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 OFFICE ACTION
This Office Action is in response to the papers filed on 01 October 2025.
CLAIMS UNDER EXAMINATION
Claims 1-2 and 4-13 have been examined on their merits.
PRIORITY
The Applicant claims priority to Provisional Application 63/183,323, filed on 03 May 2021. Claim 1 has been amended to recite a “cytotoxic graphene oxide mask layer”. While Provisional Application ‘323 states gelatin is used to enhance biocompatibility of graphene with cells (first paragraph of page 2), it does not provide support for a cytotoxic graphic oxide mask layer. A search of the ‘323 Application does not disclose a cytotoxic graphic oxide mask layer. As evidenced by Haridas et al. (cited below), enhanced proliferation of stem cells following exposure to graphene oxide and reduced graphene oxide is known in the prior art (see page 7, left column, third paragraph). Therefore graphene oxide is not inherently cytotoxic.
WITHDRAWN REJETIONS
The previous rejections have been withdrawn due to claim amendment.
NEW REJECTIONS
New grounds of rejection have been necessitated by claim amendment.
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.
Claims 4, 7 and 11 are 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 claims contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 4 and 11 recite the layer of permeable gelatin comprises a layer of SU-8. The specification discloses either graphene-based membranes or a layer of SU-8 can be used as cell masks that can adhere to surfaces containing biological materials such as mammalian cells via a gelatin layer (page 2, lines 16-19). The specification does not disclose a layer of gelatin that comprises a layer of SU-8.
Claim 7 has been amended to recite the mask layer prevents delivery of molecules or biomolecules to cells under the mask layer. Claim 1 has been amended to recite the mask layer is cytotoxic graphene oxide. Preventing is interpreted to mean no molecules or biomolecules are delivered. The specification states the cells receive nutrients (molecules) via the gelatin. Therefore the mask layer does not prevent delivery as claimed.
The recited limitations are not supported by the original disclosure, and are considered new matter.
An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed. In re Wright, 866 F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989). Applicant is required to cancel the new matter in the reply to this Office Action.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 recites the mask layer comprises a layer of graphene oxide. Claim 10 is not further limiting because Claim 9 recites a cytotoxic graphene oxide mask layer.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 5-10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Haridas et al. (Transfer of printed electronic structures using graphene oxide and gelatin enables reversible and biocompatible interface with living cells. Materials Science & Engineering pages 1-9. Available online 27 October 2020) in view of Zimmerman et al. (Method and device for treating biological cells on a substrate. EP2089704. 2013 October 09)
Haridas teaches a platform for constructing patterns on cells (see page 7, right column, third paragraph). Mesenchymal stem cells (MSCs) (a group of cells) are cultured on glass cover slips (a substrate) (page 2, left column, last paragraph). A thin layer of gelatin is applied before adding reduced graphine oxide (rGO) membrane above the gelatin (see page 6, right column, second paragraph; see Figure 4). Haridas teaches gelatin can deliver nutrients (bioactive molecules) to cells (first line of page 7). Therefore the art teaches a layer of permeable gelatin that allows bioactive molecules to transfer through the gelatin. Haridas teaches rGO is cytotoxic at elevated concentrations (see page 6, right column, second paragraph). Haridas teaches increased cell death with rGO alone see Figure 4g). Therefore rGO is cytotoxic to the cells.
Haridas teaches gelatin intervenes between the cells and rGO (see Figure 4). the gelatin layer physically separates the rGO from contacting the cells directly (see page 7, left column, third paragraph). Therefore the rGO mask layer is prevented from contacting the group of cells on the substrate.
Haridas prints logos (patterns) onto rGO and the logos are transferred to cells coated with gelatin (see page 7, right column second paragraph). Therefore Haridas creates a graphine oxide mask layer on a portion of the layer of permeable gelatin creating a masked (areas with logo/rGO) and unmasked cells (areas without the logos)
Haridas covers cells with a layer of permeable gelatin. The deficiency of Haridas is that it does not teach covering a portion of cells with gelatin.
Zimmerman teaches a method of treating adherent biological cells on a substrate ([0001]). Cell arrangements on substrates can be locally modified by the disclosed method ([0010]). Patterns are formed ([0018]).
A covering substance is arranged on the cells in such a way that at least one cell is covered and at least once cell is exposed ([0009]). A group of cells can be covered, while a group of cells is exposed ([0013]). The formation of a locally selective coating of the cells is also referred to as two-dimensional encapsulation ([0009]). Zimmerman teaches “the locally selective coating of the cells with the covering substance allows local masking or shielding of the cells” ([0010]). It is therefore possible to subject a single cell to different treatments ([0010]). It is of note the art also refers to a covering substance as a masking substance (see [0039] both substances labeled as “3”). The art teaches gelatin can be used as a masking substance ([0020]).
