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 .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US 2016/0075987).
Regarding claims 1 and 9
Zhang discloses a method for preparing a 3-D microstructure including loading an organic solvent containing magnetic particles in a mold having a 3-dimensional pattern, applying a magnetic field to move the particles into the 3-D pattern of the mold, removing at least 70 % of the solvent, loading a polymer onto a mold, and forming the 3-D microstructure by releasing the polymer from the mold, where the 3-D microstructure includes polymer pillars containing magnetic particles. (para 0029).
Zhang discloses that the magnetic particles are more highly concentrated in the free ends (see Figure 6).
Zhang discloses that polymerizable compound can be placed on a substrate (i.e., a mold) and polymerizing to form a polymeric nanostructure (para 0075). Zhang further discloses using polydimethylsiloxane and curing it after placing into the mold which implies the use of a monomer (para 0127).
Whether the magnetic particles are fist added to the mold then monomer mixture is added, or added to the monomer mixture before being placed in the mold, it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04, section C, and also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930).
Based on how the polymer with pillars is made in a mold, the pillars would necessarily have a plurality of free ends, with entrapped magnetic particles at the free ends (see Figures 1, 6, 12, 13, 15, 16A, 16B, 16C and 17).
Regarding claim 8
Zhang discloses that the magnetic nanoparticles can be made from iron or a compound thereof (para 0024). As such it would be prima facie obvious to select superparamagnetic iron oxide as the iron compound for magnetic applications as it has the strongest paramagnetism.
Regarding claim 10
Zhang discloses that the height of the pillars can be less than 20 microns, and that the size or width can be less than 5 microns (para 0097).
Zhang also discloses that the width gap can be less than 7 microns (para 0081).
As the size ranges of Zhang overlap the instant invention, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US 2016/0075987), as applied to claims 1-3 and 8-10 above, in view of Dahlgren et al. (US 2009/0076597).
Regarding claims 4-7
Although, Zhang does not teach a catheter, Zhang does teach that his invention can be used in biomedicine and biomedical devices (paras 0058, 0064, 0080, 0108, 0136). However, Dahlgren medical devices discloses a magnetic wire (2) extending helically through a catheter (13) (see paras 0018 and Fig. 1A). The wire (2) is coupled to a power source (28) and is configured to produce a magnetic field (31); the power source provides pulsed DC output to the wire (2) (para 0019). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Zhang by producing his polymer structure on the inside surface of the catheter substrate of Dahlgren, with a reasonable expectation of success, and the expected benefit of being able to control the catheter with magnetism to make the pillars move, as suggested by Dahlgren.
Response to Arguments
Applicants argue against the prior art rejections.
Applicants argue that the examiner has failed to identify where each of the steps claimed in the invention are shown in the prior art. This is not persuasive as the examiner has pointed out in the rejection where these steps are found.
Applicants argue that their invention has specific steps. While this is true the reference either taught them, or the rejection stated why they would be obvious to one of ordinary skill in the art.
Applicants argue that as taught in the specification migration of the particles requires positioning of the mold in a vacuum desiccator. This is not persuasive as it is not a claimed feature, and limitations from the specification are not read into the claims. Further, Zhang discloses using a magnet to position the particles.
Applicants argue that the reference of Zhang would not necessarily move the particles to be positioned at the free ends. This is not persuasive and applicants attention is directed to Figure 6f, which shows the plurality of particles concentrated in the free ends of the pillars.
Applicants argue that the figures show a structure having particles uniformly distributed in the pre-polymer. This is not persuasive and again applicants attention is directed to Figure 6f, which shows the magnetic particles concentrated in the free ends or pillars, and not homogenously distributed throughout the pre-polymer as alleged.
Applicants argue that the examiner has taken the position that the migration of the particles would be inherent. This is not persuasive as Zhang discloses the use of a magnetic to move the particles, and shows the particles concentrated in the free ends/pillars (Figure 6f) and not homogenously distributed throughout the formed polymer structure.
Applicants argue that in their invention the particles are in the magnetic field for at least an hour. This is not persuasive as limitations from the specification are not read into the claims, and this is not a claimed feature.
Applicants argue that Zhang is not directed to medical devices. This is not persuasive and applicants attention is directed at least towards paragraph 0064, which states in part; “Microstructures prepared using capillary or interfacial force can be used in microelectromechanical systems, biomedicine, biomedical device and nanotechnology.”
Applicants argue that wire (2) of Dahlgren does not produce a magnetic field, and is instead heated. This is not persuasive as when electricity is passed through the wire to heat it, it will also produce a magnetic field.
Applicants argue that the examiner failed to address the limitations of claim 6 (i.e., a helical wire). This is not persuasive as Dahlgren discloses a helical wire.
Applicants arguer that the examiner has failed to address the limitations of claim 7. This is not persuasive as Dahlgren discloses coupling the wire to a power source, which would produce a magnetic field, which the skilled artisan would expect would move the pillars as they contain magnetic particles.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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