DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4, 6 and 10-13 in the reply filed on 10/14/2025 is acknowledged. Accordingly, the election/restriction requirement has been made FINAL.
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, 3-4, 6 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over IINO et al. (US Pub. No. 2020/0252009).
Regarding claims 1, 4, 6 and 10-12, IINO teaches an SMA actuator assembly comprising:
a support structure (30);
a movable part (40) that is movable relative to the support structure; and
an SMA wire (61) connected at its ends to the movable part and/or the support structure and arranged to move the movable part relative to the support structure,
wherein the SMA wire is arranged to be in contact between its ends with one or more contact portions of the movable part and/or support structure;
wherein each contact portion comprises a plurality of contact sections that are in direct contact with the SMVA wire; wherein the plurality of contact sections are separated by one or more gaps between the contact sections (Fig. 5, a contact portion for the mover 40 is made of a plurality of protrusions 42 and a contact portion for the stator 30 is made of a plurality of protrusions 32);
wherein the contact sections are substantially evenly spaced apart along a major portion of the SMA wire (Fig. 5) [claim 4];
the SMA wire is connected between the movable part and the support structure by connection element (61); and
the SMA wire is substantially straight between the connection elements (para. 96) [claim 6]; and
wherein the contact sections extend in a plane (Fig. 5) [claim 10];
wherein the SMA wire is arranged to bend around the one or more contact portion (Fig. 5) [claim 11];
the movable part and the support structure are movable relative to each other along a movement axis; and
wherein the one or more contact portions of the movable part and/or support structure guide the SMA wire along a tortuous path with a curved section of the SMA wire extending around the or each of the one or more contact portions and intermediate sections of the SMA wire extending between the movable part and the support structure such that the movable part and the support structure are driven in opposite directions along the movement axis on contraction of the SMA wire (Fig. 7) [claim 12].
INNO does not teach the ratio of the width of the one or more gaps to the diameter of the SMA is less than 40, however it would have been obvious to one having an ordinary skill in the art to modify the ratio of the width of the one or more gap to the diameter of the SMA wire less than 40 as claimed since the court has held that, where the only difference between the prior art and the claim was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 3, INNO teaches all the claimed limitations except for the ratio of the width of the contact sections to the diameter of the SMA is less than 40, however it would have been obvious to one having an ordinary skill in the art to modify the ratio of the width of the contact sections to the diameter of the SMA wire less than 40 as claimed since the court has held that, where the only difference between the prior art and the claim was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 13, IINO teaches the invention as claimed in claim 12 above. IINO further teaches each of the movable part and the support structure comprises at least one contact portion which contacts the SMA wire on opposite sides thereof, and the contact portion of the movable part and the support structure alternating in a direction normal to the movement axis (Fig. 7). IINO does not specifically teach each of the movable part and the support structure has a plurality contact portions, however it would have been obvious to one having an ordinary skill in the art to modify each of the movable part and the support structure to include multiple contact portions as claimed, since the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Allowable Subject Matter
Claim 8 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:
Regarding claim 8, applicant has sufficiently defined and claimed the SMA actuator assembly, whereby the prior art does not teach or suggest the SMA wire is arranged, on contraction, to pivot within a movement plane about at least one of the connection elements upon movement of the movable part relative to the support structure, in combination with all other limitations set forth in the claim.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive. Applicant alleges that modifying the gap in IINO to less than 40 times the diameter of the SMA wire would significantly affect the performance of the device resulting in a less effective haptic actuator and frustrating its intended purpose (Remarks’ pages 10-11), however said allegation was found unpersuasive. The Examiner notes that IINO’s SMA actuator structure, as disclosed, is similar to the SMA’s structure (disclosed in figure 5) of the current application, therefore modifying IINO’s gap to less than 40x the diameter of the SMA wire would not fundamental alter IINO’s SMA actuator operation nor would significantly affect its performance as alleged by the applicant. Furthermore, the applicant does not provide any objective evidence, either explicitly or implicitly, e.g. from the application written specification and/or IINO’s written specification to support his conclusion, and applicant is respectfully reminded that arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MINH Q PHAN whose telephone number is (571)270-3898. The examiner can normally be reached Mon-Fri 9am-5pm.
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, Stephanie Bloss can be reached at 571-272-3555. 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.
MINH Q. PHAN
Primary Examiner
Art Unit 2852
/MINH Q PHAN/ Primary Examiner, Art Unit 2852
Prosecution Insights