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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “22” has been used to designate both an end substrate at one end of the flexible panel 25 and the second engine (see Fig. 3). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the control end of the first flexible panel being connected only to the first end of the top plate, and the control end of the second flexible panel being connected only to the second end of the bottom plate must be shown or the feature(s) canceled from the claim(s), as the drawings in the instant application depict the control end of the first flexible panel being directly to at least the top plate and a first rivet, and indirectly connected to at least a second rivet and the bottom plate. Similarly, the drawings of the instant application depict the control end of the second flexible panel being directly connected to at least the bottom plate and a third rivet, and indirectly connected to a fourth rivet and the top plate. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “wherein said control end of said first flexible panel is connected only to said first end of said top plate and said control end of said second flexible panel is connected only to said second end of said bottom plate”, recited in claim 1 (lines 27-30), as the specification discloses the control end of the first flexible panel is connected to more than just the first end of the top plate and the control end of the second flexible panel is connected to more than just the second end of the bottom plate (see [0014]-[0015], [0017], and [0031] of US PGPub 2024/0254974 A1).
Claim Objections
Claims 1-4, 6-7, and 9 are objected to because of the following informalities:
Claim 1 (lines 6-7), and all further recitations relating to the at least one SMA wire of the first compression engine: “at least one shape memory alloy (SMA) wire extending between said opposite ends and connected to said panel at each of said opposite ends” should read “at least one shape memory alloy (SMA) wire of the first compression engine extending between and being connected to the opposite ends of the first elongated flexible panel” for clarity.
Claim 1 (lines 14-15), and all further recitations relating to the at least one SMA wire of the second compression engine: “at least one shape memory alloy (SMA) wire extending between said opposite ends and connected to said panel at each of said opposite ends” should read “at least one shape memory alloy (SMA) wire of the second compression engine extending between and being connected to the opposite ends of the second elongated flexible panel” for clarity.
Claim 1 (line 19) and all further recitations: “the second elongated panel” should read “the second elongated flexible panel” for consistency and clarity.
Claim 1 (line 20) and all further recitations: “the first elongated panel” should read “the first elongated flexible panel” for consistency and clarity.
Claim 1, line 26: “each plate” should read “the top plate and the bottom plate each” for consistency and clarity.
Claim 1, line 26: “a first and an opposite second end” should read “a first end and an opposite second end” for clarity.
Claim 1, lines 26-27: “the top and bottom plates are connected to each other at said first end and at said second end” should read “the top plate and the bottom plate are connected to each other at said first ends of the top plate and the bottom plate and at said opposite second ends of the top plate and the bottom plate” for consistency and clarity.
Claim 1 (line 28) and all further recitations: “first flexible panel” should read “first elongated flexible panel” for consistency and clarity.
Claim 1 (line 29) and all further recitations: “second flexible panel” should read “second elongated flexible panel” for consistency and clarity.
Claim 1 (line 29) and all further recitations: “said second end of said bottom plate” should read “said opposite second end of said bottom plate” for consistency and clarity.
Claim 2, line 2: “the body” should read “a body” to establish antecedent basis.
Claim 2, lines 2-3: “wherein the free end of each of the first and second compression engine is attached” should read “wherein the free end of the first compression engine and the free end of the second compression engine are attached” for clarity.
Claim 3, lines 1-2: “said top and bottom plates are connected at said first end and said second end” should read “said top plate and said bottom plate are connected at said first ends of the top plate and the bottom plate and said opposite second ends of the top plate and the bottom plate” for consistency and clarity.
Claim 3, line 2: “by fasteners extending between” should read “by fasteners extending between the top plate and the bottom plate” for clarity.
Claim 3 (line 3 and line 4) and all further recitations: “the top and bottom plates” should read “the top plate and the bottom plate” for consistency and clarity.
Claim 3 (lines 3-4) and all further recitations: “the first and second elongated panels” should read “the first elongated flexible panel and the second elongated flexible panel” for consistency and clarity.
