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 .
Information Disclosure Statement
The information disclosure statement filed 12/16/2023 has been fully considered. Initialed copy of said IDS is enclosed herein.
Drawings
The drawings are objected to because photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. Figures 1 and 9-11 are photographs but applicant has not demonstrated the photographs are the only practicable medium for illustrating the claimed invention. Additionally, with regards to figures 1, 4, 6, and 9-11, do not comply with 37 DCFR 1.84(l) because they lack satisfactory reproduction characteristics due to the “Shading” in said figures. 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.
Claim Rejections - 35 USC § 112
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 1-7 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. Specifically, claim 1 contains parenthetical limitations and it is unclear if said parenthetical limitations further limit the claimed invention. For example, claim 1 states the actuator comprises a “thermally activated poly-(polyhedral oligomeric silsesquioxane) (PP) layer”. Page 3 of the specification states “PP is comprised of EP0409 and Jeffamine D-230 preheated to 80C and mixed at a 2.8:1 POSS:Jeffamine weight ratio.” Thus, it is unclear if the parenthetical reference (PP) refers to any poly-(polyhedral oligomeric silsesquioxane) or is limited EP0409 and Jeffamine D-230 preheated to 80C and mixed at a 2.8:1 POSS:Jeffamine weight ratio.”
Similarly, claim 1 states “a passive poly-(4,4'- oxydiphenylene-pyromellitimide) (PK) layer.” However, the specification also states PK is a Pristine KAPTON film (page 3). Thus, it is unclear if the parenthetical reference (PK) refers to a passive poly-(4,4'- oxydiphenylene-pyromellitimide) or a Pristine KAPTON film.
With regards to claim 2, said claim is held to be indefinite because it is unclear what type of motion and under what conditions (e.g. force applied in what direction, humidity, etc.) the actuator must maintain adhesion. The claim is silent to the method by which said property is measured and the specification (and prior art) are silent with regards to the objective test which can be utilized to evaluate the claimed property.
With regards to claim 5, said claim is held to be indefinite because it is unclear what type of motion and under what conditions (e.g. force applied in what direction, humidity, etc.) the actuator must be capable of repeatable motion. The claim is silent to the method by which said property is measured and the specification (and prior art) are silent with regards to the objective test which can be utilized to evaluate the claimed property.
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.
Claims 2-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Applicant does not describe in the specification how to make an actuator meeting the claimed properties in a manner that is commensurate in scope with the pending claims.
As set forth in MPEP 2164.01(a), there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” They are set forth and analyzed herein:
A) The breadth of the claims-the claims cover any composition wherein the first layer comprises PP and the second layer comprise PK. The examiner notes that PP is typically used as an additive in amounts of around 2% (See https://www.hybridplastics.com/wp-content/uploads/2019/03/EP0409-TDS-1020161.pdf). Thus, roughly 98% of the PP layer is not defined or limited by the claims. The breadth of the claims, therefore, is considered extremely broad.
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(C) The state of the prior art-The prior art fails to teach PP actuators meeting the claimed limitations. Furthermore, the prior art fails to teach that the claimed properties are known to be controlled by defined variables.
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(D) The level of one of ordinary skill-Given the lack of teachings in the prior art, the level of one of ordinary skill in the art with respect to the inventions of claims 2-5 is considered low.
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(E) The level of predictability in the art -The level of predictability in the art is considered low; since the composition is largely undefined, the possible factors/variables that may alter the composition and its physical properties is considered large.
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(F) The amount of direction provided by the inventor-Applicant does not teach any result effective variables with regards to the claimed properties. Furthermore, the compositions in the specification that were tested are not fully defined. Thus, the amount of direction provided by the inventor is considered low.
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(G) The existence of working examples-while the specification contains working examples, the compositions of said examples is not fully defined. Furthermore, the working examples are not commensurate in scope with the pending claims.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure-Given the factors discussed above, the quantity of experimentation needed to make or use the invention based on the content of the disclosure is considered extremely high and undue.
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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 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/141428(herein referred to as “Verker”) in view of Zhou et al (US 2019/0367692).
Verker teaches an actuator comprising a two-way shape memory polymer (2WSMP) (page, 1, lines 1+) comprising a thermally activated poly-(polyhedral oligomeric silsesquioxane) (PP) layer (page 3, lines 15+)
Verker does not teach the actuator should further comprise a passive poly-(4,4'-oxydiphenylene-pyromellitimide) (PK) layer. However, Zhou teaches bilayer actuators (0008) comprising a shape memory polymer layer (0034) and a second layer, known as a passive layer, which may comprise a polyimide such as KAPTON (0039) The polyimide is used because it is flexible inert to most organic solvents, and has desirable mechanical properties (0039). The displacement of the bilayer actuator is known to depend on the thickness ratio between the active and passive layers (0049). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply a second layer comprising KAPTON to the actuator disclosed in Verker. The motivation for doing so would have been to control the degree of displacement of the actuator.
With regards to claim 2, it is known in the art that adhesion is a result effective variable controlled by the process limitations selected to form a multilayer product. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to control the process limitations by which 2- layer actuator comprising PP and PK are formed in order to control the adhesive strength of the 2-layer actuator.
With regards to claims 3 and 4, the examiner takes the position the claimed “constant
coefficient of thermal expansion value from room temperature up to 150°C” and the maintenance of “ Young's modulus values above 250 MPa at temperatures as high as 150°C” are inherently to the PP disclosed in Verker since Verker teaches a PP that is compositionally identical to the claimed PP.
With regards to claim 5, the examiner takes the position the 2WSMP actuator is capable of repeatable motion at temperatures as high as 150 °C as the resulting 2-layer actuator rendered obvious by the prior art is compositionally identical to the applicants’ claimed invention.
With regards to claim 6 and 7, Zhou teaches the thickness of the PK layer relative to the shape memory layer is a result effective variable that control the displacement of the actuator. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to vary the thickness of the PP and PK layer in order to control the bending deformation and strain and the force applied by said 2WSMP bilayer. The motivation for doing so would have been that Zhou teaches the relative thickness of said layers is a result effective variable control the displacement of the actuator.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KEVIN R. KRUER
Examiner
Art Unit 1787
/KEVIN R KRUER/Primary Examiner, Art Unit 1787