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 .
Acknowledge
Claims 1, 6-7, 9-11, 14-15 are amended and field on 5/12/2026.
Claims 3, 8 are canceled.
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 1-2, 4-7, 9-15 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 1 recites the limitation " with conductive coating agents that is configured to be coated by a silver chemical plating process or a carbon nanotube (CNT) composite process” in lines 5-6. It is unclear if the claim is an apparatus claim or a method of making claim wherein the step of making is disclosed in an apparatus claim that makes the claim unclear. Note: for the purpose of examination, the applicant is advised to amend the claim such as " with conductive coating agents that is configured to be coated with a silver composite or a carbon nanotube (CNT) composite
Claim 6 recites the limitation " wherein an electroless silver plating process is performed to deposit a seed layer…" in lines 2-3. It is unclear if the claim is an apparatus claim or a method of making claim. It is unclear if the claim is an apparatus claim or a method of making claim wherein the step of making is disclosed in an apparatus claim that makes the claim unclear. 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” and/or you may add “ seed layer configured to be performed by an electroless silver plating process" (so that the device capable to be coated by the indicated process). Also, the applicant can used the step in future as in a method of making.
Claim 7 recites the limitation " wherein the electroless silver plating process is performed to deposit a silver layer" 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 a seed layer is referring to the limitation in claim 6 or it is referring to a new limitation. Note: for the purpose of examination, the applicant is advised to amend the claim such as "the seed layer is deposited on a surface of each of the plurality of self-sensing shape-shifting spring coil actuators” and/or you may add “ the seed layer configured to be performed by an electroless silver plating process". The process step should be included in a method of manufacturing not an apparatus claim.
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) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pile-Spellman et al. (US. 20060064055 A1) (“Pile-Spellman”) in view of Hegde et al. (US 20200114042 A1) (“Hegde”).
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) comprising a self-sensing shape-shifting memory polymer (SMP) actuator (¶0020, SMA or SMP see ¶0015) without conductive coating agents or with conductive coating agents that is configured to be coated by a silver chemical plating process or a carbon nanotube (CNT) composite process (¶0035, coated by a silver composite or carbon fiber composite); a control circuit (¶0037) 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, ¶0038); and a power supply unit connected to the control circuit (Fig. 5, ¶0026, ¶0040), but it fails to specifically disclose a shielding disposed around the steerable catheter for shielding heat and electromagnetic (EM) radiations.
However, Hegde discloses a medical device such as catheter (Figs. 1-12, ¶0066), and wherein the device is comprising a shielding around the steerable catheter for shielding heat and electromagnetic (EM) radiations (outside coating, ¶0005, ¶0031, ¶0066, ¶0071).
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 disposed around the steerable catheter for shielding heat and electromagnetic (EM) radiations as taught by Hegde for the purpose of reducing thermal parasitic effects (Hegde, ¶0031).
Re claim 2, Pile-Spellman discloses further comprising a driving circuit for driving the steerable catheter ( driving device such as computer, ¶0040).
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 Hegde and further 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 disclose 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 Hegde and Seward and further in view of Maitland et al. (US. 20060009785A1) (“Maitland”).
Re claim 6, Pile-Spellman fails to disclose wherein an electroless silver plating process is performed to deposit a seed layer on a surface of each of the plurality of self-sensing shape-shifting spring coil actuators.
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 so that an electroless silver plating process is performed to deposit a seed layer on a surface of each of the plurality of self-sensing shape-shifting spring coil actuators 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 the electroless silver plating process to deposit a silver layer on a surface of the seed layer.
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 the electroless silver plating process to deposit a silver layer on a surface of the seed layer 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 Hegde and further in view of Maitland et al. (US. 20060009785A1) (“Maitland”).
Re claim 9, Pile-Spellman fails to disclose wherein the conductive coating agents are thermal conductive and are configured to be coated 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 conductive coating agents are thermal conductive and are configured to be coated 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, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pile-Spellman in view of Hegde and further in view of Liu et al. (US. 20200237378A1) (“Liu”).
Re claim 10, Pile-Spellman fails to disclose wherein the conductive coating agents are thermal conductive and are configured to be coated 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 conductive coating agents are thermal conductive and are configured to be coated 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 15, Pile-Spellman fails to disclose wherein auxetics and strains of the SMP actuator are enhanced by adding CNT to the SMP actuator, and wherein the auxetics and strains are measured by a Negative Poisson's Ratio (NPR).
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 auxetics and strains of the SMP actuator are enhanced by adding CNT to the SMP actuator, and wherein the auxetics and strains are measured by a Negative Poisson's Ratio (NPR).as taught by Liu for the purpose of enhancing the reflective of the spring and recapturing desired light (Liu, ¶0163).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pile-Spellman in view of Hegde and Seward and further in view of Liu et al. (US. 20200237378A1) (“Liu”).
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).
Response to Arguments
Applicant’s arguments, see remark, filed 5/12/2026, with respect to the rejection(s) of claim(s) 1 under 102 rejection and with regards to the newly added limitation have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Pile-Spellman in view of Hegde.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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
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