It would have been obvious to cover a portion of the cells with gelatin. One would have been motivated to do so to create a pattern or test a specific potion of cells, as taught by Zimmerman. One would have had a reasonable expectation of success since Zimmerman teaches a portion of cells on a substrate can be masked. One would have expected similar results since both references are directed to methods of masking cells.
Therefore claim 1 is rendered obvious.
Haridas teaches an advantage of using gelatin as an adhesive is that gelatin melts at a physiologically relevant 37°C so that adhesion of rGO membranes on the cells can be controlled by adjusting the temperature of the culture (page 7, left column, first paragraph). Upon heating to 37°C, the gelatin dissolved within 10 minutes and the rGO lifted off entirely, with healthy cells remaining on the substrate (page 7, left column, second paragraph). Therefore the cells are able to interact freely once the rGO and gelatin are removed.
Haridas does not teach delivering a biochemical signal to an area of unmasked cells.
Zimmerman teaches the treatment of cells comprising a chemical or biological action induced by a treatment solution (hence, a biochemical signal) ([0028]). The art teaches exposed cells are treated ([0044]). Because only exposed cells are treated, a portion of cells with the biochemical signal, and without the biochemical signal, are created. Zimmerman teaches the masking ring can be removed ([0044]).
It would have been obvious to deliver a biochemical to an area of unmasked cells. One would have been motivated to do so to induce a chemical or biological action in the unmasked cells, as taught by Zimmerman. One would have had a reasonable expectation of success since Zimmerman teaches exposed (unmasked) cells can be selectively treated. One would have expected similar results since both references are directed to methods of masking cells. Therefore claim 2 is included in this rejection.
Regarding claim 5: Haridas teaches rGO is impermeable (see page 6, right column, second paragraph). Haridas teaches the material has a thickness less than 100 nm (see Table 1). Therefore claim 5 is rendered obvious.
Haridas teaches healthy (living) MSCs under a “thin layer” of gelatin (supra). Haridas is silent regarding the thickness of the gelatin.
Zimmerman teaches living cells ([0010]). Zimmerman teaches the covering substance forms a layer thickness in the range from 2µm to 10 mm ([0025]). Zimmerman teaches gelatin can be used as a covering substance.
It would have been obvious to use a layer of gelatin that is less than 10 µm thick in the method taught by Haridas. One would have been motivated to do so since Haridas covers cells with a thin layer of gelatin, and Zimmerman teaches a layer of covering substance that is in the range from 2µm to 10 mm. See MPEP 2133.03. The skilled artisan would optimize the thickness of the gelatin layer to allow nutrient perfusion. Therefore, the examiner asserts the claimed range is prima facie obvious. One would have expected similar results since both references are directed to methods of masking cells. Claim 6 is rendered obvious.
Haridas teaches rGO is impermeable to even relatively small molecule (see page 6, right column, second paragraph). Therefore the mask layer taught by Haridas prevents delivery of molecules or biomolecules to cells under the mask layer. Therefore claim 7 is included in this rejection.
Haridas teaches the graphene oxide mask layer is impermeable. Therefore the mask layer blocks exposure to trypsin or other proteases, and inhibits cells from detaching.
Zimmerman teaches the exposed cells can be detached ([0014]). Therefore claim 8 is rendered obvious.
Regarding independent claim 9: The teachings of Haridas and Zimmerman as set forth above are reiterated.
Haridas does not teach covering a portion of cells with gelatin.
Haridas does not teach delivering a biochemical signal to an area of unmasked cells.
Haridas does not teach seeding and creating a second population of cells.
Haridas does not teach creating a co-culture.
Haridas does not teach removing or trypsinizing cells from the unmasked area, and allowing the cells populations to interact freely.
The teachings of Zimmerman as set forth above are reiterated.
Zimmerman teaches at least one individual cell group is covered with the covering substance while the environment of the at least one cell group
is exposed. Zimmerman teaches doing so to create a reference cell group ([0013]).
