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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant’s election without traverse of group II, claims 10 - 20 in the reply filed on 12/17/25 is acknowledged. The restriction erroneously put product claim 10 into group 1.
Claim Rejections - 35 USC § 112
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.
Claims 10, 11 and 13 are 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.
Regarding claim 10 it is unclear if the SMP requires only one of the macromer, polymer and photoinitiator, a combination of all three or the macromer and/or the polymer. For examination purposes claim 10 was interpreted as “A shape memory polymer scaffold, the SMP scaffold comprising at least one macromer and/or a polymer and a photoinitiator to crosslink the macromer or polymer, where at the at least one macromer or polymer comprise a star configuration”.
Claims 2 – 20 are rejected as being dependent on a rejected independent claim.
As to claim 11, with the use of “e.g” and “i.e” it is unclear what components are included in the macromer and polymer group. For purposes of examination claim 11 was interpreted as “The SMP scaffold of claim 10, wherein the at least one macromer or polymer is selected from the group consisting of linear-poly(s-caprolactone)-diacrylate (linear-PCL-DA), linear- PCL, star-PCL-tetraacrylate (star-PCL-TA), and star-PCL and optionally combined with one or more macromer or polymer selected from the group consisting of linear-poly(L-lactic acid) (linear-PLLA), star-PLLA (star-PLLA), natural polymers, synthetic polymers, poly(dimethylsiloxane) (PDMS), poly(propylene fumarate)), semi-synthetic polymers, copolymers, polyesters, polyolefins and polyvinyl.”
Regarding claim 13, it is unclear what the limitation “by combination with a polymer” represents.
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) 10 – 11 and 13 are rejected under 35 U.S.C. 102 (a)(1)] as being anticipated by US 20170021060 A1 to Grunlan et al. hereinafter “Grunlan”.
Grunlan is directed to shape memory polymer (SMP) tissue scaffolds [0003].
Regarding claims 10 – 11 and 13, Grunlan teaches the formation of SMP tissue scaffolds at Example 1 comprising PCL diacrylate (polymer) and a photoinitiator solution (photoinitiator) [0033].
Conclusion
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PAS 1/22/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759