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 .
Drawings
The objection to the drawings, outlined in the previous Office Action, has been overcome. Inventor has submitted properly labeled drawings.
Claim Objections Withdrawn
The objections to claims 3, 11, 16, 32 and 36, outlined in the previous Office Action, have been overcome by inventor’s amendment. The amendment corrects the claim texts as appropriate. (Claims 32 and 36 have been treated on the merits.)
The objection to claim 6 (as being dependent upon a base claim which was also objected to) is withdrawn. (But note the new objection below.)
Claim Objections, NEW
Claim 1 is objected to because of the following informalities: in the fifth text line of the claim, the term “…isa…” should properly be the two words: …is a….
Appropriate correction is required.
Claim 6 is objected to because of the following informalities: in the fifth text line of the claim, for grammatical reasons, the phrase “…the wherein…” (“…and wherein the wherein [emphasis added] the stimulus…”) should be deleted.
Appropriate correction is required.
Claim 36 is objected to because of the following informalities: in the first text line of the claim, for grammatical reasons, the phrase “…wherein second the external stimulus is…” should properly be: …wherein the second external stimulus is….
Appropriate correction is required.
Inventor’s assistance is again respectfully requested in correcting any other minor grammatical and/or spelling errors which may be present in the claim set.
112(a) Rejections Withdrawn
The rejection of claims 46, 47, 49 and 50 under 35 USC 112(a) or 35 USC 112 (pre-AIA ), first paragraph, outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment narrows the scope of the claimed subject matter such that it is now enabled.
Claim Rejections - 35 USC § 112(b), NEW
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 32 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The limitation of part (ii) of the claim is unclear (“…one or more reagents capable of forming the injectable hydrogel comprising [emphasis added] so as to form an injected injectable hydrogel…”). In particular, inclusion of the term comprising introduces a grammatical ambiguity into the claim.
The examiner respectfully suggests a slight rewording, something along the lines of: …one or more reagents capable of forming the injectable hydrogel so as to form an injected injectable hydrogel…”.
Claim 36 is also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claim depends, or ultimately depends, from an indefinite claim yet does not relieve the indefiniteness. Dependent claim 36 is also, therefore, indefinite.
112(d) Rejections Withdrawn
The rejection of claim 50 under 35 USC 112(d) or 35 USC 112 (pre-AIA ), fourth paragraph, outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment rewrites the claim in proper dependent form.
Allowability Withdrawn
The allowability of claims 1, 2, 9, 18, 22, 23, 26, 30, 31 and 42 is withdrawn.
Allowable Subject Matter
Claims 2, 3, 9, 11, 16, 18, 22, 23, 26, 30, 31, 42, 46, 47, 49 and 50 are objected to as being dependent upon a base claim which has been objected to, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. As noted in the previous Office Action, the subject matter of these claims is allowable subject matter.
Conclusion
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 BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
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, Ali Soroush, can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 4/6/2026
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