Claim 4, line 1 and line 2: “two fasteners” should read “two of the fasteners” for clarity.
Claim 4, lines 1-2: “each of said first and second end of said top and bottom plates” should read “each of the first end of the top plate and the bottom plate and each of the opposite second ends of the top plate and the bottom plate” for consistency and clarity.
Claim 9, line 2: “the amount of overlap Do between the first and second compression engines” should read “an amount of overlap, Do, between the first compression engine and the second compression engine” to establish antecedent basis and for clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 9, lines 6-7 recites “Leq is the length of SMA wires in each of the first and second compression engines”. Applicant’s specification lacks sufficient support for Leq being defined as the length of the SMA wires in both the first compression engine and the second compression engine. The specification does disclose Leq is equivalent to the length of the first compression engine and the length of the second compression engine if they were aligned in series (see Applicant’s specification below [0022]; see [0023] and [0027] of Applicant’s specification). Additionally, Applicant’s specification does disclose “[t]he first engine 11 includes one or more SMA wires 14 fastened to end substrates 12, 13 at opposite ends of a flexible panel 15” and “the second engine 21 includes one or more SMA wires 24 fastened to end substrates 22, 23 at opposite ends of a flexible panel 25” (see [0013] of Applicant’s specification), but fails to disclose or suggest the length of the one or more SMA wires of the first engine are equivalent to the length of the first engine and the length of the one or more SMA wires of the second engine are equivalent to the length of the second engine. As such, there is no indication in the specification that the inventor(s) had possession of the claimed invention at the time of filing.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “a first elongated flexible panel having opposite ends with a substrate affixed to said panel at each of said opposite ends, wherein one of said opposite ends is a free end and the other of said opposite ends is a control end” in lines 3-5. It is unclear if the recited substrate is a singular substrate attached to both ends of the first elongated flexible panel, or if each end of the first elongated flexible panel is connected to a substrate. For the purpose of examination, the above limitation will be interpreted as – a first elongated flexible panel having opposite ends including a free end and a control end, wherein a first substrate is affixed to the first elongated flexible panel at the free end of said panel or the control end of said panel, and a second substrate is affixed to the first elongated flexible panel at the other of the free end of said panel or the control end of said panel – based on paragraph [0013] of Applicant’s specification.
Claim 1 recites the limitation “a panel at one of said opposite ends includes control circuitry” in line 8. It is unclear if “a panel” is in reference to the first elongated flexible panel recited in line 3 of claim 1, should read as one of the end substrates affixed to the first elongated flexible panel (see [0013] of Applicant’s specification), or if Applicant is attempting to disclose a new limitation. For the purpose of examination, the above limitation recited in line 8 of claim 1 will be interpreted as – the first substrate or the second substrate affixed to the free end of the first elongated flexible panel or the control end of the first elongated flexible panel includes control circuitry – based on paragraph [0013] of Applicant’s specification.
Claim 1 recites the limitation “a second elongated flexible panel having opposite ends with a substrate affixed to said panel at each of said opposite ends, wherein one of said opposite ends is a free end and the other of said opposite ends is a control end” in lines 11-13. It is unclear if the recited substrate is a singular substrate attached to both ends of the second elongated flexible panel, or if each end of the second elongated flexible panel is connected to a substrate. For the purpose of examination, the above limitation recited in lines 11-13 of claim 1 will be interpreted as – a second elongated flexible panel having opposite ends including a free end and a control end, wherein a third substrate is affixed to the second elongated flexible panel at the free end of said panel or the control end of said panel, and a fourth substrate is affixed to the second elongated flexible panel at the other of the free end of said panel or the control end of said panel – based on [0013] of Applicant’s specification.
