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 .
Claim Rejections - 35 USC § 112
Claim 15 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 15 contains the trademark/trade name Triton X-100. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a specific compound and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102
Claims 1, 2, 4-9, 11-14 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (6,692,650).
With regard to claims 1, 7-9, 11, 13, 14 and 17-20, Park et al. disclose a magnetorheological fluid that is made by emulsifying water in oil using a sorbitan fatty acid ester, which reads on applicants’ dispersing a plurality of discrete emulsion droplets that form an internal fluid phase encapsulated by an emulsifier, and then dispersing magnetic particles in the mobile phase, which reads on dispersing the plurality of magnetic particles in the non-magnetic carrier fluid (col. 3, lines 10-43). The sorbitan fatty acid ester reads on applicants’ surfactant or detergent (col. 4, lines 23-29). The mineral oil reads on applicants’ non-magnetic carrier fluid and has a viscosity of 0.02 Pas, i.e. 20 cP, and water has a viscosity of 1 cP, which means the final magnetorheological fluid will inherently have the viscosity of claim 18 (col. 4, lines 22-40). Given that the composition is identical, it will inherently have a greater yield stress compared to a magnetorheological fluid that does not have an emulsion. The composition can be used in a clutch, which reads on applicants’ use in a magnetorheological device (col. 1, lines 29-35).
With regard to claims 2, 4 and 5, Figure 4 shows that the magnetic particles are added at 5% by volume, and the Span is added at 5 wt% by weight of the mobile phase, which means it will inherently have a vol% in the amount claimed (col. 4, lines 22-25, col. 5, lines 32-41 and Figure 4). Please note there is a typographical error as the water is present at volume fractions of 0.1, 0.2 and 0.3, which is 10, 20 and 30 vol % (col. 4, lines 42-45).
With regard to claims 6 and 12, the magnetic particles have a particle size of 1 to 5 microns and the water emulsion droplets have a droplet size of 0.1 to 100 microns, which means they will have the average diameters as claimed (col. 3, lines 20-22 and col. 4, lines 48-52).
Claim Rejections - 35 USC § 103
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (6,692,650).
Park et al. teach all of the limitations of claim 1 above. They also show in Figure 4 how the yield stress changes at different magnetic particle volume fraction. They do not teach away from volume percentages other than the examples shown; however, they do not specifically teach a volume fraction of magnetic particles as claimed.
It would have been obvious to one having ordinary skill to have made magnetorheological fluid having any magnetic particle volume percentage, including from 0.1 to 2.5 vol% as claimed. The rationale is to design the magnetorheological fluid to have the desired yield stress for the magnetic field that the fluid is to be used in.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (6,692,650) in view of “Tween vs. Span” (https://www.venus-goa.com/article-tween-vs-span-guide.php) as evidenced by “Merck Span 20” (https://www.merckmillipore.com/IL/en/specification-sheet/SPEC/MDA/CHEM/8.40119/8401190000).
Park et al. teach all of the limitations of claim 1 above, including the use of the Span, e.g. sorbitan fatty acid ester surfactant (col. 4, lines 23-29); however, they do not specifically teach the emulsifier claimed.
“Tween vs. Span” teaches the Span line of emulsifiers, including Span 20, which is a lauric acid based sorbitan ester and is the same as sorbitan monolaurate (pg. 1). As evidenced by Merck, Span 20 was available at least since 2021 (pg. 1).
Since Park et al. and “Tween vs. Span” are both drawn to emulsifiers of the Span family of products, it would have been obvious to one having ordinary skill in the art to have substituted any of the Span sorbitan fatty acid esters, including Span 20, as the Span emulsifier of Park et al. This results of such a substitution would have been predictable to one having ordinary skill.
Potential Allowable Subject Matter
Claims 10 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art does not teach a magnetorheological emulsion that is an oil-in-water emulsion or a Pickering emulsion having a “Pickering emulsifier comprising a plurality of non-magnetic particles” in combination with the rest of the limitations claimed.
The closest prior art to claim 10 is Yang et al. (CN 108364743). However, the magnetic particles are not “dispersed in a non-magnetic carrier fluid” with a plurality of emulsion droplets dispersed in the non-magnetic carrier fluid. Since the magnetic particles are inside the emulsion droplets based on how the emulsion is made, they cannot be said to have the structure of being dispersed in the non-magnetic carrier fluid.
The closest prior art to claim 16 is Colloids Surf. A Physicochem. Eng. Asp. 2012, vol. 412, pg. 20-28; however, the Pickering emulsifier in this reference are magnetic particles, which teaches the opposite of what is claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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