DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 12 and 13 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 regards as the invention.
Claim 12 recites the limitation "the mesogens having reactive end groups" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 is rendered indefinite because the claim does not specify what the ratio is based on (e.g., mass, moles, etc.).
Claim Rejections - 35 USC § 102
Claims 1-12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kotikian et al. (Adv. Mater., vol. 30, 2018) as evidenced by the Daken Chemical RM82 information sheet.
Kotikian is directed to additive manufacturing of liquid crystal actuators employing liquid crystal elastomers which exhibit large reversible contractions wherein the mesogen domains are aligned along the direction of the print path (page 1, column 2). The liquid crystal elastomer ink comprises oligomers formed from reactive mesogens with acrylate end groups and amine linkers (paragraph bridging pages 1 and 2 and Figure 1).
In the embodiment illustrated in Figure 2(a), an H-shaped top layer is printed over a square bottom layer wherein the top layer is printed at 90o from horizontal while the bottom layer is printed at 45o from horizontal (paragraph bridging the column on page 2).
In the embodiment illustrated in Figure 4, the article comprises four layers in the form of two pairs of perpendicularly oriented layers (paragraph bridging pages 3 and 4).
Since the mesogen domains are aligned along the direction of the print path, one of ordinary skill in the art would expect the H-shaped top layer and square bottom layer to be aligned in different directions.
Regarding claim 2, one of ordinary skill in the art would expect a layer in the first pair of layers of the four layered article illustrated in Figure 4 to have the same as a layer in second pair of layers since the layers are perpendicularly oriented.
The since the actuators exhibit large reversible contractions, one of ordinary skill in the art would expect the limitations of claim 3 to be met during the reversible contractions performed during use.
The limitation of claim 9 is taken to be met since the top and bottom layers are printed to a thickness of 100 mm, i.e., greater than the minimum dimension recited in the claim.
The limitation of claim 10 is taken to be met since the photograph presented in Figure 3(c) illustrates a shape change of greater than 5%.
Regarding claim 14, the liquid crystal elastomer depicted by Kotikian in Figure 1 is the reactive liquid crystal known as RM82 (compare the structure in Figure 1(a) of Kotikian with the structure given for RM82 in the Daken Chemical RM information sheet). This compound has an aspect ratio of 4:1 (see page 3 of Daken).
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 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kotikian et al. (Adv. Mater., vol. 30, 2018).
Kotikian teaches all the limitations of claim 3, as outlined above, except the reference is silent regarding the ratio of mesogen to linker.
However, in the absence of a showing of criticality or unexpected results, it would have required no more than routine experimentation and ordinary skill to determine a ratio of mesogen to linker suitable for use in an additive manufacturing process. Since claimed invention is also formed by additive manufacturing (e.g., see paragraph 0003 on page 2 of the specification) and thus would both be expected to require similar properties (e.g., viscosity), one of ordinary skill in the art would expect the ratio determined by routine experimentation to satisfy the limitation of claim 13.
Double Patenting
Claims 1 and 3-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 21, 22, 24, and 25 of copending Application No. 18/237,836 (reference application) in view of Kotikian et al. (Adv. Mater., vol. 30, 2018) and as evidenced by the Daken Chemical RM82 information sheet.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the inventions of instant claims 1 and 3-10 represent a genus of which the inventions described by claims 21 and 22 of copending Application No. 18/237,836 are species. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). The inventions recited in claims 21 and 22 of copending Application No. 18/237,836 represent a species since the first and second layers claimed in copending Application No. 18/237,836 are required to have different orientations while those of instant claim 1 can have any orientation.
Additionally, claims 1-3, 21, 22, 24, and 25 of copending Application No. 18/237,836 are silent regarding the structure of the liquid crystal elastomer.
Kotikian is directed to additive manufacturing using liquid crystal elastomers. The liquid crystal elastomer comprises oligomers formed from reactive mesogens with acrylate end groups and amine linkers (paragraph bridging pages 1 and 2 and Figure 1). A suitable reactive mesogen is RM82, a compound that has an aspect ratio of 4:1 (Daken Chemical RM82 information sheet).
It would have been obvious to one of ordinary skill in the art to use the liquid crystal elastomer of Kotikian in the product claimed in copending Application No. 18/237,836 since the courts have held the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP 2144.07.
Regarding claims 5 and 7, the claims of Application No. 18/237,836 recite that a portion of the first and second layers are aligned in a predefined orientation. In the absence of a showing of criticality or unexpected results, it would have been obvious to one of ordinary skill to construct a product wherein the portion is all or substantially all of the layer.
Regarding claim 9, claim 21 of copending Application No. 18/237,836 does not limit the dimensions of the layers. In the absence of a showing of criticality or unexpected results, it would have been obvious to one of ordinary skill to construct a product having any minimum dimension.
Regarding claim 10, since the product of recited in the claims of copending Application No. 18/237,836 appears to be the same as that of the instant claims, one of ordinary skill in the art would expect that it would be able to intrinsically exhibit a shape change of greater than 5 vol%.
Regarding claim 13, in the absence of a showing of criticality or unexpected results, it would have required no more than routine experimentation and ordinary skill to determine a ratio of mesogen to linker suitable for use in an additive manufacturing process. Since both the claimed invention and the product claimed in copending Application No. 18/237,836 are both formed by additive manufacturing and thus would both be expected to require similar properties (e.g., viscosity) one of ordinary skill in the art would expect the ratio determined by routine experimentation to satisfy the limitation of claim 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to claims 1-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787