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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on 11/5/2025 is acknowledged.
Claims 11-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/5/2025.
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, ’011 only describes contacting hydrogels with a net negative charge with a solution of polycations to effect shrinkage, whereas instant claim 1 uses more broader terminology. Accordingly, written support for the full breadth claimed (e.g. polycationic hydrogel contacted with polyanionic solution) is not found. Claims 2 and 4-10 depend from claim 1 and therefore contain all of the limitations of claim 1. Further, the full scope of the limitations of dependent claims 5-7, 9, and 10 are not found within the provisional. Claim 3, which limits claim 1 to instances where the hydrogel is a polyanionic hydrogel, and the polyionic solution is a polycationic solution, is seen to be supported by the provisional.
Consequently, claim 3 is construed as having a filing date of 11/19/2020 and claims 1, 2, and 4-10 are construed as having a filing date of 11/19/2021.
Drawings
The drawings are objected to because Page 7/14 has Figures 8A through 8D and then 8H and 8I. Figures 8E, 8F, and 8G are not present. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
The disclosure is objected to because of the following informalities: The specification refers to Figures 8E and 8F within ¶ 15, but there are no Figures 8E and 8F. The drawings present 8H and 8I, but a brief description of these drawings is not present. Appropriate correction is required.
The disclosure is objected to because of the following informalities: “9A-9E” at the beginning of ¶ 16 should be “9A-9F”. Appropriate correction is required.
The disclosure is objected to because of the following informalities: the description of Figures 10C and 10E within ¶ 17 do not appear to correspond to what is illustrated in the Figures. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-10 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, 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.
Regarding Claim 2, Gong teaches the hydrogels are 3D-printed hydrogels on a surface prior to immersion (Abstract; Page 12).
Regarding Claims 3-5, Gong teaches embodiments where hyaluronic acid hydrogel (polyanionic) is treated with chitosan (polycationic) to effect shrinkage (Figure 1A).
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).
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759