Claim 1 recites the limitation “a panel at one of said opposite ends includes control circuitry configured to interface with an electrical power supply to activate the at least one SMA wire” in lines 16-17. It is unclear if “a panel” is in reference to the first elongated flexible panel recited in line 3 of claim 1, the second elongated flexible panel recited in line 11 of claim 1, should read as one of the end substrates affixed to the second elongated flexible panel (see [0013] of Applicant’s specification), or if Applicant is attempting to disclose a new limitation. Furthermore, it is unclear if the control circuitry and the electrical power supply are recitations of the control circuitry and electrical power supply disclosed in lines 8-9 of claim 1, or if Applicant is attempting to disclose new limitations. For the purpose of examination, the above limitation recited in lines 16-17 will be interpreted as – the third substrate or the fourth substrate affixed to the free end of the second elongated flexible panel or the control end of the second elongated flexible panel includes the control circuitry to interface with the electrical power supply to activate the at least one SMA wire of the second compression engine – based on paragraph [0013] of Applicant’s specification.
Claim 1 recites the limitation “said compression engine” in lines 22 and 25. There is insufficient antecedent basis for this limitation in the claim. It is unclear if Applicant is referencing the first compression engine, the second compression engine, both the first compression engine and the second compression engine, the compression apparatus, or if Applicant is attempting to recite a new limitation. For the purpose of examination, “said compression engine”, as recited in line 22 of claim 1, will be interpreted as – the compression apparatus – based on paragraph [0015] of Applicant’s specification. As such, “said compression engine” will be interpreted as a recitation of – the compression apparatus.
Claim 1 recites the limitation "the SMA wires of the two compression engines" in lines 22-23 and 23-24. There is insufficient antecedent basis for this limitation in the claim. It is unclear if Applicant is referencing the at least one SMA wire of the first compression engine in combination with the at least one SMA wire of the second compression engine, or if Applicant is attempting to disclose a new limitation. For the purpose of examination, the above limitation will be interpreted as – the at least one SMA wire of the first compression engine and the at least one SMA wire of the second compression engine – based on paragraphs [0021]-[0022] of Applicant’s specification, and in light of the above claim 1 rejections under 112(b).
Claim 1 recites the limitation “wherein said control end of said first flexible panel is connected only to said first end of said top plate and said control end of said second flexible panel is connected only to said second end of said bottom plate” in lines 27-30. Applicant’s specification states “[o]ne end of each of the SMA wires 14, 24 is connected to a corresponding one of the substrates 12, 22” (first sentence of [0014] of US PGPub 2024/0254974 A1), “the end substrates 12, 22 can be designated as the control substrate 12, 22 for the associated engine 11, 21” (first sentence of [0015], see US PGPub 2024/0254974 A1), “the control substrate 12 is fastened to one end of the top plate 31 by a rivet 35 or other suitable fastener … similar construction is applied at the opposite end 32b of the bottom plate 32, with rivets 36 fastening the second engine 22 to the bottom plate 32” ([0017], see US PGPub 2024/0254974 A1), and “ lengths of the posts for the rivets 35, 36 are sized to fasten the control substrates 12, 22 to the respective top and bottom plate, while the lengths of the posts for the rivets 38, 39 are sized to sandwich the two engines 11, 12 between the plates 31, 32” ([0031], see US PGPub 2024/0254974 A1). Additionally, Applicant’s drawings, specifically Figures 1-4A, depict the control end of the first flexible panel being directly to at least the top plate and a first rivet, and indirectly connected to at least a second rivet and the bottom plate; hence, the control end of the first flexible panel is connected to more than just the first end of the top plate. Similarly, Figures 1-3 and Figure 4B of the instant application depicts the control end of the second flexible panel being directly connected to at least the bottom plate and a third rivet, and indirectly connected to a fourth rivet and the top plate. Hence, it is unclear how the control end of the first flexible panel connects to only the first end of the top plate, and how the control end of the second flexible panel connects to only the second end of the bottom plate due to the inconsistencies between Applicant’s specification and the above limitations recited in claim 1 (lines 27-30). For the purpose of examination, the above limitation of claim 1 will be interpreted as – wherein said control end of said first elongated flexible panel is connected to said first end of said top plate and said control end of said second elongated flexible panel is connected to said second end of said bottom plate – based on Figures 1-4B of the instant application and paragraphs [0014]-[0015], [0017], and [0031] of Applicant’s specification.
