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 .
DETAILED ACTION
This Office action is in response to the communication filed on 03/25/2026. Currently claims 1-12, and 21-28 are pending in the application; with claims 9-12 withdrawn from consideration.
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 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 the appropriate paragraphs of 35 U.S.C. 103 that form the basis for the rejections under this section made 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 8, 21-24, and 26-28 are rejected under 35 U.S.C.103 as being obvious over Meier et al. (Meier, Tobias et al., "Programmable and self-demolding micro-structured molds fabricated from shape-memory polymers", Journal of Micro mechanics and Microengineering, 19 May 2015, Vol. 25, Pages 1-8), hereafter, referred to as “Meier”.
Regarding claim 1, Meier teaches a mold comprising: a tube structure (equivalent to a three-dimensional structure) comprising a shape memory polymer with shape changing capability, wherein the tube structure has a cavity that is defined by embossed features of the mold and is filled with epoxy for being casted, is characterized as exhibiting a restorable shape transition in response to thermal stimulus (heating or cooling) to a shape transition temperature, and releases an epoxy rod in response to heating (abstract; page 1, right column-page 2, left column; page 3, left column; page 4; right column; page 6, right column, page 7, left column; and Fig. 4). It would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, that cooling (reverse of heating) is a stimulus resulting in a decrease in temperature, therefore, reduction and/or removal of cooling stimulus would result in an increase of temperature; thereby resulting in release of castable material, as the temperature is increased to Ttrans, and the mold insert restores its flat shape.
Regarding claim 3, Meier teaches a mold, wherein the shape changing material is a shape memory polymer material (abstract; page 1, right column-page 2, left column).
Regarding claim 8, Meier teaches in Fig. 4, a mold, wherein a surface of the cavity has a predefined pattern of features.
Regarding claim 21, Meier teaches in Fig. 4, a mold, wherein dimensions of the three-dimensional structure in the absence of the stimulus are different than dimensions of the three-dimensional structure in the presence of the stimulus.
Regarding claim 22, Meier teaches in Fig. 4, a mold, wherein the dimensions of the three-dimensional structure is selected from the group consisting of: width, height, length, diameter, and a combination thereof.
Regarding claim 23, Meier teaches in Fig. 4, a mold, wherein the stimulus is selected from the group consisting of: light and heat; by teaching to use heat (or reduction in cool)
Regarding claim 24, Meier teaches in Fig. 4, a mold, wherein the stimulus is selected from the group consisting of: solvent, magnetic field, electrical conductivity, resistive heating, voltage change, vacuum, and pressure; by teaching to use heating (or reduction in cooling), and it would have been obvious to any ordinary artisan, to use resistive heating as a means of heating (or reduction in cooling).
Regarding claim 26, Meier teaches a mold comprising: a tube structure (equivalent to a three-dimensional structure) comprising a shape memory polymer with reversible shape changing capability, wherein the three-dimensional structure has a predefined cavity configured to function as a mold for a castable material, wherein the three-dimensional structure has at least one dimension, the at least one dimension having a first length, by teaching a cavity that is defined by embossed features of the mold and is filled with epoxy for being casted, is characterized as exhibiting a restorable shape transition in response to thermal stimulus (heating or cooling) to a shape transition temperature, and releases an epoxy rod in response to heating (abstract; page 1, right column-page 2, left column; page 3, left column; page 4; right column; page 6, right column, page 7, left column; and Fig. 4). It would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, that cooling (reverse of heating) is a stimulus resulting in a decrease in temperature, therefore, reduction and/or removal of cooling stimulus would result in an increase of temperature; thereby resulting in release of castable material, as the temperature is increased to Ttrans, and the mold insert restores its flat shape. Meier also teaches that the shape change is characterized as a change in the first length of the at least one dimension to a second length of the at least one dimension that is different than the first length; by teaching that the overall width (lateral dimension) of the mold insert changes.
Regarding claim 27, Meier teaches in Fig. 4, a mold, wherein the three-dimensional structure is configured to release the castable material in response to the stimulus.
Regarding claim 28, Meier teaches in Fig. 4, a mold, wherein the three-dimensional structure is configured to release the castable material in response to reduction and/or removal of the stimulus (removal of cooling)
Claims 2 are rejected under 35 U.S.C.103 as being obvious over Meier et al. (Meier, Tobias et al., "Programmable and self-demolding micro-structured molds fabricated from shape-memory polymers", Journal of Micro mechanics and Microengineering, 19 May 2015, Vol. 25, Pages 1-8), in view of Pei et al. (Pei, Zhiqiang et al.: "Mouldable liquid-crystalline elastomer actuators with exchangeable covalent bonds", Nature materials, 01 December 2013 (online published date), Vol. 13, Pages 36-41), hereafter, referred to as “Pei”.
