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 .
Response to Amendment
Applicant’s amendment filed June 11, 2025 has been entered. Claims 1-3, 8, and 13 have been amended. Claims 11 and 12 have been cancelled. New Claims 21 and 22 have been added. As such, Claims 1-10 and 13-22 are currently pending in the application.
Specification
The disclosure is objected to because of the following informalities: in the CROSS-REFERENCE TO RELATED APPLICATIONS section of the Specification, the status of the parent applications as issued patents is not provided. Appropriate correction is required.
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.
Claims 13-16, 21, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2009/0176054 to Laib et al. (“Laib”).
With regard to Claim 13, Laib discloses an adaptive textile comprising a plurality of fibers configured to change shape in response to temperature change in order to become more insulative. See, e.g., Abstract, entire document. Laib discloses “the insulative material includes a plurality of fibers with some portion of the fibers comprised of at least first and second materials having different coefficients of thermal expansion. As a result, each fiber is configured to change shape, such as by curling or otherwise deforming, in response to changes in temperature.” Paragraph [0008]. As such, Laib satisfies the limitation of a plurality of first fiber having a first expansion coefficient and a plurality of second fiber having a second coefficient because each of the fibers contain materials having two different coefficients of thermal expansion, and the claims do not require the first and second fibers to be exclusive in grouping to one another. With regard to Claims 14 to 16, Laib discloses that the fibers can be woven into a fabric, paragraph [0056], and that the adaptive fibers can be provided in a parallel and alternating configuration. Paragraph [0048] (“forming the strips such that portions made of a single material alternate or are disposed in parallel to portions made of two materials such that portions that curl are placed between or parallel to portions that do not”). Laib also teaches “the first and second materials both extend lengthwise along the respective fibers.” Paragraph [0009]. With regard to Claim 21, Laib teaches that fibers, which ultimately form the textile, comprise an active upper bimorph and an active lower bimorph having an opposite temperature response behavior. Paragraph [0039] (“the application of the second material in a discontinuous manner or in varying thicknesses and/or widths along the length of the fiber may result in a fiber that has curls at lower temperatures that are separated by segments which do not curl or which curl in an opposite direction”) (emphasis added); compare Figure 5a to Figure 5b and compare Figure 9a to Figure 9b. With regard to Claim 22, Laib shows that the upper active bimorph and lower active bimorph provide a flat profile at a first temperature, Figure 9a, and a lofted profile at a second temperature and the presence of a cavity. Figure 9b.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Laib.
With regard to Claim 1, Laib discloses an adaptive textile comprising a plurality of fibers configured to change shape in response to temperature change in order to become more insulative. See, e.g., Abstract, entire document. Laib discloses “the insulative material includes a plurality of fibers with some portion of the fibers comprised of at least first and second materials having different coefficients of thermal expansion. As a result, each fiber is configured to change shape, such as by curling or otherwise deforming, in response to changes in temperature.” Paragraph [0008]. As such, Laib satisfies the limitation of a plurality of first fiber having a first expansion coefficient and a plurality of second fiber having a second coefficient because each of the fibers contain materials having two different coefficients of thermal expansion, and the claims do not require the first and second fibers to be exclusive to one another. Laib discloses that the adaptive textile can bend to provide a plurality of first and second potions along a plane of the adaptive textile. Figures 11a and 11b; see also Figures 2a and 2b, 4a and 4b, 5a and 5b, and 6a and6b (showing the material capable of extending along a length axis to promote linear displacement). Laib teaches that fibers, which ultimately form the textile, comprise an active upper bimorph and an active lower bimorph having an opposite temperature response behavior. Paragraph [0039] (“the application of the second material in a discontinuous manner or in varying thicknesses and/or widths along the length of the fiber may result in a fiber that has curls at lower temperatures that are separated by segments which do not curl or which curl in an opposite direction”) (emphasis added); compare Figure 5a to Figure 5b and compare Figure 9a to Figure 9b. Laib also shows that the upper active bimorph and lower active bimorph provide a flat profile at a first temperature, Figure 9a, and a lofted profile at a second temperature and the presence of a cavity. Figure 9b. Laib does not expressly discloses that the first portions and the second portions define a mirrored bimorph structure. Nonetheless, such a feature would be obvious in light of the disclosure of Laib. For example, Laib shows that the manner in which a lofted configuration can be assumed by the fiber is symmetrical, Figure 5b, compared to the flat configuration. Figure 5a. This embodiment is apparently contrasted with another embodiment of Laib directed to an asymmetric formation of the materials having different expansion coefficient. Figure 4 and paragraph [0038]. As such, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a mirrored bimorph structure to the textile disclosed by Laib in order to provide uniform appearance of the fabric texture, as suggested to be possible by Laib. With regard to Claims 2 and 3, Laib discloses that “the insulative material as well as an adaptive clothing article that incorporates the insulative material may permit a wearer to remain comfortable over a broader range of temperatures since the insulative material may be less insulative and therefore permit the wearer to remain cooler at warmer temperatures, while being more insulative and thereby keeping the wearer warmer at cooler temperatures. Alternatively, the insulative material may be tuned to become more insulative as the temperature increases, as may be desirable for clothing to protect against hot temperatures, as is used, for example, by firefighters.” Paragraph [0006]. With regard to Claims 4 to 6, Laib discloses that the fibers can be woven into a fabric, paragraph [0056], and that the adaptive fibers can be provided in a parallel and alternating configuration. Paragraph [0048] (“forming the strips such that portions made of a single material alternate or are disposed in parallel to portions made of two materials such that portions that curl are placed between or parallel to portions that do not”). Laib also teaches “the first and second materials both extend lengthwise along the respective fibers.” Paragraph [0009].
