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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/4/2026 has been entered. Applicant amended claims 1 and 10; claims 1 – 14 are pending in this application.
Response to Arguments
Applicant's arguments filed 3/24/2026 have been fully considered but they are not persuasive. Applicant argues” Homma already describes a spring, so there is no reason to add another biasing device, let alone a second SMA actuation element as amended claim 1 now recites”. Examiner respectfully disagrees.
US Patent to Homma (4,973,024) discloses a shape memory alloy (52, Fig. 11) to actuate a fluidically isolated valve. Further, Homma discloses a reset spring (53, Fig. 11) that provides a biasing force. As applicant discloses in paragraph 51 of the disclosure the resetting element can be alternatively either a spring or a shape memory alloy. Examiner maintains providing a shape memory alloy as a reset element is well known in the art as taught by WIPO Publication to Szikagyi et al. (WO 2005/026592) and a person having ordinary skill in the art would be motivated to use the SMA taught by Szikagyi in place of the reset spring disclosed by Homma as a simple substitution of one reset element for another.
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 10 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 10, the claim depends on claim 1. Claim 1 requires a second SMA element as means of providing a bias force to return first SMA element from an elongation status to an original shape. Claim 10 requires an additional passive reset spring as the resetting element, there insufficient written description support for this additional reset element. Paragraph 51 of the initial disclosure discloses “resetting element described above comprises a resetting spring 250 or a shape memory alloy actuation element 200b” neither the drawing or the initial disclosure support both the SMA and a passive reset spring as the resetting element. As, applicant notes it would not be obvious to a person having ordinary skill in the art to have two reset elements in the same embodiment.
Claim 10 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 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.
Regarding claim 10, the claim requires the resetting element to be “structures for providing weight force”. The disclosure paragraph 51 and 95 discloses the resetting element can be configured as means for providing weight force also as to provide a bias force. Applicant does not disclose how this is to be achieved.
The art is well developed and the level of skill in the art is high but applicant does not provide any direction as how the claimed subject matter is to be made or used by person skill in the art.
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.
Claim 11 is 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 11 depends on claim 10, claim 10 defines the resetting element to be a passive reset spring or a weight force structure. Claim 11 further narrows the reset element to be an SMA element. It is not clear how the reset element can be both a passive reset spring and an SMA element, as such claim 11 is rejected 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 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.
Claims 1 - 9, 12 - 14 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent to Homma (4,973,024) in view of US Patent to Cohen et al. (10,670,054) in further view of WIPO Publication to Szilagyi et al. (PCT/US2004/028775).
Regarding claim 1, Homma discloses a shape memory alloy actuation element (52, Fig. 11). Homma further discloses the valve assembly (Fig. 11) is configured to obtain various degrees of partially open positions. Homma further discloses the SMA actuation element (52, Fig. 11) is fluidly isolated from working fluid.
Homma do not explicitly disclose the valve is used for controlling a valve positioner or an SMA element as the reset element.
Regarding the pneumatic actuator to operate a valve, Cohen et al. teach a pneumatic actuator to operate a valve (Fig. 1).
Therefore, it would have been obvious to the person having ordinary skill in the art at a time prior to the effective filing date of the application to have adapted the drive disclosed by Homma to a well-known use as a pneumatic actuator as taught by Cohen et al. as combination of prior art elements according to known methods to yield predictable results.
In the combination of the prior art elements, one of ordinary skill in the art would have reasonably expected the elements to maintain their respective properties or functions.
Regarding the second SMA member as a reset element, Szilagyi et al. teach a second shape memory alloy actuation element (256, Fig. 2B) forming reset element for the first actuation element (202, Fig. 2B) based on SMA.
Therefore, it would have been obvious to the person having ordinary skill in the art at a time prior to the effective filing date of the application to substituted the reset spring in the valve disclosed by Homma with the second SMA as a reset element taught by Szilagyi et al. as a simple substitution of one known element for another to obtain predictable results.
In the combination of the prior art elements, one of ordinary skill in the art would have reasonably expected the elements to maintain their respective properties or functions.
Regarding claims 2 – 3, Homma discloses electrical traces for operating the SMA elements – energizing circuit.
Regarding claim 4, Homma discloses actuation element is in a contraction status when an electrical voltage is provided to the electrical electrodes and in an elongation status otherwise (Col. 9, Lines 13 - 52).
Regarding claims 5 – 6, Homma discloses the valve is used for various degrees of partial positions between the fully closed and fully open positions (Col. 4, Lines 17 – 38).
Regarding claim 7, Homma discloses at least one sealing diaphragm (48, Fig. 11) disposed within a housing of the valve positioned with pneumatic output, wherein the SMA actuation element (52, Fig. 11) is configured to be arranged within the housing of the valve positioner with pneumatic output with the at least one sealing diaphragm (48, Fig. 11) separating the SMA actuation element (52, Fig. 11)from the working fluid within the housing
Regarding claim 8, examiner for this claim only, is interpreting element 44 in figure 11 disclosed by Homma to be “a housing”.
Regarding claim 9, Homma discloses the SMA element comprises a wire (52, Fig. 11) that shows the thermal shape memory effect.
Regarding claims 12 – 13, in the combination Cohen et al. disclose multiple valve positioners (Fig. 2).
Regarding claim 14, it is well known in the art to have a supply and exhaust system with 3/3 valve as taught by Szilagyi et al. (Fig. 1A), it would have been obvious to the person having ordinary skill in the art at a time prior to the effective filing date of the application to have modified the valve disclosed by Homma to the well-known 3/3 positioner taught by Szilagyi et al. as a combination of prior art elements according to known methods to yield predictable results.
In the combination of the prior art elements, one of ordinary skill in the art would have reasonably expected the elements to maintain their respective properties or functions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMASHANKAR VENKATESAN whose telephone number is (571)270-5602. The examiner can normally be reached Monday - Friday 9:30 AM - 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisors Craig Schneider can be reached at (571) 272-3607 or Ken Rinehart can be reached at (571) 272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/UMASHANKAR VENKATESAN/
Primary Examiner, Art Unit 3753
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