Regarding claim 2, Meier teaches a mold comprising: a three-dimensional tube structure comprising a shape memory polymer with shape changing capability (abstract; page 1, right column-page 2, left column). But Meier fails to explicitly teach that the shape changing material is a liquid crystal elastomer mesogen material. However, Pei teaches the use of Liquid Crystal Elastomers (LCE) for converting external stimuli into mechanical actuation by converting the LCEs to exchangeable links (xLCEs). Pei teaches in Fig. 1b, the synthesis of the xLCE network through the reaction between an epoxy-terminated biphenyl mesogen and the spacer, in 1:1 molar ratio. Pei also teaches that the xLCEs have excellent and diverse shape-memory effect and capable of reversible shape change (page 38, left column). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Pei, and substitute the shape memory polymers, with that of xLCEs (equivalent to liquid crystal elastomer mesogen material), because it would provide excellent and diverse shape-memory effect and capable of reversible shape change (KSR Rationale B, MPEP 2143), and obtain predictable results.
Claims 4, and 25 are rejected under 35 U.S.C.103 as being obvious over Meier et al. (Meier, Tobias et al., "Programmable and self-demolding micro-structured molds fabricated from shape-memory polymers", Journal of Micro mechanics and Microengineering, 19 May 2015, Vol. 25, Pages 1-8), in view of Wynne et al. (US Patent Application Publication Number 2023/0080581 A1), hereafter, referred to as “Wynne”.
Regarding claim 4, Meier teaches a mold comprising: a three-dimensional tube structure comprising a shape memory polymer with shape changing capability (abstract; page 1, right column-page 2, left column). But Meier fails to explicitly teach that the shape changing material is a hydrogel. However, Wynne teaches that parts are additively manufactured with a structure that changes over time when exposed to an activation stimulus. The stimulus may be, for example. heat, cooling, light, or electricity. Wynne also teaches that a lattice structure has active members that can self-transform when exposed to a stimulus, causing the part to change shape. Wynne further teaches using shape memory alloys and polymers or other "smart" materials (e.g., composites, hydrogels) in which the materials self-transform in response to a stimulus (para. [0004]). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Wynne, and substitute the shape memory polymers, with hydrogels, because it would allow "smart" materials (hydrogels) in which the materials self-transform in response to a stimulus (KSR Rationale B, MPEP 2143), and obtain predictable results.
Regarding claim 25, Meier teaches a mold comprising: a three-dimensional tube structure comprising a shape memory polymer with shape changing capability (abstract; page 1, right column-page 2, left column). But Meier fails to explicitly teach that the three-dimensional structure has a complex geometry formed using additive manufacturing techniques. However, Wynne teaches that parts are additively manufactured with a structure that changes over time when exposed to an activation stimulus. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Wynne, and form the three-dimensional structure having a complex geometry formed using additive manufacturing techniques, because it would allow to form complex geometry without making an expensive mold, in a cost effective and faster way using a known technique (KSR Rationale C, MPEP 2143), and obtain predictable results.
Claim 5 are rejected under 35 U.S.C.103 as being obvious over Meier et al. (Meier, Tobias et al., "Programmable and self-demolding micro-structured molds fabricated from shape-memory polymers", Journal of Micro mechanics and Microengineering, 19 May 2015, Vol. 25, Pages 1-8), in view of Kindt-Larsen et al. (US Patent Number 5,849,209), hereafter, referred to as “Kindt-Larsen”.
Regarding claim 5, Meier teaches a mold comprising: a three-dimensional tube structure comprising a shape memory polymer with shape changing capability (abstract; page 1, right column-page 2, left column). But Meier fails to explicitly teach the shape changing mold material includes an additive configured to inhibit adherence of the castable material to a surface of the cavity. However, Kindt-Larsen teaches a novel polymeric formulation for a mold material containing an internal mold release additive which assists in the release of the molded component from an internal mold wetting agent which enhances the interfacial wetting between the reactive monomer mix and the mold surfaces, thereby reducing the number of defects formed on the molded product article (column 1, lines 9-18). Kindt-Larsen also teaches that the mold comprises a molding resinous thermoplastic polymer admixed with a mold release agent such as waxes, soaps and oils in mold releasing effective amounts (column 4, lines 7-10). Kindt-Larsen further teaches that the additives used are materials that are known or commercially available. They are also known release agents. Preferred additives are silicones, amide waxes, fatty acids, polyethylene and propylene waxes, mineral wax, oxidized waxes and the like (column 9, lines 41-45). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Kindt-Larsen, and combine the use of additive such as release agents in the shape memory polymers, because it would allow the shape changing mold material to inhibit adherence of the castable material to a surface of the cavity (KSR Rationale A, MPEP 2143).
