DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Interpretation Section
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Applicant has defined “Hydraulic diameter - Used for non-circular fluid channels and can be defined as four times the cross sectional area divided by the wetted perimeter of the channel.” (Page 10 of Specification as Filed).
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 and dependents 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 1 recites “wherein the connected plate sections are dimensioned with a circular symmetry to allow a stacking assembly" where feature 17 in the application is indicated as the “plate section”, and where segment is also defined in the specification as “Segment - a section of a plate that is so arranged to allow efficient cutting, nesting or stacking of two or more segments to then bring together and form a plate of planar form.” where the plate section is non circular, as such it is unclear what is intentioned by this recitation. Further while Figure 11 is shown as circular it does not recite multiple plates. Further if the plate sections are compiled as to create a single “shape” said shape is not disclosed as being circular in the specification. Further “circular symmetry” is not defined in the Specification, as many other terms are at the end of the Specification. As such the limitations of “circular symmetry” is unclear, and it is unclear how the claimed device comprises “circular symmetry”.
Claims: 1 is rejected under 35 U.S.C. 112, second paragraph, as failing to set forth the subject matter which applicant(s) regard as their invention. Specifically the use of the word “thin” when indicating a value, duration, numerical range, location, shape, or comparative sizing or proximity is considered indefinite as the specification or arguments previously presented fails to provide some standard for measuring that degree; and there is no standard that is recognized in the art for measuring the meaning of the term of said degree.Terms of Degree: When a term of degree is used in the claim, the examiner should determine whether the specification provides some standard for measuring that degree. If the specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). The claim is not indefinite if the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree). During prosecution, an applicant may also overcome an indefiniteness rejection by submitting a declaration under 37 CFR 1.132 showing examples that meet the claim limitation and examples that do not. < Federal Register /Vol. 76, No. 27 / February 9, 2011 / Notices, (Page 7165 :Col 3, Par. 0003) >
Claims 1 and dependents 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 1 recites “each section includes an array of hollow perforated cells formed between one or more thin vertical walls of a thickness within a predefined range of values” where it is generally unclear what dimensions are being recited, ie this is stating a “thin vertical wall with a thickness” and as such is this saying that the wall is “thin” in the vertical dimension or in a dimension between cells. As such it is unclear which dimensions are attempting to be recited. Language such as “thin vertical wall with a thickness between cells” is suggested.
Claim 16 recites the limitation "the tensioning element". There is insufficient antecedent basis for this limitation in the claim and as multiple claims recite different variations and locations of the tensioning element it is further unclear what scope is inended.
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.
Claims 1-3,5-7,11-15 are rejected under 35 U.S.C. 102(***) as being anticipated by WO2021219667 to Warren.
As to claim 1 (in light of 112 above), Warren discloses A superelastic SMA structure (Abs, Fig 5a,b), comprising: two or more connected plate sections (A Below) to form an overall substantially closed perimeter (Perimeter is closed Fig 5a); wherein the structure comprises an opening positioned in the centre (502) of the structure; wherein the connected plate sections are dimensioned with a circular symmetry to allow a stacking assembly (plates are circularly symmetric about 502 specifically symmetric along an axis drawn between 503 and 504); each section includes an array of hollow perforated cells formed between one or more thin vertical walls of a thickness within a predefined range of values (Fig 5A); and wherein at least one perforated cell defines a fluid passageway within a predefined range of hydraulic diameter values (Page 9, Line 18-29).
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As to claim 2 (in light of 112 above), Warren discloses wherein the thickness of the one or more vertical walls (in this interpretation the thickness is in the height dimension) is selected from the range of between 0.75 millimeters (mm) and 1.25 mm (Page 10, Line 26).
As to claim 3 (in light of 112 above), Warren discloses wherein the thickness of the one or more vertical walls is 1 mm (Page 10, Line 26).
As to claim 5 (in light of 112 above), Warren discloses wherein the opening is dimensioned to accommodate a support element (502; Page 10, Line 26).
As to claim 6 (in light of 112 above), Warren discloses the support element comprises a central pillar and dimensioned to support a plurality of superelastic SMA structures (Fig 5a,b,Page 10, Line 26).
As to claim 7 (in light of 112 above), Warren discloses wherein each section has a substantially hexagonal structure shape or a circular shape (Page 8, Line 23-28).
As to claim 11 (in light of 112 above), Warren discloses wherein each section (A’s above) is configured to interlock with an adjacent section to define the superelastic SMA structure (interlocked using stacking element 502).
As to claim 12 (in light of 112 above), Warren discloses wherein a tensioning element is positioned around the outer perimeter of the structure (at 503,504).
As to claim 13 (in light of 112 above), Warren discloses wherein a tensioning element is positioned around the inner perimeter of the structure opening (502, Page 9, Line 18-29).
As to claim 14 (in light of 112 above), Warren discloses wherein a tensioning element is positioned around the exterior perimeter of the structure opening (502, Page 9, Line 18-29), and/or an array of individual tension elements so arranged around the exterior of the stack positioned to reduce SMA loading during operation (at 503,504).
As to claim 15 (in light of 112 above), Warren discloses wherein one or more tensioning elements are positioned internally and externally to reduce SMA loading during operation (502,503,504).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) 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.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO2021219667 to Warren.
As to claim 8 (in light of 112 above), Warren discloses different embodiments wherein each hollow perforated cell has a substantially hexagonal honeycomb shape or a circular shape (Fig 1, Page 8, Line 23-29), where at the time of invention, it would have been obvious to one of ordinary skill in the art for each hollow perforated cell has a substantially hexagonal honeycomb shape or a circular shape as taught in Warren based on need and flow dimensional requirements.
As to claim 9 (in light of 112 above), Warren discloses how the number of sections (plates in the above interpretation of Claim 1) may comprise a minimum of 2 (Page 11, Line 21-24) wherein it would have been obvious with a minimum of 2 to consider that the number of connected sections comprises three or six sections based on the need of the system.
As to claim 10 (in light of 112 above), While Warren does not expressly disclose wherein the connected sections (A’s above) are dimensioned with such a pattern to allow full or partial nesting during manufacture from larger sheets, At the time of invention, it would have been obvious to one of ordinary skill in the art based on the shape of the A sections that they could be reasonably nested (ie 504 point nested to a 503 indention region so as to allow multiple sheets to be punched while nested before assembly), so as to increase the components created from as single sheet of material and reduce overall waste as desired and understood by one of ordinary skill in the art.
Claims 16 are rejected under 35 U.S.C. 103 as being unpatentable over WO2021219667 to Warren as applied to claim 1 in light of US patent 10018385 to Radermacher.
As to claim 16 (in light of 112 above), Warren does not expressly disclose wherein the tensioning element is thermally insulated from, or insulated with respect to, the SMA structure.
Radermacher discloses using thermal insulation to prevent undesirable heat transfer between an SMA and other components (Col 22 Line 33-42).
At the time of invention, it would have been obvious to one of ordinary skill in the art to modify Warren to include wherein the tensioning element is thermally insulated from, or insulated with respect to, the SMA structure using the teachings of Radermacher to prevent undesirable heat transfer between an SMA and the tensioning element which could negatively effect how the SMA device operates.
Allowable Subject Matter
Claim 4 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 and overcoming any 112 issues.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSE SAMUEL BOGUE whose telephone number is (571)270-1406. The examiner can normally be reached on M-F 8:00-5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached on 571-270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSE S BOGUE/Primary Examiner, Art Unit 3746