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 I claims 1-7 in the reply filed on 06/09/2026 is acknowledged.
Claims 8-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected claims, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/09/2026.
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) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 2023/0115347) in view of Zarembo et al. (US 5477202).
Regarding claims 1-4, Lu discloses a method of in situ 4D printing of high-temperature materials including 3D printing a structure of an ink including a precursor. The structure is treated with controlled high energy flow to create a portion which has a different coefficient of thermal expansion/thermal shrinkage ratio. The structure is heated and the difference in the coefficient of thermal expansion creates an interface stress to cause a selected level of deformation (abstract). The ink includes polymers, or mixtures of polymers and particles (claim 2). The precursor is selected from a poly(dimethylsiloxane), polysiloxane, a polyborosiloxane, a polycarbosiloxane, a polysilazane or a poly(organosilylcarbodiimide), cellulose, hydrogels, or combinations thereof (claim 5), where polyborosiloxane corresponds to elastomer filaments and cellulose hydrogel corresponds to hydrogen film.
However, Lu fails to disclose that the magnetic particles embedded with elastomer filaments (polyborosiloxane).
Whereas, Zarembo discloses deactivating device for magnetic markers in an electronic article surveillance system, comprising: first and second magnet which comprises neodymium-iron-boron (claims 1 and 6).
It would have been obvious to one of ordinary skill in the art to include neodymium-iron-boron of Zarembo with the polyborosiloxane of Lu motivated by the desire to have exceptional magnetic properties, including high magnetic strength.
While there is no disclosure that the 4D printed material is a humidity and magnetic dual responsive actuator capable of responding to both humidity and magnetic fields, resulting in a reversible deformation that transforms in to helix structure as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. 4D printed material is a humidity and magnetic dual responsive actuator capable of responding to both humidity and magnetic fields, resulting in a reversible deformation that transforms in to helix structure, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Lu and further that the prior art structure which is a 4D printed material identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
With respect to the particle size of NdFeB, Change in size and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). MPEP 2144.04[R-1].
Regarding claim 5, As Lu in view of Zarembo discloses 4D printed material comprising a hydrogel film and magnetic elastomer filaments with magnetic particles as presently claimed as stated above, it therefore would be obvious that when subjected to external magnetic field control, the dual responsive actuator would intrinsically demonstrates versatile functionality by seamlessly transitioning between two motion modes comprising rolling and wriggling.
Regarding claim 6, As Lu in view of Zarembo discloses 4D printed material comprising a hydrogel film and magnetic elastomer filaments with magnetic particles as presently claimed as stated above, it therefore would be obvious that swelling ratio between hydrogel film and magnetic elastomer filaments would intrinsically be in claimed range.
Regarding claim 7, However, the recitation in the claims that the 4D printed material is “for remote operation in a challenging environment….viscous stomach surfaces” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Lu in view of Zarembo disclose 4D printed material as presently claimed, it is clear that the 4D printed material of Lu in view of Zarembo would be capable of performing the intended use, i.e. for remote operation in a challenging environment….viscous stomach surfaces, presently claimed as required in the above cited portion of the MPEP.
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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