DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The Office has carefully considered Applicant’s amendments and accompanying remarks dated 10/01/25. Applicant’s amendments to the claims are entered and are made of record. Applicant has amended claims 1, 4 and 7. The current status of the claims are as follows: Claims 1-5 and 12-13 stand rejected and claims 9-11 and 14-20 are objected to but indicated allowable.
Applicant’s modification to Figure 3 and the specification have also been entered and made of record.
For clarity’s sake, the claims that were indicated as allowable were/are claims 9-11 and 14-20 not claim 12.
Response to Arguments
Applicant's arguments filed 10/01/25 have been fully considered but they are not persuasive. Applicant’s arguments on pages 8-9 of their response argues that the preferred embodiment teaches that the spring-shaped thermal response drive element wire is used as a warp or a weft in a state including a core wire (base wire) to be removed later. As described in the specification, the SMA spring employed in the present invention functions as a flexible actuator and, in order to eliminate discomfort when worn, is formed in the shape of a fine-diameter spring. In order to weave such spring into the fabric using existing weaving techniques such as looms or weaving machines, it must be in the state of an "SMA spring wound around a core wire." The base wire serving as the core wire is removed during the course of several processes for weaving the fabric, and in the final completed fabric, the core wire (base wire) does not remain. For example, in the non-limiting embodiment of the present application, the removal is performed by acid treatment, and in another non-limiting embodiment of the present application, the core wire is also able to be removed through an intermediate heat treatment process. That is, in claim 1 of the present application, during the process of weaving as a warp or a weft, the core wire is included, but in the final completed fabric, the core wire is removed and that the cited art does not teach this feature.
Applicant’s claimed invention is to a final product rather than the intermediate process steps as discussed. The legal standard for product by process claims focuses on the end product’s patentability and not the method of manufacture.
There is nothing in the construction, composition or final structure of the final fabric made from the combination of Maeda, Hoon or Jeon, that leads a skilled artisan to understand that the final fabric is designed to be permanent and that the fiber is not removable. Maeda/Hoon teach a woven, a spring-shape thermal response drive element - which can be considered to be a core, a spring shaped memory alloy coil and it can be used as the warp. As such, it is not permanent and is capable of being removed to arrive at Applicant’s currently claimed invention. The rejections are maintained and made final as Applicant has unconvincing argued intermediate process steps in the final product.
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.
Claim(s) 1-3, 7, 8, 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPH 11-286849 A issued to Maeda et al. in view of KR20210000142 issued to Hoon et al.
Regarding claim 1, where Applicant seeks a fabric configured to be contracted or relaxed by external power supply, the fabric comprising: a thermal response drive element having a spring shape, and configured to function as one of a warp and a weft; and a wire configured to function as the remaining of the warp and the weft; Applicant is directed to the teachings of JP 11-286849 discloses a shape memory alloy fabric that can shrink or recover, comprising: a spring-shaped shape memory alloy coil used as a warp; and a fiber yarn used as a weft [¶ 0012, 0013 and 0017 and figures 1 and 2].
Claim 1 differs from JP 11-286849 A in that a fabric is contracted or relaxed by means of power supplied from the outside, but in view of KR20210000142 pertaining to a soft actuator comprising a thermo-responsive member, wherein the thermal responsive member comprising a shape memory alloy spring is contracted or relaxed by electricity supply [¶ 0041 and 0042], the difference could be readily derived by a person skilled in the art before the effective filing date of the invention and the effects thus achieved could also be predicted.
Maeda/Hoon teach a woven, a spring-shape thermal response drive element - which can be considered to be a core, a spring shaped memory alloy coil and it can be used as the warp. As such, it is not permanent and is capable of being removed to arrive at Applicant’s currently claimed invention.
Regarding claim 2, where Applicant seeks that the fabric of claim 1, wherein the thermal response drive element is a shape memory alloy (SMA) spring; Applicant is directed to JP 11-286849 A who discloses comprising a spring-shaped shape memory alloy coil [¶ 0012 and figures 1 and 2].
Regarding claim 3, where Applicant seeks that the fabric of claim 2, wherein the SMA spring has flexibility and is woven in close contact with each other within the fabric, and the wire is configured to fix the SMA spring; Applicant is directed to JP 11-286849 A wherein the shape memory alloy fabric is formed by arranging a plurality of the shape memory alloy coils as warps and weaving fiber yarns as wefts in a direction perpendicular to the warps [¶ 0012, 0013 and 0017 and figures 1 and 2].
Regarding Claim 7, where Applicant seeks a flexible actuator comprising:
a fabric comprising a thermal response drive element and a wire, wherein the thermal response drive element has a spring shape and is configured to function as one of a warp and a weft, and the wire is configured to function as the remaining of the warp and the weft; and a controller configured to control a power supply to the fabric, wherein the fabric is configured to contracted or relaxed by the power supply; Applicant is directed to KR20210000142 who discloses a soft actuator comprising: a main body which is made of a fabric material and in which a spring shaped thermo-responsive member is accommodated; and a control unit for controlling the supply of electricity to the main body, wherein the main body is contracted or relaxed by electricity supply [¶ 0040, 0046, 0049 and 0067].
