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 ACTION
This Office action regarding Application No. 18/015,956 to Kang et al., assigned to Seoul National University R & DB Foundation, filed 01/12/2023, and published as 2023/0293884A1 on 09/21/2023 is in response to applicants’ arguments/remarks and claims amendment filed 06/10/2026. Applicants’ response is given full consideration.
Status of the Claims
In the response filed 06/10/2026 applicant has amended the claims of the application. Claim 41 is now amended by incorporation of limitations from claims 43, 45, 47 , 49 and 51. Claim 49 is canceled. New dependent claim 61 is added. The status of the claims stand as follows:
Canceled 1-40, 49
Currently amended 41, 43, 45, 47,
Previously presented 42, 44, 46, 48, 50,
Withdrawn 51-60
3.5 New 61
Claims 41-48, 50-61 are currently pending in this application. Claims 51-60 have been previously withdrawn.
Claims 41-48, 50, 61 are under full consideration.
Withdrawal of Claims Rejection - 35 USC§ 102
The rejection of claims 41, 42, 44, 46, 48, 50 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Asgari (U.S. PG Publication 2008/0248086) have been overcome by the amendment of independent claim 41 and its dependent claims. Upon further consideration the claims are now rejected under 103 over the previously applied reference of Asgari (U.S. PG Publication 2008/0248086).
Claim Rejections – 35 USC § 103
The text of those sections of Title 35 U.S. Code not included in this section can be found in the prior Office Action.
Claim 41-48, 50, 61 are rejected under 35 U.S.C. 103 as being unpatentable over Asgari (U.S. PG Publication 2008/0248086)
Regarding Claim 41 Asgari discloses a class of implant materials for orthopedic, surgical, dental and traumatologic implants (Asgari paragraph 0014-0017), considered equivalent to electroceuticals. The recitation "A paste for producing biodegradable electroceuticals" is an intended use limitation that adds no patentable wight to the claim as noted below in paragraph 13. Asgari discloses at least one of the materials of the implant is biodegradable (Asgari paragraph 0039).
Asgari further discloses the material includes metallic material (Asgari paragraph 0016), the metallic material at least one of a metal or a metal alloy (Asgari paragraph 0018), and can include particles of metallic material (Asgari paragraph 0016, 0018, 0019, 0039, 0046) and refers to the metallic materials as functional compounds (Asgari paragraph 0039). Asgari also discloses it is in a particle form (Asgari paragraph 0016, 0018, 0019, 0039, 0046) having functional role in the paste (Asgari paragraph 0039), and can be in spherical particle form having particle size range of about 1 nm to about 8000 micrometer, preferably nano- or micro-sized particles (Asgari paragraph 0057), so are considered equivalent to the claimed functional inorganic powder.
Asgari discloses the material may include hydrophilic compounds such as polyethylene glycol (Asgari paragraph 0142), which is considered equivalent to the humectant. The instant specification also considers glycol compounds such as ethylene glycol as humectant (Instant Specification as published U.S. PG 2023/0293884 paragraph 0019).
Asgari discloses the material composition is in a viscous paste (Asgari paragraph 0071), and comprise of an organic material as a curable matrix fuming matrix forming non-particulate material preferably a polymer-solvent system (Asgari paragraph 0020), thus includes a matrix polymer and a solvent.
The claim recites, " a paste for producing biodegradable electroceuticals " This is intended use limitation. According to MPEP 2111.02 (II): "If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use (such as usable in a biodegradable electroceuticals as in this invention in claim 1) of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. V. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999)."
Asgari is silent about the volume fraction of the functional inorganic powder with respect to the total volume of the paste range from 0.35 to 0.41, from 0.17 to 0.23 and 0.05 to 0.08 when providing conductive property, semiconductive property and dielectric or insulating property respectively as recited in claim 41.
