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 with traverse of Invention I in the reply filed on 07/17/26 is acknowledged. The traversal is on the ground(s) that:
“Applicant respectfully submits that no undue burden exists as between inventions I, II, and II. Claim sets I, II, and III are clearly related. Applicant reproduces sections of the MPEP related to classification and searching below:
"Not only must the art be searched within which the invention claimed is classifiable, but also all analogous arts must be searched regardless of where the claimed invention is classified."
"In outlining a field of search, the examiner should note every class and subclass under the U.S. Patent Classification system and other organized systems of literature that may have material pertinent to the subject matter as claimed. Every subclass, digest, and cross-reference art collection pertinent to each type of invention claimed should be included, from the largest combination through the various subcombinations to the most elementary part. The field of search should extend to all probable areas relevant to the claimed subject matter and should cover the disclosed features which might reasonably be expected to be claimed."
(MPEP 904.01(c) and MPEP 904.02(a)).
Accordingly, there would not be an undue burden upon the Examiner to search within related subclasses as evidenced by the guidance on how to search presented in MPEP 904.
Further still, Applicant respectfully suggests that at least due to the capabilities of modern search tools and the majority of common features and scope, that an examination of Group I, Group II, and Group III simultaneously would not produce a serious search and/or examination burden if restriction were not required. Therefore, clams 111-21, 24-25, and 29, should be examined together with elected claims 1-10 and 30. Accordingly, Applicant respectfully submits that all claims be rejoined. (See Page 8 of the Applicant’s Arguments).
This is not found persuasive because the examiner ntoes that there are more reasons for restriction than what is stated by the applicant above. For example, reasoning (C) as provided in the restriction requirement notes that there would be a search and/or examination burden because “the prior art applicable to one invention would likely not be applicable to another invention”. As noted in the rejections below, applicant has provided prior art reference U.S. Patent No. 11,083,245 (Orand) which is a 102 rejection of at least claim 1; with this prior art rejection pertaining to a show having a shape retaining membrane which has no relation to the restricted inventions drawn to a method of manufacture and a pick and place end effector.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-21, 24, 25 and 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Inventions II and III, there being no allowable generic or linking claim.
Specification
The abstract of the disclosure is objected to because:
Line 3, replace “comprises” with “includes”
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3-10 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 11,083,245 (Orand).
Regarding Claims 1, and 3-10, Orand teaches: Claim 1 - a shape retaining membrane that comprises: a porous substrate (52) impregnated with an electrorheological fluid (55); a pair of high voltage electrodes (such as electrodes (35,37, 43, 45) – at least Column 6, Lines 33-43 describing high voltage) positioned on either side of the porous substrate (52); and a skin (29/31) wrapped around the porous substrate (52) and the pair of high voltage electrodes (such as electrodes (35,37, 43, 45)), (Figures 1-15); Claim 3 – wherein the porous substrate (52) is a polymeric material (such as polyurethane as described in at least Column 7, Lines 1-17), (Figures 1-15); Claim 4 – an insulating layer (such as foam midsole (21)) on an outside of the skin (29 and 31), (Figures 1-15); Claim 5 – wherein the porous substrate (52) is one of a plurality of porous substrates (at least the embodiment of Figure 7 shows multiple damping pads (420a and 420b), with each damping pad (420a and 420b) including their own porous substrate (52)) and further comprising: a plurality of high voltage electrode pairs (such as electrodes (35,37, 43, 45) which would be present on each individual damping pad (420a and 420b)) with the plurality of porous substrates (52), the plurality of high voltage electrode pairs (such as electrodes (35,37, 43, 45)) comprising the pair of high voltage electrodes (such as electrodes (35,37, 43, 45)) on either side of the porous substrate (52), (Figures 1-15); Claim 6 – access ports (electrical wires pass through chambers (28) to connect to a controller, the wires passing through the skin (29 and 31) and being sealed/forming ports for the wire to pass through the skin (29 and 31)) extending through the skin (29 and 31) of the shape retaining membrane, (Figures 1-15); Claim 7 - wherein the skin (29 and 31) is a flexible non-porous material (TPU as described in at least Column 5, Lines 48-51), (Figures 1-15); Claim 8 – wherein the skin (29 and 31) is a polymeric material (TPU as described in at least Column 5, Lines 48-51), (Figures 1-15); Claim 9 – wherein the skin (29 and 31) is an electrically insulative material (TPU as described in at least Column 5, Lines 48-51), (Figures 1-15); Claim 10 – wherein a space between the a pair of high voltage electrodes (such as electrodes (35,37, 43, 45)) is configured to reduce arcing, (Figures 1-15).
Regarding Claim 30, Orand teaches: Claim 30 – a shape retaining membrane that comprises: a pair of high voltage electrodes (such as electrodes (35,37, 43, 45) – at least Column 6, Lines 33-43 describing high voltage) positioned on either side of a porous substrate (52); an electrorheological fluid (55) located between the pair of high voltage electrodes (such as electrodes (35,37, 43, 45)); and a skin (29 and 31) wrapped around the porous substrate (52) and the pair of high voltage electrodes (such as electrodes (35,37, 43, 45)), (Figures 1-15).
Claim(s) 1-3, 5, 7, 9, 10 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JH H09300268 (Nakajima et al.).
Regarding Claims 1-3, 5, 7, 9 and 10, Nakajima et al. teaches: Claim 1 - a shape retaining membrane that comprises: a porous substrate (5) impregnated with an electrorheological fluid (insulator (5) including a natural fiber or plastic impregnated with electrorheological fluid (6) as described in the specification); a pair of high voltage electrodes ((7) as seen in Figure 2) positioned on either side of the porous substrate (5); and a skin (3) wrapped around the porous substrate (5) and the pair of high voltage electrodes (7), (Figures 1-7); Claim 2 - wherein the pair of high voltage electrodes (7) comprise: a negative high voltage electrode (7) on a first face of the porous substrate (5); and a positive high voltage electrode (7) on a second face of the porous substrate (5), (Figure 2); Claim 3 – wherein the porous substrate (5) is a polymeric material (insulator (5) including a natural fiber or plastic impregnated with electrorheological fluid as described in the specification), (Figures 1-7); Claim 5 – wherein the porous substrate (5) is one of a plurality of porous substrates (5 as seen in Figure 2), and further comprising: a plurality of high voltage electrode pairs (pairs (7) as seen in figure 2) with the plurality of porous substrates (5), the plurality of high voltage electrode pairs (7) comprising the pair of high voltage electrodes (7) on either side of the porous substrate (5), (Figures 1-7); Claim 7 - wherein the skin (3) is a flexible non-porous material (skin/tube (3) is bendable and seals the electrorheological fluid as described in the specification), (Figures 1-7); Claim 9 – wherein the skin (3) is an electrically insulative material (skin/tube (3) is insulative as described in specification), (Figures 1-7); Claim 10 – wherein a space between the a pair of high voltage electrodes (7) is configured to reduce arcing, (Figures 1-7).
Regarding Claim 30, Orand teaches: Claim 30 – a shape retaining membrane that comprises: a pair of high voltage electrodes (7) positioned on either side of a porous substrate (5); an electrorheological fluid (insulator (5) including a natural fiber or plastic impregnated with electrorheological fluid (6) as described in the specification) located between the pair of high voltage electrodes (7); and a skin (3) wrapped around the porous substrate (5) and the pair of high voltage electrodes (7), (Figures 1-7).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Josh Rodden whose telephone number is (303) 297-4258. The examiner can normally be reached on M-F, 8-5 MST.
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/JOSHUA E RODDEN/ Primary Examiner, Art Unit 3642
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