DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
During a telephone conversation with Mindy Rittner on 3/2/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-13. Therefore, the shortened statutory period for reply has been reset to expire 3 months or thirty (30) days, whichever is longer, from the mailing date of this communication. The previous office action mailed 3/18/2026 has been replaced with the supplemental office action below.
Claims 1-20 are pending.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-13, drawn to a osmotically active closed cell composite and osmotically activated actuator, classified in C12N 5/04.
II. Claims 14-20, drawn to an actuation method, classified in A01N 3/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product can be used in another method, such as a method that does not comprise actuation.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Mindy Rittner on 3/2/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kataruka et al. (Soft Matter, 2019, 15, 9665—9675).
Regarding claim 1: Kataruka is directed to an osmotically active closed cell composite comprising:
A closed cell structure comprising an aqueous filled cells and a solute of sodium chloride and glycerol, the cell wall comprising polydimethylsiloxane and has selective permeability (abstract).
Kataruka doesn’t specifically mention the closed cell structure is configured to undergo osmotically induced swelling during exposure to an aqueous environment having a different chemical potential from the fluid filled cells. However, the osmotically active closed cell composite of Kataruka is substantially identical to the osmotically active closed cell composite of the present invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Kataruka suggests closed cell structure configured to undergo osmotically induced swelling during exposure to an aqueous environment having a different chemical potential from the fluid filled cells. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 3: The fluid filled cells account for at least about 74% by volume of the closed cell structure.
Regarding claim 4: Kataruka teaches the closed cell composite can omit glycerol in the conclusion section (Section 4 Conclusion). While a specific osmotically active closed cell composite that does not include glycerol, it would have been obvious to have selected such a composite since it is specifically contemplated in the conclusions section. Therefore, it would have been obvious to one skilled in the art to selected a closed cell structure that does not include glycerol.
Regarding claims 5-6: The closed cell composite comprises silica nanoparticles and the polymer comprises an elastomer.
Regarding claims 7-8: The aqueous phase comprises sodium chloride and glycerol polyol.
Regarding claims 9-10: The solute comprises an ionic compound of NaCl.
Regarding claim 11: The concentration of aqueous phase comprising the solute has a concentration from zero to saturation (Table 1).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kataruka as applied to claim 1 above, and further in view of Sinibaldi et al. (Another Lesson from Plants: The Forward Osmosis-Based Actuator (2014) Plus One 9(7)).
Regarding claim 12: An osmotically active actuator is not taught in Kataruka.
Sinibaldi is directed to an osmosis based actuator. One skilled in the art would have been motivated to have used the osmotically active closed cell composite of Katakura to produce a plant inspired actuator with low power consumption and is capable of generating effective movements in a wide variety of environmental conditions (abstract Sinibaldi).
Regarding claim 13: The osmotically active closed cell composite is in contact, attached, or integrally formed with an object to be actuated via a swelling force (Figure 2 Sinibaldi).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764