Asgari discloses the metallic material provide exemplary compositions with magnetic or signaling properties in general (Asgari paragraph 0047). Asgari also discloses the metallic material tune the physiological degradation rate from a few days up to twenty years (Asgari paragraph 0054). Asgari further discloses using a metal also allows to utilize the mechanical strength of these compounds and to realize tailored implants that both address the mechanical requirements e.g. immediately after implantation for supportive functions, as well as the biodegradability for later provision or facilitation of tissue ingrowth and incorporation of the residual implant material, if any, into the bone or other tissue (Asgari paragraph 0054). Thus, the amount of the metal, and consequently its volume fraction, is recognized as a result effective variable affecting particular desired functions of the implant material.
If a particular parameter is recognized as a result-effective variable as disclosed by Asgari (Asgari paragraph 0054), then the determination of the optimum or workable ranges of said parameter might be characterized as routine experimentation. MPEP 2144.05 II 28. Therefore, it would have been obvious to a person of ordinary skill in the art to have varied and optimized through routine experimentation the amount of the metallic material, considered equivalent to the functional inorganic powder, and consequently the volume of metallic material, to achieve the desired properties and results as disclosed by Asgari (Asgari paragraph 0054). See MPEP 2144.05 II.
Asgari discloses the viscous paste material has viscosity in a range of about 200 to 800 Pas (Asgari paragraph 0071), but Asgari is silent the disclosed viscosity is at a shear rate range from 1 s-1 to 100 s-1 and has a yield shear stress from 102 Pa to 103 Pa at shear strain range from 0.01% to 10%. However, materials of the same composition will have the same properties, and the paste disclosed by Asgari having a similar composition to the claimed paste, having the same viscosity will also have the same shear rate and shear strain as claimed. According to the MPEP 2112.01 II, "Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present." (In re Spada, 911 F.2d705, 709, 15 USPQ2d 1655, 1658, Fed. Cir. 1990) See MPEP 2112.01 II.
The material disclosed by Asgari has the same composition as the claimed material, and as noted above it includes at least one of a metal or a metal alloy (Asgari paragraph 0018), is in a particle form (Asgari paragraph 0016, 0018, 0019, 0039, 0046, 0057) equivalent to a powder; includes hydrophilic compounds such as polyethylene glycol (Asgari paragraph 0142), which is considered equivalent to the humectant; comprise of an organic material as a curable matrix fuming matrix forming non-particulate material preferably a polymer-solvent system (Asgari paragraph 0020), thus includes a matrix polymer and a solvent. Therefore, it will possess the same properties such as being employed in direct ink writing (DIW), such as in three-dimensional printing.
Regarding claim 42 and 44 Asgari discloses the metallic material that include particles of metallic material (Asgari paragraph 0018, 0019), and the metallic material particles include at least one of a metal or a metal alloy, selected from main group metals of the periodic system (which may include sodium, potassium, magnesium, calcium, germanium), silicon, transition metals such as molybdenum, tungsten, iron, zinc, and alloys or any mixtures thereof (Asgari paragraph 0046, 0048).
Regarding claim 43, 45 and 47 Asgari discloses the metallic material comprise preferably from about 1 to 99% wt% (Asgari paragraph 0109), the organic material comprise at least about 5 wt% (Asgari claim 50). The disclosed metallic material amount from about 1 to 99% wt% (Asgari paragraph 0109), includes the claimed range 1 g to 15 g of the total weight of about 17 g of all the ingredients of the paste composition (which is about 5 wt% (=1/17 x100) to (=15/17 x 100) 88 wt%), and the disclosed organic material of at least about 5 wt % also includes the claimed range 0.1 ml to 1 ml humectant and 0.05 g to 1 g matrix polymer. Similarly the compositions recited in claim 45 and 47 are included in the disclosed range of Asgari (Asgari paragraph 0109).
Regarding claim 46 Asgari discloses exemplary metallic particles include iron oxide, calcium oxide, magnesium oxide, metal nitrides (Asgari paragraph 0047, 0049).
