DETAILED ACTION
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) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tremblay et al (U.S. 8250818).
In re Claim 21, Tremblay teaches a damping mechanism (30) with a first portion (34);a second portion (32) configured for longitudinal motion relative to the first portion; a primary energy absorption system(39) configured for frictionally coupling the first portion and the second portion and converting motion of the second portion relative to the first portion into heat energy; and a combined secondary energy absorption system (39,46) with a tensile tie. The secondary energy absorbing system has absorbing material and is self-centering. (Figures 1-4D; Column 8, Lines 44-56)
The limitations “for damping energy resulting from a lateral force on a structure”, “for frictionally coupling the first portion and the second portion and converting motion of the second portion relative to the first portion into heat energy”, and “to absorb energy through non-linear deformation and provide a self-centering effect on the damping mechanism” are functional limitations directed to the intended use of the product and are afforded only limited weight. The Tremblay reference meets the positively claimed structural limitations and is therefore capable of the performing the function.
Tremblay does not specifically teach the tie of (46)secondary energy absorptions systems (39) is made from a shape memory alloy is a super elastic alloy. It would have been obvious to one having ordinary skill in the art to use shape memory/super elastic alloys, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. In re Leshin, 125 USPQ 416. Shape memory alloys and a super elastic alloy are durable materials the recover readily to their original state after undergoing initial deformation.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. The applicant argues that Trembly does not teach shaped memory allow as part of the self-centering system and that it in facts teaches away because of elevated costs. This is not persuasive. The modified Tremblay is meets the positively claimed limitations. The benefits of shaped memory alloys have also been cited. Therefore, it is capable of performing the functional limitations mentioned in the claim.
Allowable Subject Matter
Claims 1-3 and 5-20 are allowed.
The prior art of record fails to teach or adequately suggest a dampening mechanism with the combination of characteristics specified in the claims. Of particular note are the requirements for a secondary energy absorption system with a tie that is configured to place the tie in tension both when the energy is a tensile force and when the energy is a compression force, a friction pad between the first portion and the second portion and a fastener passing through the first portion and the second portion and establishing a normal force, and a slotted hole in the web of an I-beam. There is no cogent reasoning that is unequivocally independent of hindsight that would have led one of ordinary skill in the art at the effective filing date of the claimed invention to modify the prior art to obtain the applicant's invention.
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 ADAM G BARLOW whose telephone number is (571)270-1158. The examiner can normally be reached Monday - Friday, 9:00 am-4:00 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571) 272-6754. 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.
/ADAM G BARLOW/Examiner, Art Unit 3633
/BRIAN E GLESSNER/Supervisory Patent Examiner, Art Unit 3633
Prosecution Insights