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 .
Acknowledgement of Receipt
Applicant’s Response, filed 2/2/2026, in reply to the Office Action mailed 11/24/2025, is acknowledged and has been entered. Claim 1 has been amended. Claims 1-5, 12-17 and 20 are pending and are examined herein on the merits for patentability.
Response to Arguments
Applicant’s arguments have been fully considered. Any rejection not reiterated herein has been withdrawn as being overcome by claim amendment. The Examiner’s response to Applicant’s arguments is incorporated below.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5, 12-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nseir (US 2022/0273842) in view of Hyun et al. (KR20020089772), for reasons set forth in the previous Office Action.
Claim(s) 1-5, 12-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nseir (US 2022/0273842) in view of Black et al. (US 2021/0322785),
for reasons set forth in the previous Office Action.
Response to arguments
Applicant argues that Nseir does not exemplify a patch having a coating comprising a pair of co-reactive polymer reagents having a molar ratio of 0.25 to 0.64: 1 of primary electrophilic groups of PEG-SG to nucleophilic groups of the polymeric source of primary amine (NH2) groups (an excess of nucleophilic groups). Applicant asserts that Hyun is cited to shown that it is known that the relative amounts of PEG-SG and PEG-NH2 can be varied between 1: 10 to 10: 1 in preparation of the hydrogel as a bioadhesive gel. Applicant cites paragraph 0134-5 of Nseir and argues that the tissue reactive groups, not the nucleophilic groups, are in excess in Nseir formulations. Claim 1 herein requires a significant excess of nucleophilic groups to primary electrophilic groups. There is no motivation to utilize the exact opposite reactive chemistry as described in Nseir even if the alternative may be known or disclosed in other formulations.
Applicant’s arguments have been fully considered but are not found to be persuasive. It is respectfully submitted that Nseir is not limited to teaching wherein nucleophilic groups are in excess relative to electrophilic groups. For example, Nseir readily teaches that in some embodiments, a molar ratio of the second polymer to the third polymer within the kit is… from 0.8:1 to 1:1 (paragraph 0212). See also paragraph 0220, which recites that in some embodiments, a w/w ratio of the second polymer (e.g. PEG-SH, and/or PEG-NH2) to third polymer (e.g. PEG-NHS) of the kit is between 10:1 and 1:1, as such it is considered that the reference is not limited to an excess of nucleophilic groups. See MPEP 2123. Patents are relevant as prior art for all they contain. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
Conclusion
No claims are allowed at this time.
THIS ACTION IS MADE FINAL. 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 LEAH H SCHLIENTZ whose telephone number is (571)272-9928. The examiner can normally be reached Monday-Friday, 8:30am - 12:30pm EST.
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, MICHAEL HARTLEY can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LHS/
/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618
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