Regarding claim 48 Asgari discloses the material includes as a solvent or plasticizer n - methyl-2-pyrolidone (NMP), (Asgari paragraph 0074), a biodegradable polymer polycaprolactones (Asgari paragraph 0068), a polymer selected from polyvinyl alcohol (Asgari paragraph 0066, 0069), and organic solvent tetrahydrofuran (THF), (Asgari paragraph 0074).
Regarding claim 50 Asgari discloses at least one of the metallic material and / or matrix- forming material is biodegradable (Asgari paragraph 0016, 0039). Asgari discloses that in a moldable composition (i.e., equivalent to the claimed paste) is used as a biodegradable polymer (Asgari paragraph 0040, 0067). In other exemplary embodiments the particles are selected from degradable metals or alloys (Asgari paragraph 0018, 0040, 0048, 0051, 0052), considered equivalent to the functional inorganic powder.
Regarding claim 61 the functional inorganic powder can be metallic particles, metals mixture, metal oxides (Asgari paragraph 0047-0050), referred to as metallic particles; and can have average diameter of 0.5 nm to 5000 µm and preferably between 30 nm and 250 µm (Asgari paragraph 0058) and since it is metallic it provides conductive property. The claimed ranges of 0.5µm to 10 µm is included in this disclosed range of between 30 nm and 250 µm . (Asgari paragraph 0058). According to the MPEP . According to the MPEP, "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (See MPEP 2131.03).
Response to Argument
In the response file on 06/10/2026 applicant has amended independent claim 41 by incorporation of elements from claims 43,45, 47, 49 and 51. Therefore, the previously presented rejection of independent claim 41 and dependent claims 42, 44, 46, 48, 50 under 102(a)(1) over Asgari (U.S. PG Pub. 2008/0248086) have been overcome by the amendment of the claim. Therefore, the rejection has been withdrawn.
Upon further consideration and search the claims are now rejected under 103 over Asgari.
Applicant argues that claim 41 has been amended to specifically include limitations that the claimed paste is configured to form electronic component while the reference of Asgari primarily involves moldable compositions for filling bones. Examiner notes that the material disclosed by Asgari has the same composition as the claimed biodegradable electroceutical. The material disclosed by Asgari includes metallic material, at least one of a metal or metal alloy considered equivalent to the inorganic component, a humectant such as glycol compounds, and the material being in a matrix polymer and a solvent. Thus, the material disclosed by Asgari is also capable of being configured as a biodegradable electroceutical as the claimed material. According to the MPEP "Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present." See MPEP 2112.01 II. The material disclosed by Asgari will also possess the same properties such as being employed in direct ink writing (DIW), such as in three-dimensional printing.
The composition of the components such as the inorganic metallic material, the amounts of the components making up the material, the volume of the particles, the diameter of the particles, the viscosity, the rheology are all variables that can be optimized by routine experimentation, and would have been obvious to a person of ordinary skill.
Applicant also argues that the claimed paste utilizes specific particle diameter and specific pairing while Asgari discloses a broad generic range, and specific pairing of volume fraction and particle size required to achieve the claimed yield stress range. Examiner notes that rejection of the claims regarding the volume fraction ranges (recited in claim 41) and the amounts of the inorganic powder, the humectant, and the matrix polymer and organic solvent recited in claims 43, 45, 47 is based on optimizing the amounts of theses components, and it is these very variables of the paste that can be optimized by routine experimentation, and applicant has not presented any persuasive evidence that such an optimization endeavor is not obvious to a person of ordinary skill. Examiner agrees that specific composition is needed to provide desired rheological properties. Examiner also notes that through an optimization process such a composition can be achieved when the materials have the same composition. Applicant needs to persuasively establish that such an optimization process is not obvious to a person of ordinary skill.
For reasons presented here examiner notes that the disclosure of Asgari renders the claimed invention obvious. This action is made final.
Conclusion
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 OMAR M KEKIA whose telephone number is (571)270-5918. The examiner can normally be reached 9:00am-5:00 pm,.
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/JONATHAN G JELSMA/Primary Examiner, Art Unit 1722
/OMAR M KEKIA/Examiner, Art Unit 1722
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