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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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).
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/116,011, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, the full scope of the limitations of dependent claims 5-7, 9, and 10 are not found within the provisional application 63/116/011.
Consequently, claims 1, 2, 4, and 8 are construed as having a filing date of 11/19/2020 and claims 5-7, 9, and 10 are construed as having a filing date of 11/19/2021.
Specification
The disclosure is objected to because of the following informalities: the description of Figures 1E and 1F within ¶ 8 do not appear to correspond to what is illustrated in the Figures. Appropriate correction is required.
The disclosure is objected to because of the following informalities: A description of Figure 1G is not found within the brief description of the figures of the specification. Appropriate correction is required.
Claim Rejections - 35 USC § 102
Claim(s) 1, 2, and 4-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gong (Nature Communications, 2020, 11:1267).
Gong was published on 3/9/2020. For those claims having a filing date of 11/19/2021, none of the exceptions afforded under 35 USC 102(b)(1) are applicable.
For those claims having a filing date of 11/19/2020, the Gong reference lists several additional authors in addition to those listed as inventors in the instant application. Since it is not readily apparent that Gong is an inventor-originated disclosure, Gong is treated as prior art under 35 USC 102(a)(1). See MPEP 2153.01(a).
It is noted the Gong reference itself lists each author’s contribution at Page 14, of which it is explicitly stated authors other than those listed as inventors in the instant application contributed equally (footnotes of Page 1).
Regarding Claim 1, 4, and 5, Gong teaches methods of shrinking hydrogels comprising contacting a polyionic hydrogel with a solution of polyions of opposite net charge (Abstract). Since the hydrogels are shrunken, it is implied an amount of time to decrease hydrogel volume elapsed.
See also Figures 1, 2, 3, 4, and 5, the shrinking protocols throughout pages 11-13, and supplementary data at Figures 2-23 and 26-37 and Table 1; each detailing specific protocols, conditions, and/or tests by which polyionic hydrogel is contacted with a solution of polyions of opposite net charge to effect shrinkage. Each of these embodiments are individually relied upon in the alternative.
Gong teaches embodiments where hyaluronic acid hydrogel (polyanionic) is treated with chitosan (polycationic) to effect shrinkage (Figure 1A).
Regarding Claim 2, Gong teaches the hydrogels are 3D-printed hydrogels on a surface prior to immersion (Abstract; Page 12).
Regarding Claim 6, Gong teaches embodiments where hydrogel % volume decreases from 100 to roughly 10 (Figure 1D), which is greater than 5 fold.
Regarding Claim 7, Gong teaches treating hydrogels over a period of 24 hours (Figure 1E; Figure 2H), of which time frames prior are deemed to be complete.
Regarding Claim 8, Gong teaches embodiments where shrinkage occurs in PBS (Figure 1E), construed as cell culture medium. See also supplementary Figure 36.
Regarding Claim 9, Gong teaches rate of shrinkage can change with charge density of chitosan (Supplementary Table 1). Alternatively, since there is no perceivable difference in structure between the hydrogels/polyionic materials claimed and those taught by Gong, such features are seen to be intrinsically present in the absence of evidence to the contrary.
Regarding Claim 10, Gong teaches embodiments where hydrogels are created from HAMA macromers at roughly 2 wt% in aqueous solutions (Pages 11-12).
Response to Arguments
Applicant's arguments filed 6/17/2026 have been fully considered but they are not persuasive.
Applicant argues Gong is within the 1 year grace period and represents work by the present inventors. This is not found persuasive.
Various claims have an effective filing date of 11/19/2021. For these claims, the exception afforded under 35 USC 102(b)(1) is not applicable since Gong was published more than one year prior.
With respect to the remaining claims, the Gong reference lists several additional authors in addition to those listed as inventors in the instant application. Since it is not readily apparent that Gong is an inventor-originated disclosure, Gong is treated as prior art under 35 USC 102(a)(1). See MPEP 2153.01(a).
It is noted the Gong reference itself lists each author’s contribution at Page 14, of which it is explicitly stated authors other than those listed as inventors in the instant application contributed equally (footnotes of Page 1). Thus, the Gong reference itself explicitly indicates it is not an inventor-originated disclosure.
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 STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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