Prosecution Insights
Last updated: April 19, 2026
Application No. 18/235,554

ACTUATION SYSTEM WITH A TEMPERATURE-CONTROLLED ACTUATION MATERIAL

Non-Final OA §102§103§DP
Filed
Aug 18, 2023
Examiner
CRUM, JACOB R
Art Unit
2835
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Eaton Intelligent Power Limited
OA Round
1 (Non-Final)
74%
Grant Probability
Favorable
1-2
OA Rounds
2y 4m
To Grant
99%
With Interview

Examiner Intelligence

Grants 74% — above average
74%
Career Allow Rate
461 granted / 624 resolved
+5.9% vs TC avg
Strong +29% interview lift
Without
With
+28.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 4m
Avg Prosecution
34 currently pending
Career history
658
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
46.0%
+6.0% vs TC avg
§102
23.9%
-16.1% vs TC avg
§112
12.0%
-28.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 624 resolved cases

Office Action

§102 §103 §DP
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 . Election/Restrictions Applicant’s election without traverse of Group 1, claims 1-19, in the reply filed on 12/01/2025 is acknowledged. Claim 20 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. 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, and 14-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong (CN 2378823 Y). Reference submitted with IDS, translation 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). 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 assembly 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.” Conclusion 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. 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, Jayprakash Gandhi can be reached at (571) 272-3740. 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. /JACOB R CRUM/ Primary Examiner, Art Unit 2835
Read full office action

Prosecution Timeline

Aug 18, 2023
Application Filed
Dec 13, 2025
Non-Final Rejection — §102, §103, §DP (current)

Precedent Cases

Applications granted by this same examiner with similar technology

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THERMAL TRANSFER STRUCTURES FOR IMMERSION COOLING
2y 5m to grant Granted Apr 07, 2026
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PROTECTIVE ELEMENT
2y 5m to grant Granted Mar 10, 2026
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2y 5m to grant Granted Mar 10, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
74%
Grant Probability
99%
With Interview (+28.6%)
2y 4m
Median Time to Grant
Low
PTA Risk
Based on 624 resolved cases by this examiner. Grant probability derived from career allow rate.

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