Claim 2 recites the limitation “a flexible panel” in line 1. It is unclear if the flexible panel is in reference to the first elongated flexible panel recited in claim 1 (line 3), the second elongated flexible panel recited in claim 1 (line 11), both the first elongated flexible panel and the second elongated flexible panel, or if Applicant is attempting to disclose a new limitation. For the purpose of examination, the flexible panel recited in line 1 of claim 2 will be interpreted as – a third flexible panel – based on paragraphs [0014]-[0015] of Applicant’s specification. Hence, “said flexible panel” recited in line 3 of claim 2 will be interpreted as – said third flexible panel.
Claim 6 recites the limitation "each of said rivets" in line 2. There is insufficient antecedent basis for this limitation in the claim as claim 6 further recites “[t]he compression apparatus of claim 4” in line 1. As such, it is unclear if claim 6 is meant to depend from claim 5, where claim 5 establishes antecedent basis for the rivets (see claim 5, line 1), or if Applicant is attempting to disclose a new limitation. For the purpose of examination, claim 6 will be interpreted as depending from claim 5, and not depending from claim 4, such that antecedent basis is established for the rivets recited in line 2 of claim 6.
Claim 7 recites the limitation “said control end of said first flexible panel is connected to said first end of said top plate by at least one first fastener engaged between the substrate and the top plate” in lines 2-3. It is unclear if the substrate is the first substrate affixed to the free end of the first elongated panel, the second substrate affixed to the control end of the first elongated flexible panel, the third substrate affixed to the free end of the second elongated flexible control panel, the fourth substrate affixed to the control end of the second elongated flexible control panel, or if Applicant is attempting to disclose a new limitation. For the purpose of examination, “the substrate” recited in line 3 of claim 7 will be interpreted as – the second substrate affixed to the control end of the first elongated flexible panel – based on paragraph [0017] of Applicant’s specification and Figures 3-4A of Applicant’s drawings, and in light of the rejections of claim 1 under 112b (see above).
Claim 7 recites the limitation “said control end of said second flexible panel is connected to said second end of said bottom plate by at least one second fastener engaged between the substrate” in lines 4-5. It is unclear if the substrate is the first substrate affixed to the free end of the first elongated panel, the second substrate affixed to the control end of the first elongated flexible panel, the third substrate affixed to the free end of the second elongated flexible control panel, the fourth substrate affixed to the control end of the second elongated flexible control panel, or if Applicant is attempting to disclose a new limitation. For the purpose of examination, “the substrate” recited in line 5 of claim 7 will be interpreted as – the fourth substrate affixed to the control end of the second elongated flexible control panel – based on paragraphs [0017]-[0018] of Applicant’s specification and Figures 3 and 4B of Applicant’s drawings, and in light of the rejections of claim 1 under 112b (see above).
Claim 9 recites the limitation “an SMA wire having a strain capability of e” in line 4. It is unclear if the SMA wire recited is in reference to the at least one SMA wire of the first compression engine, the at least one SMA wire of the second compression engine, or if Applicant is attempting to disclose a new limitation. For the purpose of examination, the above limitation will be interpreted as – each of the at least one SMA wire of the first compression engine and the at least one SMA wire of the second compression engine have a strain capability of e – based on paragraphs [0023] and [0027] of Applicant’s specification.
Claim 9 recites the limitation “Leq is the length of SMA wires in each of the first and second compression engines” in lines 6-7. There is insufficient antecedent basis for “the length of the SMA wires” recited in this limitation. Further it is unclear if the SMA wires recited are the at least one SMA wire of the first compression engine and the at least one SMA wire of the second compression engine, or if Applicant is attempting to disclose a new limitation. For the purpose of examination, the above limitation of claim 9 will be interpreted as – Leq is a summation of a first length of the first compression engine and a second length of the second compression engine – based on paragraphs [0022]-[0023] and [0027] of Applicant’s specification.
