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 .
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) 1-4, 12, 14-17 and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong (CN 2378823 Y). Reference submitted with IDS, translation previously attached.
As to claim 1, Hong discloses: A switching system (Fig. 1) comprising:
a switch 7 comprising an ON state and an OFF state (closed/open; see par. 0010-0011); and
an actuator comprising:
an actuation system comprising an actuation material 3 (par. 0009) that has a temperature-controllable spatial extent;
a control system (automatic control by ambient temperature; par. 0010-0011) configured to adjust the temperature of the actuation material to control the spatial extent of the actuation material; and
a driving assembly 2, 4 coupled to the actuation system, wherein the driving assembly moves in response to a change in the spatial extent of the actuation material to thereby change the state of the switch (rod and spring move to open/close contact group 7; par. 0010-0011).
As to claim 15, Hong discloses: An actuator (Fig. 1) for an electrical apparatus, the actuator comprising:
an actuation system comprising an actuation material 3 (par. 0009) that has a temperature-controllable spatial extent;
a control system (automatic control by ambient temperature; par. 0010-0011) configured to adjust the temperature of the actuation material to control the spatial extent of the actuation material; and
a driving assembly 2, 4 coupled to the actuation system, wherein the driving assembly moves in response to a change in the spatial extent of the actuation material to thereby move a movable contact (see “pressure point” in par. 0010-0011; when contacted by rod the contact group is closed/opened, which requires a movable contact) in the electrical apparatus to change a state of a switch 7 in the electrical apparatus (rod and spring move to open/close contact group 7; par. 0010-0011).
As to claims 2 and 16, Hong discloses: wherein the actuation material is a shape memory alloy (par. 0009).
As to claims 3 and 17, Hong discloses: wherein the actuation system further comprises a rod 2;
the actuation system 3 is coupled to the assembly (rod 2, spring 4) at the rod; and
the actuation material 3/the shape memory alloy 3 is a wire (spring-shaped wire) that extends axially along the rod 2 (see Fig. 1) and is wound about the rod.
As to claim 4, Hong discloses: wherein the actuation material is wound about the rod (see Fig. 1).
As to claim 12, Hong discloses: wherein the actuation material comprises a compressed state and an expanded state; the actuation material transforms into the compressed state in response to the temperature of the actuation material reaching a first transformation temperature; and the actuation material transforms into the expanded state in response to the temperature of the actuation material reaching a second transformation temperature (see par. 0009).
As to claim 14, Hong discloses: further comprising an interlock (spring 4, plate 5) configured to hold the switch in the OFF state (for the normally open contact group 7, when below the phase transition temperature the spring 4 biases the rod 2 to the left, which holds the normally open contact group 7 in the open/OFF state; see par. 0010-0011; Fig 1).
As to claim 21, Hong discloses: wherein the actuation system further comprises a rod 2 and an attachment member 8 comprising a slot (see Fig. 1) configured to receive the rod; wherein the actuation material 3 extends axially along the rod (extends from left to right wound around the rod; see Fig. 1); a first end (right end) of the actuation material 3 is affixed to the rod (at 5, abuts baffle 5 on the rod 2); and a second end (left end) of the actuation material 3 is affixed to the attachment member (abuts adjustment nut 8). The actuation material 3 is attached/affixed to rod 2 and nut 8 by overall assembly of the device.
Affix – to attach in any way (Merriam-Webster’s Dictionary).
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) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong (CN 2378823 Y) as applied to claim 1 above, and further in view of Safai (US 20150240793 A1).
As to claim 10, Hong does not explicitly disclose:
a temperature control configured to heat or cool the actuation material in response to a command from the control system.
However, Safai discloses:
a temperature control (heaters and coolers; par. 0052) configured to heat or cool the actuation material in response to a command from the control system 150 (par. 0052);
in order to actuate the actuator and/or place the device in the desired configuration (par. 0051).
It would have been obvious to one of ordinary skill in the related art(s) before the effective filing date of the claimed invention to modify the device of Hong as suggested by Safai, e.g., providing:
a temperature control configured to heat or cool the actuation material in response to a command from the control system;
in order to actuate the actuator and/or place the device in the desired configuration.
Additionally, all claimed elements were known in the prior art and one skilled in the art could have combined/modified the elements as claimed by known methods with no change in their respective functions, and the combination/modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
As to claim 11, Hong in view of Safai discloses:
wherein the temperature control comprises a current source (par. 0051; Safai) electrically connected to the actuation material; and
the control system is configured to control the current source to thereby control the spatial extent of the actuation material (par. 0051).
Allowable Subject Matter
Claims 5-9, 13, and 18-19 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As to claims 5-9, 13, and 18-19, the allowability resides in the overall structure and functionality of the apparatus as recited in the dependent claims 5, 13, and 18, including all of the limitations of their base claims and intervening claims, and at least in part, because they recite the following limitations:
5. The switching system of claim 3, wherein the actuation system further comprises an attachment member disposed on the rod, the attachment member mounted to a support at a mounting point; and wherein a first end of the actuation material is affixed to the rod; a second end of the actuation material is affixed to the attachment member; and the rod moves relative to the attachment member and rotates about the mounting point in response to the change in the spatial extent of the actuation material.
13. The switching system of claim 1, wherein the switch is part of an electrical apparatus, and the electrical apparatus is a capacitor switch.
18. The actuator of claim 17, wherein the driving assembly comprises: a clutch; a crank coupled to the clutch, the crank comprising: a body; a tip; and a latch pin that extends from the tip, wherein the latch pin is configured to interact with an interlock to hold the switch in the electrical apparatus in an OFF state.
Usuro (US 20140225708 A1), Gao (US 20080034750 A1), Eder (US 6239686 B1), and Jacot (US 6499952 B1) disclose conventional shape memory actuators.
None of the prior art, either alone or in combination, can be reasonably construed as adequately teaching the above claimed elements, in combination with the remaining claim limitations.
Further, Examiner has not identified any double patenting issues.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 5/22/2026 have been fully considered but they are not persuasive.
Claimed Elements Not Taught
Applicant has suggested Hong does not disclose “a control system configured to adjust the temperature of the actuation material to control the spatial extent of the actuation material” because the device of Hong relies on the ambient temperature (Remarks, p. 7).
In response, Examiner notes that the term “a control system” is a generic term and does not differentiate between a passive control system (an ambient environment) and an active control system or electronic control system. In Hong, the fluctuations in temperature of the ambient environment adjust the temperature of the actuation material to control the spatial extent of the actuation material, and thus it meets all of the claimed limitations of the “control system”.
Modification Renders Prior Art Unsatisfactory for Intended Purpose
Applicant has suggested that the modification renders Hong unsatisfactory “for its intended purpose of providing a basic temperature sensor that does not require electricity” (Remarks, p. 9).
In response, Examiner notes that the device of Hong is not a temperature sensor – it is a temperature controlled relay/temperature-sensing relay (see Abstract, par. 0003), and “is controlled to be switched on and off through the temperature sensation of the spring” (see Abstract). The device of Hong does not require electricity – however, modifying it with an active temperature control system as in Safai does not render Hong unsatisfactory for the intended purposed of providing a temperature controlled relay that is controlled to be switched on and off through the temperature sensation of the spring.
Conclusion
THIS ACTION IS MADE FINAL. 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 JACOB R CRUM whose telephone number is (571)270-7665. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm.
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/JACOB R CRUM/ Primary Examiner, Art Unit 2841
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