Claims 6-7 are rejected under 35 U.S.C.103 as being obvious over Meier et al. (Meier, Tobias et al., "Programmable and self-demolding micro-structured molds fabricated from shape-memory polymers", Journal of Micro mechanics and Microengineering, 19 May 2015, Vol. 25, Pages 1-8), in view of Majidi et al. (US Patent Application Publication Number 2022/0098461 A1), hereafter, referred to as “Majidi”.
Regarding claims 6-7, and 24, Meier teaches a mold comprising: a three-dimensional tube structure comprising a shape memory polymer with shape changing capability (abstract; page 1, right column-page 2, left column). But Meier fails to explicitly teach the changing material includes an additive configured to cause a shape change of the three-dimensional structure in response to the stimulus, configured to cause a shape change of the three-dimensional structure in response to the stimulus, the additive being a magnetic filing, a piezoelectric ceramic material, or a metal. However, Majidi teaches a polymer composite having shape-morphing capabilities where the composite comprises a liquid crystal elastomer and liquid metal inclusions to improve thermal and/or electrical conductivity. The liquid metal inclusions are metals such as Gallium, alloys of Gallium, eutectic alloys, and other metals that have low melting points. The composite is soft and stretchable, while still retaining the shape-morphing characteristics of the liquid crystal elastomer (abstract). Majidi also teaches that the liquid metal inclusions do not interfere with the ability of the LCE to change shape and perform mechanical work in response to external stimuli (para. [0006]). Majidi further teaches that the resulting composite is capable of Joule heated actuation with sufficient thermal conductivity to function in digital circuitry. Shape-morphing in the absence of an external load can be programmed into the LCE-LM composite through photoinitiated crosslinking to enable it to reversibly transition between pre-programmed morphologies through electrical or thermal stimulation (para. [0007]). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Majidi, and combine the use of additive such as liquid metal in the shape memory polymers, because it would allow the polymer to change shape and perform mechanical work in response to external stimuli with joule heated actuation, in addition to improving thermal and/or electrical conductivity required for the mold (KSR Rationale A, MPEP 2143).
Regarding claim 24, Majidi teaches that the stimulus is selected from the group consisting of: solvent, magnetic field, electrical conductivity, resistive heating, voltage change, vacuum, and pressure; by teaching to use additive such as a magnetic filing, a piezoelectric ceramic material, or a metal, as the use of the liquid metal inclusions, that do not interfere with the ability of the LCE to change shape and perform mechanical work in response to external stimuli such as magnetic field (para. [0006]).
Responses to Arguments
Applicant’s argument filed on 3/25/2026 for the 102/103 rejections has been fully considered. Applicant’s argument with respect to claim 1, for 102 rejection have been fully considered, and is persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made under 103 obviousness rejection. The applicant amended the claim by incorporating the limitation that the three-dimensional structure is configured to release the castable material in response to reduction and/or removal of the stimulus. However, as explained in the rejection section of this Office action, the examiner takes the position that it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, that cooling (reverse of heating) is a stimulus resulting in a decrease in temperature, therefore, reduction and/or removal of cooling stimulus would result in an increase of temperature; thereby resulting in release of castable material, as the temperature is increased to Ttrans, and the mold insert restores its flat shape. Therefore, the examiner maintains that based on the teaching of Meier, the rejection set forth in this office action address the scope of the claim, and is relevant.
Because the rejections are being maintained on the amended independent claim, and since there is no substantive arguments on the rejections against the references applied against rest of the dependent claims, these rejections are being maintained.
Conclusion
Applicant’s amendment necessitated the rejection presented in this Office action. Accordingly, 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD M AMEEN whose telephone number is (469) 295 9214. The examiner can normally be reached on M-F from 9.00 am to 6.00 pm (Central Time).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached on (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMAD M AMEEN/Primary Examiner, Art Unit 1742
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