Claim 7 differs from KR20210000142 in that a fabric comprises a wire which functions as the other of a warp and a weft, but in view of the features of JP 11-286849 A pertaining to a shape memory alloy fabric, of the shape memory alloy fabric that can shrink or recover and comprises a spring-shaped shape memory alloy coil used as a warp and a fiber yarn used as a weft [¶ 0012, 0013 and 0017 and figures 1 and 2], the difference could be readily derived by a person skilled in the art and the effects thus achieved could also be predicted.
Regarding Claim 8, where Applicant seeks that the flexible actuator of claim 7, wherein the fabric is contracted or relaxed along a direction in which the thermal response drive element having the spring shape extends; Applicant is directed to ¶ 0042 and figure 1 of KR20210000142, who teaches that a thermo-responsive member made of a shape memory alloy spring extends along one direction and is contracted or relaxed in the direction of extension.
Regarding Claim 12, where Applicant seeks that the flexible actuator of claim 7, further comprising: a conductive pad overlapping with an end of the fabric and electrically connected to the fabric; and a current receiver connected to the conductive pad and configured to provide the power supply to the conductive pad; Applicant is directed to ¶ 0045 of KR20210000142 who teaches that current flows in the order from one side to the other side or from the other side to one side, of the thermo-responsive member. The features of a conductive pad and a current receiving part could be readily derived by a person skilled in the art through design changes.
Regarding Claim 13, where Applicant seeks that the flexible actuator of claim 12, wherein the conductive pad is fixed to a supporting fabric, and the supporting fabric is contracted or relaxed according to the contraction or the relaxation of the fabric; Applicant is directed to ¶ 0049 of KR20210000142 wherein the thermo-responsive member is accommodated in a main body and the main body is made of a material capable of contracting or relaxing when the thermo-responsive member contracts or relaxes. Furthermore, a fabric for support could be readily derived by a skilled artisan.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPH 11-286849 A issued to Maeda et al. in view of KR 10-2010-0075341.
Regarding Claim 4, where Applicant seeks a manufacturing method for a fabric, comprising: continuously winding a wire corresponding to a thermal response drive element around a core wire to be removed later, in a form of a spring; heat-treating the wire in the form of the spring wound around the core wire and storing the wire in a spring-shaped form; weaving the fabric using a separately prepared non-conductive wire and the spring-shaped wire wound around the core wire; and removing the core wire from the woven fabric; Applicant is directed to JP 11-286849 A discloses a method for forming a shape memory alloy fabric, comprising performing tight winding and after tight winding, forming a spring-shaped shape memory alloy coil through heat treatment, and forming a shape memory alloy fabric by using the formed shape memory alloy coil and a separate fiber yarn [¶ 0011 and 0017].
Claim 4 differs from JP 11-286849 A in that claim 4 comprises the steps of winding a wire around a core wire and removing the core wire from a woven fabric but in view of the feature of KR 10-2010-0075341 pertaining to a micro-spring manufacturing method, comprising winding a coil yarn forming a coil on the outer circumferential surface of a core yarn and then removing the core yarn [¶ 0012 and 0016], the difference could be readily derived by a person skilled in the art and the effects thus achieved could also be predicted.
Additionally, Maeda/Jeon teach a woven, a spring-shape thermal response drive element - which can be considered to be a core, a spring shaped memory alloy coil and it can be used as the warp. As such, it is not permanent and is capable of being removed to arrive at Applicant’s currently claimed invention.
Regarding Claim 5, where Applicant seeks that the manufacturing method of claim 4, wherein in weaving the fabric, the spring-shaped wire wound around the core wire is used as one of a warp and a weft, and the non-conductive wire is used as the remaining of the warp and the weft. Claim 5 could be readily derived by a person skilled in the art from the feature of JP 11-286849 A of forming a shape memory alloy fabric by using a spring-shaped shape memory alloy coil as a warp and using a fiber yarn as a
weft [¶ 0012, 0013 and 0017 and figures 1 and 2] and in view of the features of KR 10-2010-0075341 of winding the coil yarn forming a coil on the outer circumferential surface of a core yarn in the form of a spring [¶ 0012 and 0016].
Regarding Claim 6, where Applicant seeks that the manufacturing method of claim 5, wherein in removing the core wire, the core wire is dissolved and removed by acid; Applicant is directed to ¶ 0020 of KR 10-2010-0075341 who teaches that the core yarn is removed by being decomposed by an oxidation reaction.
Allowable Subject Matter
Claims 9-11 and 14-20 are 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.
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.
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/Arti Singh-Pandey/
Primary Patent Examiner
Art Unit 1759
asp