DETAILED CORRESPONDENCE
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 .
Response to Amendment
The amendment filed 02/25/2026 has been entered. Claims 1-4 and 7-17 remain pending in the application.
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 1-4, 7-9 and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gandhi (US 20200247274 A1) in view of Payne (US 3527487 A).
Regarding claim 1, Gandhi discloses a system (see Fig. 8), comprising: an eyelet (eyelet in which 257 is provided) including a surface (surface of eyelet in which 257 is provided) and defining an aperture (aperture of eyelet in which 257 is provided); a shape memory material (SMM) member (280), and a fastener (257) received in the aperture such that a portion of the SMM member is secured between the surface of the eyelet and the fastener (see Fig. 8). Gandhi fails to disclose a housing. However, Payne teaches a housing (see Fig. 5; 15). It would have been obvious to one having ordinary skill in the art as of the effective filing date, as taught by Payne, in order to develop maximum tensile efficiency of wire strand having a turnback loop-end secured with a compression fitting, it is necessary to restrict slippage of the strand under the fittings and to eliminate distortion to the main body (or live end) of the strand. It is particularly important that distortion of the live end of the strand be substantially eliminated (see column 2 lines 38-44). As a result of the combination, the following limitations would necessarily result: an end portion of the SMM member (Payne; 11) extending through the housing (Payne; 15), on the surface of the eyelet (Gandhi; eyelet in which 257 is provided) in a loop (Payne; 13) about the aperture (Gandhi; aperture of eyelet in which 257 is provided), and back through the housing (Payne; Fig. 6), the housing being deformed around and crushed against the SMM member extending through the housing (Payne; column 4 lines 30-31, wherein a compressible ferrule 15 is disclosed); a crushed sleeve (Payne; 12) disposed entirely within the housing (Payne; Fig. 6), the end portion of the SMM member that extends back through the housing (Payne; 10) being the only portion of the SMM member received within the crushed sleeve (Payne; Fig. 4).
Regarding claim 2, the combination of claim 1 elsewhere above would necessarily result in the following limitations: the housing (Payne; 15) is adjacent to an outside surface of the eyelet (Gandhi; outside surface of eyelet in which 257 is provided).
Regarding claim 3, the combination of claim 1 elsewhere above would necessarily result in the following limitations: the housing (Payne; 15) is operatively connected to the eyelet (Gandhi; eyelet in which 257 is provided).
Regarding claim 4, Gandhi discloses the SMM member (280) is a shape memory alloy wire (see paragraph [0066], wherein 280 is disclosed as a shape memory material connecting member).
Regarding claim 7, Gandhi discloses an actuator (see Fig. 2A, 180), the SMM member (280) being a portion of the actuator (see Fig. 2A), whereby, when an activation input is provided to the SMM member, the SMM member contracts, thereby causing the actuator to morph into an activated configuration (see Abstract, wherein the actuator can be configured such that, in response to an activation input, the shape memory material connecting members contract, causing the first and second end members pivot, which causes the actuator to morph into an activated configuration).
Regarding claim 8, Gandhi discloses an electrical contact to transmit the activation input from a power source to the SMM member (see paragraph [0067], wherein the shape memory alloy wires can be heated by the Joule effect by passing electrical current through the wires; therefore an electrical contact and a power source are inherent in the disclosure of Gandhi). Gandhi fails to disclose the housing comprises the electrical contact. However, it has been held that a rearrangement of parts, which does not modify the operation of the device, is an obvious matter of design choice. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). In this instance, modifying Gandhi to have electrical contacts on the housing would still actuate the SMM member, and therefore not change the operation of the actuator. Additionally, given the limited number of predictable solutions, i.e., the eyelet, the fastener, the SMM member and the housing, it would have been obvious to one having ordinary skill in the art to try each of these locations for placement of the electrical contacts.
Regarding claim 9, Gandhi discloses the fastener (257) is operatively connected to an actuator body (250).
Regarding claim 11, the combination of claim 1 elsewhere above would necessarily result in the following limitations: the eyelet (Gandhi, eyelet in which 257 is provided) is external to the housing (Payne; 15).
Regarding claim 12, the combination of claim 1 elsewhere above would necessarily result in the following limitations: an opening of the housing (Payne; 15) is adjacent and tangential to an outside surface of the eyelet (Gandhi, outside surface of eyelet in which 257 is provided).
Regarding claim 13, Gandhi in view of Payne fail to disclose a portion of the interior surface of the housing is flush with the surface of the eyelet. However, it has been held that a rearrangement of parts, which does not modify the operation of the device, is an obvious matter of design choice. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). In this instance, the placement of the housing of Payne would not change the operation of the system of Gandhi. Additionally, it would have been obvious to one having ordinary skill in the art as of the effective filing date to modify the housing of Payne to be flush with the surface of the eyelet of Gandhi, to reduce any play in the SMM wire and reduce rotation of the wire loop around the fastener which could change the distance of actuation.
Regarding claim 14, the combination of claim 1 elsewhere above would necessarily result in the following limitations: the housing (Payne; 15) has an enclosed cross-sectional shape and an interior volume (Payne; Fig. 6).
Regarding claim 15, the combination of claim 1 elsewhere above would necessarily result in the following limitations: the housing (Payne; 15) compresses the SMM member (Gandhi, 280) extending through the housing (Payne; column 4 lines 30-31, wherein a compressible ferrule 15 is disclosed).
Claim 10 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gandhi (US 20200247274 A1) in view of Payne (US 3527487 A) and JZK.
Regarding claim 10, the combination of claim 1 elsewhere above would necessarily result in the following limitations: the end portion of the SMM member (Payne; 11) includes an end (Payne; end of 11). Gandhi in view of Payne fail to disclose the end is located outside of the housing. However, JZK teaches the end is located outside of the housing (see Figure, wherein both ends of the steel wire are outside of the crimp sleeve). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Gandhi in view of Payne with an end of the SMM member being located outside of the housing, as taught by JZK, to provide a larger surface area of the SMM member running through the housing, so a larger holding force is provided when crimping the housing.
Regarding claim 16, Gandhi in view of Payne fail to disclose outer edges of the housing have a larger cross-sectional shape than a middle portion of the housing. However, JZK teaches outer edges of the housing (JZK, outer edges of housing) have a larger cross-sectional shape than a middle portion of the housing (JZK, middle portion of housing). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Gandhi in view of Payne with outer edges of the housing having a larger cross-sectional shape than a middle portion of the housing, as taught by JZK, to crimp the housing in the middle of the housing where the cables and the sleeve are located, therefore resulting in higher holding force of the housing.
Claim 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gandhi (US 20200247274 A1) in view of Payne (US 3527487 A) and Wu.
Regarding claim 17, Ghandi fails to disclose the SMM member includes an insulating coating or an insulating sleeve. However, Wu teaches the SMM member includes an insulating coating or an insulating sleeve (see Abstract, polyurethane coating). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Gandi with an insulating coating or an insulating sleeve, as taught by Wu, to provide long term insulating coating to the wire to reduce the risk of short circuit; to enable the wire to work smoothly by relieving overshooting and vibration phenomena during execution; and to enable the wire to work in a wider current range than an uncoated wire (see Abstract).
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new grounds of rejections that were necessitated by an amendment.
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.
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/JOSEPH BROWN/Primary Examiner, Art Unit 3618