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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on July 14, 2026 has been entered.
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) 1, 2, 4, 6-9, 11, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Howell et al. (US 2020/0256647 A1) (“Howell”), in view of Kang et al. (US 9796159 B2) (“Kang”).
With respect to claim 1, Howell discloses a composite comprising a polymer resin layer – element 102 - and a plurality of rigid plates fabricated in the polymer resin layer (0025) to form a three-dimensional polyhedron structure (Fig. 1C), reinforcing the polymer resin layer, each rigid plate of the plurality of rigid plates having a polygon shape with rigid sides (0007, 0008, 0029), the plurality of rigid plates being disposed in a pattern, wherein the polymer resin layer forms a plurality of hinges in the polymer resin layer between sides of the plurality of rigid plates, so that the composite is foldable at the plurality of hinges into the first/collapsed state and expandable at the plurality of hinges to the second/deployed state (0025, 0028, 0037, Figs. 1A and 2A).
Howell discloses the composite can be in a first/collapsed state with a first shape that is a three-dimensional polyhedron (Fig. 1C) and a second/deployed state with a second shape, the second shape being a hollow cylinder – the composite can have multiple configurations, wherein in the general shape “C” the sides can be folded in (0024), which has been interpreted as corresponding to a shape of a hollow cylinder, wherein each of the first state and the second state is configured to hold the first shape and the second shape, respectively (abstr., 0025, Figs. 1A, 1C), with the application of a load – it is implied that a load has to be applied to the composite so that it would hold the first shape and the second shape (0025, 0048-0051).
In the recitation “wherein the composite is configured such that applying an external stimulus to the composite when the composite is in the first/collapsed state activates a shape change whereby the composite shifts from the first shape to the second shape and expands the composite from the first/collapsed state to the second/deployed state, wherein the external stimulus comprises at least one of : 1) a temperature change, 2) UV light, 3) an electric field, or 4) a magnetic field” the claim describes how the composite functions when in use. Howell is silent regarding the specific external stimulus as recited in the claim.
Kang discloses a shape memory polymer (SMP) used in morphing structures used in military applications (col. 1, lines 65-67, col. 2, lines 1-9), wherein the external stimulus is an electric field (abstr., col. 2, lines 43-57). The SMP comprises an epoxy resin and an amine (col. 3, lines 40-52). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the polymer resin layer of Howell a SMP layer as disclosed in Kang, as Kang’s SMP is suitable for deployable structures in military applications as is the composite of Howell (0029), Howell providing for the resin layer comprising a plurality of layers (0029, 0030).
Regarding claim 2, Howell and Kang teach the composite of claim 1. Kang discloses a shape memory polymer (SMP) used in morphing structures (col. 1, lines 65-67, col. 2, lines 1-9), the SMP comprising an epoxy resin and an amine (col. 3, lines 40-52).
As to claim 4, Howell and Kang teach the composite of claim 3. Kang discloses oxydianiline in an adequate amount as known in the art (col. 3, lines 49-52), thus, it is the Examiner’s position that the molar concentration of the one diamine is satisfied.
With respect to claim 6, Howell and Kang teach the composite of claim 1. Kang discloses a SMP that is to be used in deployable structures (col. 1, lines 65-67, col. 2, lines 1-9), the SMP comprising an epoxy resin and an amine (col. 3, lines 40-52), the epoxy resin including bisphenol A diglycidyl ether, benzhydrylamine and oxydianiline (col. 3, lines 42-52). Since the polymer resin layer comprising SMP of Kang is disclosed in the instant specification, it would be expected that the shaping temperature of the SMP of Kang satisfies the range recited in claim 6.
With respect to claim 7, Howell and Kang teach the composite of claim 1. Howell discloses the polymer resin layer has a thickness of greater than 0 to about 12.5 mm (0031). The range of thickness overlaps the range recited in claim 7; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 8, Howell and Kang teach the composite according to claim 2. Kang teaches the SMP comprising carbon nanotubes (col. 3, lines 53-55).
Regarding claim 9, Howell and Kang teach the composite according to claim 1. Howell discloses at least one rigid plate of the plurality of rigid plates includes epoxy and carbon fiber – Garolite is known in the art as comprising epoxy (0035).
As to claim 11, Howell and Kang teach the composite according to claim 1. Howell discloses the at least one rigid plate of the plurality of plates includes epoxy and glass fibers – Garolite (0035).
With respect to claim 14, Howell and Kang teach the composite of claim 13. Howell discloses the pattern is an origami pattern of Yoshimura (0056), and the composite forms a hollow beam structure when in the second/deployed state (0024, Figs. 1 B and 1C).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Howell, in view of Kang and further in view of Davis et al. (US 2019/0025015 A1) (“Davis”).
