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 .
Priority
This application was filed on and is a U.S. national Stage application under 35 U.S.C. 371 of International Patent Application No. PCT/US2019/047405 filed 08/21/2019, which claims the benefit of the priority of US Provisional application 62/720672 filed 08/21/2018.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 12-14, 24-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II and III and/or based on the elected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/07/2024. Applicant’s election without traverse of Group I drawn to a modified collagen or gelatin, in the reply filed on 05/07/2024 is acknowledged.
Applicant further elects the species of
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. A search of the elected species did not uncover any prior art. The search was therefore expanded to the other species recited in claim 6 which did not uncover any prior art. The species election is herein withdrawn.
Claim Status
Claims 1, 3, 5-14, and 24-34 are pending. Claims 1 is amended. Claims 2, 4, 15-23, 25 are canceled. Claims 1, 3, 5-11 are being examined on the merits in this office action.
Claim Rejections - Withdrawn
The rejection of claims 1, and 8-11 under 35 U.S.C. 102(a)(1) as being anticipated by Jin et al. (Nano Lett. 2015, 15, 10, 7138–7145) is withdrawn in view of the claim amendments.
Claim Rejections - 35 USC § 102 - New
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.
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.
Claims 1, and 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Black et al. (Tissue Eng Part A. 2015; 21(7-8): 1333-42).
Regarding claim 1, Black teaches a peptide amphiphile with the structure shown below:
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(Fig. 1).
Examiner notes that the structure of Black reads on the instant structure with Glycine residue, and X and Y being Glycine and hydroxylysine residues, R1 is CH2-CnH2n+p, R2 is H.
With regards to claims 8-11, Examine notes that Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties recited in claims 8-11applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01(II). . In the instant case, since the instant composition of claim 1 comprising the modified collagen is taught by the teachings of Jin, the limitations of claims 8-11 express the intended result of the modified collagen of claim 1 and thus the limitations of claims 8-11 would be necessarily present.
MPEP 2111.04 states: claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. In the instant case, since the instant composition of claim 1 comprising the modified collagen is taught by the teachings of Jin, the limitations of claims 8-11 express the intended result of the modified collagen of claim 1 and thus the limitations of claims 8-11 would be inherently present.
Response to Arguments
Applicant’s arguments, see Applicant Arguments, filed 09/05/2025, with respect to the rejection(s) of claim(s) 1, 8-11 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Black et al.
Examiner’s comment and Allowable subject matter
Claims 1, and 8-11 are rejected.
Claims 3, 5-7 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 closest prior art is Black et al. (Tissue Eng Part A. 2015; 21(7-8): 1333-42). Black teaches a peptide amphiphile with the structure shown below:
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(Fig. 1).
Examiner notes that the structure of Black reads on the instant structure with Glycine residue, and X and Y being Glycine and hydroxylysine residues, R1 is CH2-CnH2n+p, R2 is H.
Black does not teach a modified collagen wherein X is proline, or hydroxyproline, and does not teach the repeating units recited in claims 5-6.
Conclusion
Claims 1, and 8-11 are rejected. Claims 3, 5-7 are objected.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mercy H. Sabila whose telephone number is (571)272-2562. The examiner can normally be reached Monday - Friday 5:00 am - 3:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lianko G. Garyu can be reached at (571)270-7367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MERCY H SABILA/Examiner, Art Unit 1654
/LIANKO G GARYU/Supervisory Patent Examiner, Art Unit 1654