be coated by an electroless silver plating process".
Claim 7 recites the limitation " wherein a silver layer…by the electroless silver plating process" in lines 2-3. It is unclear if the claim is an apparatus claim or a method of making claim. Also, it is unclear if the seed layer is the sliver layer or not as both are made by sliver process. Note: for the purpose of examination, the applicant is advised to amend the claim such as "the coating layer is a silver layer configured to be coated by the electroless silver plating process".
Claim 8 recites the limitation " or with conductive coating agents by a silver chemical process or a carbon nanotube (CNT) composite process" in lines 3-4. It is unclear if the claim is an apparatus claim or a method of making claim as the claim include an apparatus and step of making in the same claim. Note: for the purpose of examination, the applicant is advised to amend the claim such as " or with conductive coating agents is configured to be coated by a silver chemical process or a carbon nanotube (CNT) composite process ".
Claim 9 recites the limitation " wherein the SMP actuator is made electrically and thermally conductive by a silver chemical process" in lines 2-3. It is unclear if the claim is an apparatus claim or a method of making claim as the claim include an apparatus and step of making in the same claim. Also, it is unclear if it is referring to the limitation in claim 8 or it is referring to new limitation. Note: for the purpose of examination, the applicant is advised to amend the claim such as "wherein the conductive coating agents are thermal conductive and are configured to be coated
Claim 10 recites the limitation "wherein the SMP actuator is made electrically and thermally conductive by the carbon nanotube (CNT) composite process" in lines 2-3. It is unclear if the claim is an apparatus claim or a method of making claim as the claim include an apparatus and step of making in the same claim. Also, it is unclear if it is referring to the limitation in claim 8 or it is referring to new limitation. Note: for the purpose of examination, the applicant is advised to amend the claim such as " wherein the conductive coating agents are thermal conductive and are configured to be coated
Claim 15 recites the limitation “ wherein a Negative Poisson's Ratio (NPR) structure is used in the SMP actuator such that auxetics and strains of the SMP actuator are enhanced” in lines 2-3. It is unclear limitation does “Negative Poisson's Ratio (NPR) structure” is part of device or it is a measurement tool or it is just a ratio. Also, it is unclear if it mean that it is enhanced than before or it is mean ration is greater that specific value. Note: for the purpose of examination, the examiner suggests to amend the claim such as “wherein auxetics and strains of the SMP actuator are enhanced by adding CNT to the SMP and wherein the auxetics and strains is measured by a Negative Poisson's Ratio (NPR)” (see ¶00268-¶0272 of the current application).
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.
Claim(s) 1-2, 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pile-Spellman et al. (US. 20060064055 A1) (“Pile-Spellman”).
Re claim 1, Pile-Spellman discloses a multi-degree-of-freedom steerable catheter soft robotic system (Figs. 1-5, abstract, ¶0005), comprising: a steerable catheter (¶0020, Fig. 4); a control circuit (¶0020, SMA or SMP see ¶005) connected to the steerable catheter through electrical connections and selectively applying power to control the steerable catheter (through the wire to the power, Fig. 5); and a power supply unit connected to the control circuit (Fig. 5, ¶0026, ¶0040).
Re claim 2, Pile-Spellman discloses further comprising a driving circuit for driving the steerable catheter ( driving device such as computer, ¶0040).
Re claim 8, Pile-Spellman discloses wherein the steerable catheter comprises a self-sensing shape-shifting memory polymer (SMP) actuator without conductive coating agents or with conductive coating agents by a silver chemical plating process or a carbon nanotube (CNT) composite process (¶0005 SMA or SMP and or has a sliver, ¶0035).
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pile-Spellman in view of Or-Bach et al. (US. 20190057959 A1) (“Or-Bach”).
Re claim 3, Pile-Spellman fails to disclose further comprising a shielding disposed around the steerable catheter and shielding for heat and electromagnetic (EM) radiations.
However, Or-Bach discloses an electric circuit that can be used in medical device (Fig, 1a), and wherein the device is comprising a shielding disposed around the circuits and shielding for heat and electromagnetic (EM) radiations (153, ¶0043).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman to include a shielding so that the shielding disposed around the steerable catheter and shielding for heat and electromagnetic (EM) radiations as taught by Or-Bach for the purpose of protecting the circuit from heat and magnetic wave (Or-Bach, ¶0047, ¶0146).
Claim(s) 4-5, 11-12, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pile-Spellman in view of Seward et al. (US. 20120239032A1) (“Seward”).