With respect to claim 10, Howell and Kang teach the composite according to claim 1. Howell discloses the rigid plate comprises epoxy – Garolite is known in the art as comprising epoxy (0035), but is silent with respect to other components as recited in the claim. Howell discloses that the rigid plate comprises ballistic properties (0035). Davis discloses a ballistic plate comprising a composite comprising epoxy and carbon nanotube (0036). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include carbon nanotubes in the rigid plate of the composite of Howell, as it is known in the art of ballistic materials to combine carbon nanotubes with epoxy.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Howell, in view of Kang and further in view of Huber et al. (US 2007/0089596 A1) (“Huber”).
With respect to claim 12, Howell and Kang teach the composite according to claim 9. Howell discloses the rigid plate comprises epoxy – Garolite is known in the art as comprising epoxy (0035), but is silent with respect to the at least one fiber material including forms as recited in the claim. Howell discloses that the rigid plate comprises ballistic properties (0035). Huber discloses a ballistic device comprising a composite comprising carbon fiber in a weaved fabric form next to an epoxy adhesive (0041). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include carbon fiber material in the rigid plate of the composite of Howell and Kang in a weaved fabric form as it is known in the art of ballistic materials to combine carbon fiber material in a woven fabric form with an epoxy.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Howell, in view of Kang, and further in view of Martin et al. (US 8069770 B1) (“Martin”).
With respect to claim 13, Howell and Kang teach the composite according to claim 9. Howell discloses the rigid plate comprises epoxy – Garolite is known in the art as comprising epoxy and silicon carbide (0035), but us silent with respect to a ceramic material as recited in the claim. Howell discloses that the rigid plate comprises ballistic properties (0035). Martin discloses a ballistic material wherein silicon carbide is interchangeable with silicon nitride and boron carbide (abstr., col. 2, lines 46-60). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include silicon nitride and/or boron carbide in the plate of Howell, as it is known in the art of ballistic materials that silicon nitride and boron carbide are interchangeable with silicon carbide. It has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claim(s) 15-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Howell et al. (US 2020/0256647 A1) (“Howell”), in view of Kang et al. (US 9796159 B2) (“Kang”).
With respect to claim 15, Howell discloses a structure comprising a polymer resin layer – element 102 - and a plurality of rigid plates reinforcing the polymer resin layer, each rigid plate of the plurality of rigid plates having a polygon shape with rigid sides to form a three-dimensional polyhedron structure (0007, 0008, 0029, Fig. 1C), the plurality of rigid plates forming a pattern, wherein the polymer resin layer forms a plurality of hinges in the polymer resin layer between sides of the plurality of rigid plates, so that the structure is foldable at the plurality of hinges into the collapsed state and expandable at the plurality of hinges to deploy the structure into the deployed state (0025, 0028, 0037, Figs. 1A and 2A).
Howell discloses the polymer resin layer can be in a collapsed state with a three-dimensional polyhedron shape (1C) and the deployed state (abstr., 0025, Figs. 1A, 1C), but Howell does not disclose that the polymer resin layer can permanently change from the collapsed state to the deployed state when activated.
In the recitation “wherein the polymer resin layer is configured such that the polymer resin layer changes from the three-dimensional polyhedron shape to the hollow cylinder shape when activated in response to exposure to an external stimulus” the claim describes how the structure functions when in use. Howell is silent regarding the specific external stimulus as recited in the claim.
Kang discloses a shape memory polymer (SMP) used in morphing structures used in military applications (col. 1, lines 65-67, col. 2, lines 1-9), wherein the external stimulus is an electric field (abstr., col. 2, lines 43-57). The SMP comprises an epoxy resin and an amine (col. 3, lines 40-52). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the polymer resin layer of Howell a SMP layer as disclosed in Kang, as Kang’s SMP is suitable for deployable structures in military applications as is the composite of Howell (0029), Howell providing for the resin layer comprising a plurality of layers (0029, 0030).
Regarding claim 16, Howell and Kang teach the structure of claim 15. Howell discloses the pattern is an origami pattern of Yoshimura (0056).
With respect to claim 17, Howell and Kang teach the structure of claim 16. Kang discloses a shape memory polymer (SMP) used in morphing structures (col. 1, lines 65-67, col. 2, lines 1-9), wherein an external stimulus includes heat - the SMP deployable in response to heat (col. 2, lines 52-57).
Regarding claim 18, Howell and Kang teach a composite according to claim 1, as discussed above. Howell is silent regarding a method of activating shape change of the composite comprising exposing the composite to at least one heat source as an external stimulus as recited in the claim. Kang discloses a shape memory polymer (SMP) used in morphing structures (col. 1, lines 65-67, col. 2, lines 1-9), the SMP deployable in response to heat as the external stimulus, e.g. Joule heating with direct current (col. 2, lines 52-57, col. 4, lines 52-67). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the polymer resin layer of Howell of the SMP layer as disclosed in Kang, as Kang’s SMP is suitable for deployable structures. It would have been obvious to one of ordinary skill in the art to expose the composite to Joule heating with direct current to activate shape change.