Zimmerman teaches different types of cells (more than one population) can be cultured together (hence, a co-culture) ([0014] [0052]). A different cell type reads on creating and seeding a second population of cells. Zimmerman teaches cells can be detached ([0014]). Zimmerman teaches selectively removing a covering substance to create the desired pattern ([0018]); Zimmerman teaches trypsin can be used to selectively detach cells ([0051]). The art teaches a second treatment can be performed on uncovered cells ([0052]). The art teaches the masking ring can be removed ([0044]). Therefore the cells are allowed to interact freely.
It would have been obvious to cover a portion of the cells taught by Haridas with gelatin. One would have been motivated to do so to create a pattern or test a specific portion of cells, as taught by Zimmerman. One would have had a reasonable expectation of success since Zimmerman teaches a portion of cells on a substrate can be masked.
The skilled artisan would treat with trypsin to selectively detach uncovered cells, as taught by Zimmerman. It would have been obvious to seed a substrate with a second population of cells. One would have been motivated to do so since Zimmerman teaches a second cell type can be cultured following trypsinization. Seeding a second population of cells would create a second population of cells. Examiner notes this would create a spatially patterned co-culture of cells. One would have been motivated to do so to analyze and compare a second cell type to a first cell type. One would have expected similar results since both references are directed to methods of masking cells. Therefore claim 9 is rendered obvious.
Haridas teaches graphene oxide. Therefore claim 10 is included in this rejection.
Regarding claim 12: Haridas teaches rGO is impermeable (supra). Haridas teaches the material has a thickness is less than 100 nm (see Table 1). Therefore claim 12 is rendered obvious.
Haridas cultures live MSCs (supra). Zimmerman teaches mechanical ablation ([0038]). Zimmerman teaches living cells ([0010]). Zimmerman teaches gelatin can be used as a covering substance (supra). Zimmerman teaches the covering substance forms a layer thickness in the range from 2µm to 10 mm ([0025]). Therefore claim 13 is included in this rejection.
Therefore Applicant’s Invention is rendered obvious as claimed.
Claims 4-5 and 11-12 rejected under 35 U.S.C. 103 as being unpatentable over Haridas in view of Zimmerman as applied to claims 2 and 9 above, and further in view of Shin et al. (Cell-laden Microengineered and Mechanically Tunable Hybrid Hydrogels of Gelatin and Graphene Oxide. Adv. Mater. 2013, 25, 6385–6391).
Claims 2 and 9 are rejected on the grounds set forth above. The teachings of Haridas and Zimmerman are reiterated.
Haridas teaches permeable gelatin, but is silent regarding the use of gelatin methacrylate (claims 4 and 11).
Haridas is silent regarding the thickness of the GO layer (claims 5 and 12).
Shin incorporates graphene oxide (GO) into gelatin methacrylate (GelMA), which is a UV-crosslinkable matrix material, for the creation of cell-laden graphene embedded hydrogels and investigated the cellular responses
in a 3D microenvironment (see page 6385, right column, second paragraph).
Shin teaches GelMA is chemically modified with acrylic functional groups to render excellent photopatternable properties, allowing the fabrication of biocompatible microscale structures. Furthermore, recent studies have shown that gelatin-based materials were able to exfoliate graphene and inorganic graphene analogue sheets from their bulk materials in an aqueous phase (see page 6385, right column, second paragraph).
Shin teaches a GO sheet with a typical thickness of 1.6 ± 0.1 nm (see 6386, left column, second paragraph).
It would have been obvious to use GelMa in the method taught by Haridas. One would have been motivated to do so since Shin teaches GelMa is biocompatible and able to produce microscale structures. One would have had a reasonable expectation of success since Shin teaches it can be used with graphene oxide. One would have expected similar results since both references use a substrate comprising graphene oxide and gelatin to culture cells. Therefore claim 4 and 11 are rendered obvious as claimed.
It would have been obvious to use graphene oxide with a thickness less than 100 nm. One would have been motivated to do so since Shin teaches using a graphene oxide layer that is 1.6 ± 0.1 nm. One would have expected similar results since both references use a substrate comprising graphene oxide and gelatin to culture cells. Therefore claims 5 and 12 are rendered obvious as claimed.
Therefore Applicant’s Invention is rendered obvious as claimed.
APPLICANT’S ARGUMENTS
The arguments made in the response filed on 01 October 2025are acknowledged. New grounds of rejection have been made to address the amended claims.
CONCLUSION
No Claims Are Allowed
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE MOSS whose telephone number is (571) 270-7439. The examiner can normally be reached on Monday-Friday, 8am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached on (571) 272-0614. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/NATALIE M MOSS/ Examiner, Art Unit 1653
/SHARMILA G LANDAU/ Supervisory Patent Examiner, Art Unit 1653