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 .
Response to Amendment
This action has been made non-final because the new grounds are not directly and only necessitated by applicant's amendments.
Claim Objections
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.
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 47-49 have been renumbered to 50-52.
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.
Claim(s) 30, 32-34, 36-40, 44, 46 and 50-52 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 110305339, please refer to English machine translation for mapping) in view of Caplan et al (US 2004/0236300).
Regarding claims 30 and 36-38, Huang teaches a supramolecular conductive polymer composition (Abstract) comprising:
A polymer such as a silk fibroin which is capable of forming alpha helixes and beta folding structures (page 2, last paragraph) and therefore has functional groups in proteins that are capable of forming hydrogen bonds – hydroxyl, amino, carboxyl, amide groups. Given that it is a protein, it is a linear polymer and has 1 hydrogen bond acceptor or donator group per repeated subunit.
A polyphenol such as tannin (page 4)
A solvent such as water which has a dielectric constant of at least 20 (Examples)
And an electrically conductive filler such as graphene (Abstract)
However, Huang fails to teach that the tannin has the recited molecular weight.
Caplan teaches that tannins have a molecular weight of 2000-5000 ([0187]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the tannin of Huang have the molecular weight as taught by Caplan. One would have been motivated to do so because it is the typical molecular weight of tannins (Caplan, [0187]).
Regarding claim 32, modified Huang teaches that the tannin is comprised of 6-9 gallic acid moieties (Caplan, [0188]).
Regarding claim 33, Huang teaches that the final concentration of mass in the composition is 0.01 to 50 % by mass (page 8), and therefore, the amount of solvent can be calculated to range from 50 to 99.99% by mass.
Regarding claim 34, Huang teaches that the polymer is a natural silk (page 2).
Regarding claim 39, Huang teaches that the conductivity can reach 10 S/m (0.1 S/cm) (Abstract).
Regarding claim 40, while the recited weight ratio of the polymer, the polyphenol and the conductive filler is not exemplified, it is well known in the art to optimize result effective variables such as amounts of components within a composition. See MPEP 2144.05. It would have been obvious to a person having ordinary skill in the art at the time of the invention to have optimized the amounts of each of these components, and the motivation to so would have been, as Huang suggests, to adjust the conductivity, the mechanical performance, tensile strength and self-adhering function (page 6).
Regarding claim 44, Huang teaches that the composition is biocompatible (Abstract).
Regarding claim 46, Huang teaches that the material can be stretched 500 times (Abstract).
Regarding claims 50-52, it is noted that the intrinsically conducting polymers, the nano clays and the elongated carbon nanostructures are not mandatorily present.
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 110305339, please refer to English machine translation for mapping) in view of Caplan et al (US 2003/0236300) and Omenetto et al (US 2016/0237128).
The discussion regarding Huang and Caplan in paragraph 6 above is incorporated here by reference.
Regarding claim 35, Huang teaches a silk fibroin which has beta folding structure (page 2, final paragraph) for use in hydrogel applications (Abstract). However, it fails to teach that the beta folding structure is in sheets or turns and fails to teach the amount of that structure.
Omenetto teaches a silk fibroin hydrogel which incorporates silk fibroin with a beta sheet structure within the range of 0 to 45 % ([0010]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the silk fibroin of Huang have the beta sheet structure in the amount as taught by Omenetto. One would have been motivated to do so in order to obtain the desired crystallinity for use in hydrogels (Omenetto, [0010]).
Claim(s) 41-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 110305339, please refer to English machine translation for mapping) in view of Caplan et al (US 2003/0236300) and Valluzzi et al (US 2007/0255042).
The discussion regarding Huang and Caplan in paragraph 6 above is incorporated here by reference.
Regarding claims 41-42, Huang teaches a silk fibroin which has beta folding structure (page 2, final paragraph) for use in hydrogel applications (Abstract).
However, fails to teach the inclusion of a divalent salt.
Valluzzi teaches a gel made from silk ([0023]) and incorporates a divalent salt (calcium) ([0061]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include the salt of Valluzzi in the composition of Huang. One would have been motivated to do so in order to break down the hydrogen bonding in the beta sheets of fibroin without breaking down the protein backbone. (Valluzzi, [0061]).
Regarding claim 43, modified Huang teaches that the salt concentration ranges from 1 to 12 M (Valluzzi, [0062]) and therefore, the amount of salt (presuming the use of calcium chloride) can be calculated to range from approx. 10 to 42.7 % by mass.
Claim(s) 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huang (CN 110305339, please refer to English machine translation for mapping) in view of Caplan et al (US 2003/0235300) and Hyde et al (US 2016/0282836).
The discussion regarding Huang and Caplan in paragraph 6 above is incorporated here by reference.
Regarding claim 45, Huang teaches that the composition has high stretchability (page 6), however, it fails to teach the recited Young’s modulus.
Hyde teaches a stretchable device (Abstract) which may be made from silk fibroin and has a Young’s modulus of less than 100 kPa ([0049]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the stretchable composition of Huang have the Young’s modulus as taught by Hyde. One would have been motivated to do so in order to receive the expected benefit of having a material which stretches well in medical applications such as a human hand, etc. (Hyde, [0048]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764