Re claim 4, Pile-Spellman discloses wherein the steerable catheter comprises a plurality of tubular segments (segment for each bending actuator see Fig. 4a, SMA or SMP see ¶005), but it fails to discloses that each of the tubular segments comprises a plurality of self-sensing shape-shifting spring coil actuators.
However, Seward discloses a catheter (Figs. 4-6, abstract, ¶0044, ¶0045), and wherein the each of the tubular segments (24, 23 and 22, 21 or 21’, 22’and 23’, 24’ Figs. 4-6) comprises a plurality of self-sensing shape-shifting spring coil actuators. (25 or 25’, ¶0066).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile- Spellman so that each of the tubular segments comprises a plurality of self-sensing shape-shifting spring coil actuators as taught by Seward for the purpose of having a catheter with several bends and turns (Seward, ¶0008).
Re claim 5, Pile-Spellman fails to disclose wherein the plurality of self-sensing shape-shifting spring coil actuators are evenly spaced inside each of the tubular segments.
However, Seward discloses a catheter (Figs. 4-6, abstract, ¶0044, ¶0045), and wherein the each of the tubular segments (24, 23 and 22, 21 or 21’, 22’and 23’, 24’ Figs. 4-6) comprises a plurality of self-sensing shape-shifting spring coil actuators. (25 or 25’, ¶0066) and wherein the plurality of self-sensing shape-shifting spring coil actuators are evenly spaced inside each of the tubular segments (Figs. 4-6).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman so that the plurality of self-sensing shape-shifting spring coil actuators are evenly spaced inside each of the tubular segments as taught by Seward for the purpose of having a catheter with several bends and turns (Seward, ¶0008).
Re claim 11, Pile-Spellman fails to disclose wherein the SMP actuator is bent upward or downward to show flexibility by utilizing a multi-phase shape-shifting memory material.
However, Seward discloses a catheter (Figs 3-6, abstract, ¶0044, ¶0045), and wherein the SMP actuator is bent upward or downward to show flexibility by utilizing a multi-phase shape-shifting memory material (¶0010, Figs. 3-6, ¶0066, contraction and expansions phases).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman so that the SMP actuator is bent upward or downward to show flexibility by utilizing a multi-phase shape-shifting memory material as taught by Seward for the purpose of having a catheter with several bends and turns (Seward, ¶0008).
Re claim 12, Pile-Spellman fails to disclose wherein the multi-phase shape-shifting memory material is a self-sensing and reversible LC elastomer.
However, Seward discloses a catheter (Figs 3-6, abstract, ¶0044, ¶0045), and wherein the multi-phase shape-shifting memory material is a self-sensing and reversible LC elastomer (¶0054, ¶0084, Figs. 3-6).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman so that the multi-phase shape-shifting memory material is a self-sensing and reversible LC elastomer as taught by Seward for the purpose of having a catheter with several bends and turns (Seward, ¶0008).
Re claim 14, Pile-Spellman fails to disclose wherein the SMP actuator is bent upward and downward by a pneumatic process.
However, Seward discloses a catheter (Figs 3-6, abstract, ¶0044, ¶0045), and wherein the SMP actuator is bent upward and downward by a pneumatic process (¶0054, ¶0088, Figs. 3-6).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman so that the SMP actuator is bent upward and downward by a pneumatic process as taught by Seward for the purpose of having a catheter with several bends and turns (Seward, ¶0008).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pile-Spellman in view of Seward and further in view of Maitland et al. (US. 20060009785A1) (“Maitland”).
Re claim 6, Pile-Spellman fails to disclose wherein a seed layer is deposited on a surface of each of the plurality of self-sensing shape-shifting spring coil actuators by an electroless silver plating process.
However, Maitland discloses a catheter (Figs. 1-2, abstract, ¶0016), and wherein a seed layer ( surface for coating layer , ¶0092) is deposited on a surface of each of the plurality of self-sensing shape-shifting spring coil actuators by an electroless silver plating process (¶0091, the coating is general terms include process that perform coating include electroless silver plating, Figs. 1-2).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman to include a seed layer is deposited on a surface of each of the plurality of self-sensing shape-shifting spring coil actuators by an electroless silver plating process as taught by Maitland for the purpose of enhancing the reflective of the spring and recapturing desired light (Maitland, ¶0091).
Re claim 7, Pile-Spellman fails to disclose wherein a silver layer is deposited on a surface of the seed layer by the electroless silver plating process.