Claims 7-10 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Laib in view of Haines et al. “Artificial Muscles from Fishing Line and Sewing Thread,” Science 343(6173), pp. 868-872 and Supplementary Materials (2014) (“Haines”).
With regard to Claims 7 and 17, Laib does not disclose the values for expansion coefficient. Haines is also related to adaptive textile materials that are responsive to temperature. See, e.g., Abstract, entire document. Haines discloses that the coefficient of thermal expansion can be varied based upon selection of the material used and modifications to be made, well within the purview of the skilled artisan. Supplement pp. 5-6. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide one or more first or second fibers disclosed by Laib with an expansion coefficient greater than 1000 microns/m/K, since selection of such a material would increase response to temperature stimulus, and because “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). With regard to Claims 8 and 18, Laib discloses that the textile can be expand in response to a temperature change. Paragraphs [0045], [0046], and [0050] and Figure 9. Laib discloses that “the insulative material 14 may be formed such that the sheet 24 is relatively flat or planar at room temperature, but becomes corrugated, bumpy, or otherwise deformed as the temperature varies, such as by decreases in the temperature.” Paragraph [0042]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the expansion such that the textile at least doubles in order to provide improved insulation properties, as generally taught to be known by Laib and because “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). With regard to Claims 9, 10, 19, and 20, Haines discloses that tensile actuation can be triggered within a temperature range of less than 10 degrees C., and that the amount of actuation within that temperature range can be no more than 5%. Figure 2. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to have the temperature difference be less than 10 degrees C. and have the actuation be less than 5% in the fabric disclosed by Laib in order to manufacture a highly responsive garment material that triggers its thermal usage under non-extreme conditions, as these conditions are generally recognized by Haines.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 and 13-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,793,981 (“the ‘981 Patent”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘981 Patent claims an adaptive fabric comprising a first material having a first thermal expansion coefficient and a second material having a second thermal expansion coefficient that is different from the first thermal expansion coefficient, wherein at least one of the first and second materials comprises a twisted coil actuator. The person having ordinary skill in the art would readily recognize that the first and second materials are typically provided in the form of a first fiber and a second fiber, given that the primary product claimed by the ‘981 Patent is a fabric configured for use as a garment. The presently claimed linear mirrored bimorph structure because the textile to bend falls within the scope of the ‘981 Patent claim limitation that the fabric changes configurations in response to a change in temperature via hetero-chiral and homo-chiral portions that respond to temperature changes in opposite ways using the twisted coil actuator. Moreover, the subject matter of the present dependent claims significantly overlaps with the subject matter claimed in the ‘981 Patent.
Claims 1-10 and 13-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,686,024 (“the ‘024 Patent”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘024 Patent claims an adaptive woven or knit fabric comprising a plurality of first fibers having a first thermal expansion coefficient and a plurality of second fibers having a second thermal expansion coefficient that is different from the first thermal expansion coefficient, wherein at least one of the first and second plurality of fibers comprises a twisted coil actuator. The ‘024 Patent also claims that the fabric is configured for use as a garment. The ‘024 Patent claims that the fabric contains first portions and second portions on opposing surfaces of the textile material. The presently claimed linear mirrored bimorph structure because the textile to bend falls within the scope of the ‘024 Patent claim limitation that the fabric changes configurations in response to a change in temperature via hetero-chiral and homo-chiral portions that respond to temperature changes in opposite ways using the twisted coil actuator. Moreover, the subject matter of the present dependent claims significantly overlaps with the subject matter claimed in the ‘024 Patent.
Response to Arguments
Applicant's arguments filed June 11, 2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art rejections are moot in view of the amendments. The Examiner disagrees. First, the scope of Claim 13 has been broadened, rather than being limited to in any manner to render it outside the scope of the prior art rejection. Second, with regard to Claim 1, Laib shows that the upper active bimorph and lower active bimorph provide a flat profile at a first temperature, Figure 9a, and a lofted profile at a second temperature and the presence of a cavity. Figure 9b. While Laib does not expressly discloses that the first portions and the second portions define a mirrored bimorph structure, such a feature is rendered obvious in light of the disclosure of Laib, which the fiber is symmetrical in its lofted configuration, Figure 5b, compared to the flat configuration. Figure 5a. As such, it would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a mirrored bimorph structure to the textile disclosed by Laib in order to provide uniform appearance of the fabric texture, as suggested to be possible by Laib.
Applicant argues that the amendments to the claims have rendered the double patenting rejections moot. The Examiner disagrees. The claimed mirrored bimorph structure presently claimed is satisfied by the ‘981 Patent and ‘024 Patent claim limitations requiring a twisted coil actuator, which effectively serve to provide the mirrored bimorph structure.
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 JEREMY R PIERCE whose telephone number is (571)270-1787. The examiner can normally be reached Monday - Friday, 9 am to 5 pm.
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, Marla D. McConnell can be reached at 571-270-7692. 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.
JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/ Primary Examiner, Art Unit 1789