As to claim 19, Howell and Kang teach the method of claim 18. The references do not state explicitly that the heat source provides a heat flow in the range of about
100 ˚C to about 160 ˚C to enable shaping of the polymer resin layer, however, since the polymer resin layer comprising SMP of Kang is disclosed in the instant specification, it would be expected that the heat source would provide a heat flow in temperature range satisfying the range of claim 19 to enable shaping of the polymer resin layer.
Examiner’s Note
Claim 3 is 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: the art of record fails to teach or suggest a composite as recited in claim 3, wherein the epoxy resin includes at least one of the required components.
Claim 5 is 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: the art of record fails to teach or suggest a composite as recited in claim 5, wherein the polymer resin layer is a UV curable polymer made of bisphenol-A epoxy diacrylate cured with about 20 wt. % of a crosslinker of pentaerythritol tetraacrylate or pentaerythritol triacrylate
Response to Arguments
Applicant’s arguments filed on July 14, 2026 have been fully considered.
In view of the recent amendment 35 USC 112(b) rejection of claim 15 has been withdrawn.
The Applicant has argued that Howell discloses deployable planar/curved shield or barrier for police/crowd control use, while the present application pertains to collapsable 3D polygon structure that unfolds into a hardened hollow cylinder, the intended uses are thus, different. The Examiner notes the structure of Howell can be used as a ballistic barrier (0104), a construction barrier (0105), fire/heat barrier (0108), radiation barrier (0109), for example. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. In re Kahn, 441 F.3d 977, 097, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Regarding a hardened hollow cylinder, Howell discloses that the deployed structure can have multiple configurations, the sides being folded in, which has been interpreted as corresponding to cylinder shape.
The Applicant argued Howell does not disclose use of a monolithic polymer resin layer but rather uses a continuous fabric backing sheet. The Examiner notes Howell discloses that the sheet can be formed from numerous materials and may include multiple layers, but is not limited to fabrics (0029-0031). Furthermore, the claims do not require a monolithic resin layer. The Applicant argued that use of the material of Kang in lieu of the flexible sheet would render Howell unsatisfactory for its intended purpose. The Examiner notes in the rejection it was not suggested to use the material of Kang in lieu of the polymer resin layer of Howell, but to include in the polymer resin layer of Howell a SMP layer as disclosed in Kang, as Kang’s SMP is suitable for deployable structures in military applications as is the composite of Howell (0029), Howell providing for the resin layer comprising a plurality of layers (0029, 0030).
The Applicant argued Howell discloses an example of “polygon” as a possible shape of its composite, thus the claims were amended to recite a three-dimensional polyhedron shape in the collapsed state. The Examiner notes Howell discloses a three-dimensional polyhedron shape of the composite in the collapsed state in Fig. 2C, as discussed above.
The Applicant argued claim 1 requires that the rigid plates are fabricated in a pattern in the polymer resin layer to form a plurality of hinges in the polymer resin layer between sides of the plurality of rigid plates. The Examiner notes that feature is disclosed in par. [0025], [0028], [0037] of Howell. The Applicant argued in Howell the polymer resin layer is expressly described as being attached to separate rigid panels via an attachment mechanism, thus, the hinges and rigid plates are not aspects of the same polymer resin layer. The Examiner notes Howell discloses the panels are incorporated into the polymer resin layer (0025, 0037). The Applicant further argued that the rigid panels and the polymer resin layer are not “monolithic.” The Examiner notes the claims do not require them to be “monolithic.”
The Applicant argued that the hinges in Howell do not undergo a material state change. The Examiner notes the claims do not require that the hinges undergo a material state change to trigger the deployment of the structure. It is the combination of Howell and Kang that teaches use of SMP layer in the polymer resin layer of Howell, SMP used in morphing structures in military applications, as discussed above. The Applicant argued Howell discloses that a manual operation is necessary for a material state change. The Examiner notes Howell discloses that the composite can be expanded automatically (0023). The suggested modification of the polymer resin layer with an SMP layer of Kang satisfies the requirement of the specific external stimulus activating the state change of the composite of Howell.
The Applicant discussed an embodiment of Howell wherein the rigid sections are intended to overlap its hinges (par. [0041] of Howell. The Examiner notes that embodiment is only one of the embodiments of Howell.
The Applicant argued that the suggested modification of Howell with a monolithic state-changing polymer composite structure would fundamentally change how Howell’s structure is manufactured or how it works. The Examiner notes claim 1 as presently amended requires “a plurality of rigid plates fabricated in the polymer resin layer to form a three-dimensional polyhedron structure.” That limitation is disclosed in par. [0025} and [0037] of Howell. Claim 1 as presently amended recites “wherein the plurality of rigid plates are disposed in a pattern whereby the polymer resin layer forms a plurality of hinges in the polymer resin layer between sides of the plurality of rigid plates.” That limitation is disclosed in par. [0025], [0028], and [0037] and Figs. 1A and 2A of Howell, as discussed above.
Conclusion
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/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783
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