However, Maitland discloses a catheter (Figs. 1-2, abstract, ¶0016), and wherein a seed layer ( surface for coating layer , ¶0092) is deposited on a surface of each of the plurality of self-sensing shape-shifting spring coil actuators and wherein a silver layer is deposited on a surface of the seed layer by the electroless silver plating process (¶0091, the coating is general terms include process that perform coating include electroless silver plating, Figs. 1-2).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman so that a silver layer is deposited on a surface of the seed layer by the electroless silver plating process as taught by Maitland for the purpose of enhancing the reflective of the spring and recapturing desired light (Maitland, ¶0091).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pile-Spellman in view of Maitland et al. (US. 20060009785A1) (“Maitland”).
Re claim 9, Pile-Spellman fails to disclose wherein the SMP actuator is made electrically and thermally conductive by the silver chemical plating process such that the SMP actuator is a self-sensing silver plated SMP actuator.
However, Maitland discloses a catheter (Figs. 1-2, abstract, ¶0016), and wherein the SMP actuator is made electrically and thermally conductive by the silver chemical plating process such that the SMP actuator is a self-sensing silver plated SMP actuator (¶0091, the coating is general terms include process that perform coating include the silver chemical plating process, Figs. 1-2).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman so that the SMP actuator is made electrically and thermally conductive by the silver chemical plating process such that the SMP actuator is a self-sensing silver plated SMP actuator as taught by Maitland for the purpose of enhancing the reflective of the spring and recapturing desired light (Maitland, ¶0091).
Claim(s) 10, 13, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pile-Spellman in view of Liu et al. (US. 20200237378A1) (“Liu”).
Re claim 10, Pile-Spellman fails to disclose wherein the SMP actuator is made electrically and thermally conductive by the carbon nanotube (CNT) composite process such that the SMP actuator is a self-sensing CNT-based SMP actuator.
However, Liu discloses a catheter (Figs. 1-28, abstract, ¶0079), and the SMP actuator is made electrically and thermally conductive by the carbon nanotube (CNT) composite process such that the SMP actuator is a self-sensing CNT-based SMP actuator (¶0163, ¶0019, Figs. 1-28).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman so that the SMP actuator is made electrically and thermally conductive by the carbon nanotube (CNT) composite process such that the SMP actuator is a self-sensing CNT-based SMP actuator as taught by Liu for the purpose of enhancing the reflective of the spring and recapturing desired light (Liu, ¶0163).
Re claim 13, Pile-Spellman disclosed wherein the multi-phase shape-shifting memory material is a self-sensing and reversible bi- layer composite sheet ( self senses the heat and it is reversable ¶0015), and SMP is made together with a polyurethane (PU, ¶0035), polyimide (PI) or polyester (PET) film (¶0035) but it fails to disclose that SMP is CNT-base SMP and the self-sensing and reversible bi-layer composite sheet comprises a self-sensing and reversible CNT-based SMP.
However, Liu discloses a catheter (Figs. 1-28, abstract, ¶0079), and the multi-phase shape-shifting memory material is a self-sensing and reversible bi- layer composite sheet, and the self-sensing and reversible bi-layer composite sheet comprises a self-sensing and reversible CNT-based SMP together with polymers (¶0163, ¶0084, Figs. 1-28).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman so that SMP is CNT-base SMP and the self-sensing and reversible bi-layer composite sheet comprises a self-sensing and reversible CNT-based SMP as taught by Liu for the purpose of enhancing the reflective of the spring and recapturing desired light (Liu, ¶0163).
Re claim 15, Pile-Spellman fails to disclose wherein a Negative Poisson's Ratio (NPR) structure is used in the SMP actuator such that auxetics and strains of the SMP actuator are enhanced.
However, Liu discloses a catheter (Figs. 1-28, abstract, ¶0079), and wherein a Negative Poisson's Ratio (NPR) structure is used in the SMP actuator such that auxetics and strains of the SMP actuator are enhanced (¶0116, ¶0152, Fig. 5- 6c, Table 2-5, show improvement of stress and elastic modulus with SMP which has CNT, so the Negative Poisson's Ratio (NPR) is improved as disclosed in current application ¶0268-¶0272).
Thus, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the catheter of Pile-Spellman so that SMP is CNT-base SMP and the self-sensing and reversible bi-layer composite sheet comprises a self-sensing and reversible CNT-based SMP as taught by Liu for the purpose of enhancing the reflective of the spring and recapturing desired light (Liu, ¶0163).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAMZA A. DARB whose telephone number is (571)270-1202. The examiner can normally be reached 8:00-5:00 M-F (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chelsea Stinson can be reached at (571) 270-1744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAMZA A DARB/Examiner, Art Unit 3783 /CHELSEA E STINSON/Supervisory Patent Examiner, Art Unit 3783