Claims 3-5 and 8 are rejected due to their dependency on a rejected claim.
Allowable Subject Matter
Claims 1-8 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Claim 9 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. (pre-AIA ), 1st paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, Wyatt et al. (US 20210121356 A1; hereinafter “Wyatt”), the closest prior art of record, discloses a compression apparatus (600; Figs. 27-29) comprising:
a first compression engines (see Annotated Fig. 26 below) including;
a first elongated flexible panel (top 610, see Annotated Fig. 26 below) having opposite ends with a substrate affixed to said panel at each of said opposite ends (see Annotated Fig. 26 below), wherein one of said opposite ends is a free end and the other of said opposite ends is a control end (see Annotated Fig. 26 below);
at least one shape memory alloy (SMA) wire extending between said opposite ends and connected to said panel at each of said opposite ends (ribs 630 include SMA wires, see first sentence of [0113]; Fig. 29);
wherein a panel at one of said opposite ends includes control circuitry configured to interface with an electrical power supply to activate the at least one SMA wire (625; Figs. 26 and 29; [0113]);
a second compression engine (see Annotated Fig. 26 below) including;
a second elongated flexible panel (bottom 610, see Annotated Fig. 26 below) having opposite ends with a substrate affixed to said panel at each of said opposite ends, wherein one of said opposite ends is a free end and the other of said opposite ends is a control end (see Annotated Fig. 26 below);
at least one shape memory alloy (SMA) wire extending between said opposite ends and connected to said panel at each of said opposite ends (ribs 630 include SMA wires, see first sentence of [0113]; Fig. 29);
wherein a panel at one of said opposite ends includes control circuitry configured to interface with an electrical power supply to activate the at least one SMA wire (625; Figs. 26 and 29; [0113]);
wherein said first and second compression engines overlap each other, with the control end of said first compression engine overlapping the second elongated panel and the control end of said second compression engine overlapping the first elongated panel (see Fig. 26), and with the free end of said first elongated panel and said free end of said second elongated panel forming opposite ends of said compression engine (see Fig. 26) having an initial length therebetween when the SMA wires of the two compression engines are not actuated and a shorter length therebetween when the SMA wires of the two compression engines are actuated (SMA wires experience a reduction in length when actuated, see [0136], hence the length between the two free ends of the compression device is reduced when the SMA wires are actuated, as such, the length between the free ends of the compression device when the SMA wires are not actuated is inherently longer compared to when the SMA wires are actuated).
Wyatt further discloses a base panel (602; Fig. 26) with an engagement surface (603; Fig. 26) to connect the pair of elongated panels (610) to the base panel (see Fig. 26; [0112]), but fails to disclose, teach, or render obvious a top plate and a bottom plate each having a length less than said initial length of said compression engine, each plate having a first and an opposite second end in which the top and bottom plates are connected to each other at said first end and at said second end, wherein said control end of said first flexible panel is connected only to said first end of said top plate and said control end of said second flexible panel is connected only to said second end of said bottom plate, in addition to other limitations.
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Annotated Fig. 26
Claims 2-9 depend from claim 1, and thus are found to contain allowable subject matter by virtue of their dependency.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Holschuh et al. (US 20180242655 A1): Regarding a compressive garment with a shape-memory actuator for metal alloy adjustable fasteners.
Kaneko et al. (US 10815976 B2): Regarding an actuator device attached to a thigh of a subject, where a plurality of actuators shrink and tighten toward the thigh after electric power is supplied to the plurality of actuators by a controller, where the plurality of actuators are connected to a first fixture at one side and a second fixture at an opposite side.
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/ABIGAYLE DALE/Examiner, Art Unit 3785
/BRANDY S LEE/Supervisory Patent Examiner, Art Unit 3785