DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶) where # denotes the page number and ¶ denotes the paragraph number of the pregrant publication associated with the application, US 2024/0076190. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
This office action is in response to the papers as filed 8/21/2023.
Claim(s) 1-10 is/are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on: 8/21/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
I. Claims 7-10 – or as stated below – is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 6 recites alternatives “a)” or “b),” not repeated here. Dependent Claims 7-9 recite limitations that might appear to limit alternatives “a)” and “b)” in Claims 6-8, but do not explicitly do so. Instead, Claims 6-8 similarly recite alternatives “a)” or “b).” As such, Claim 7 embraces an embodiment where – for example – Claim 6, limitation a) is followed by claim 7, limitation b). Rewritten, and omitting alternatives, this looks like this:
7/6. A process of making a three dimensional structure comprising graphene oxide said process comprising:
a) contacting a support scaffold with graphene oxide to form a graphene oxide support scaffold, and actively and/or passively drying said graphene oxide on said support scaffold, optional said drying is conducted under vacuum; optionally said support scaffold is contacted with graphene oxide and dried at least twice;
b) three dimensionally printing (i.e., 3-D printing) a graphene oxide ink to form a porous three dimensional structure comprising graphene oxide, said three dimensional structure comprising graphene oxide not comprising a support scaffold, preferably said three dimensional structure being selected from a graphene oxide cartridge or graphene oxide mesh.
The Specification does not support this embodiment. As understood, “three dimensionally printing” is mentioned only in the Specification, at (S. 4-5: [0080]). The Specification does not support the combination recited above. Other combinations are likewise not supported (e.g. limitation b) from Claim 6, followed by limitation a) from Claim 7, etc.). These are not detailed here. If Applicants disagree, a claim chart reading the claims on the Specification would be helpful in withdrawing the rejection.
Three independent / 20 dependent claims are allowed with the standard filing fee. See generally MPEP 607 III. Writing a separate set of claims for “limitation a)” and a separate set of claims for “limitation b)” would obviate this issue. Other issues exist, below:
Claims 7-9 repeat much of what is in Claim 6, adding a new limitation in each claim. While the language is present in the Specification (S. 4: [0079] – 5: [0080]), the repetition does not have support. For example, Claim 9, with all of the “limitation a)”s and alternative limitations omitted, would read like this:
9/8/7/6. A process of making a three dimensional structure comprising graphene oxide said process comprising:
a) contacting a support scaffold with graphene oxide to form a graphene oxide support scaffold, and actively and/or passively drying said graphene oxide on said support scaffold, optional said drying is conducted under vacuum; optionally said support scaffold is contacted with graphene oxide and dried at least twice;
a) contacting a support scaffold with graphene oxide to form a graphene oxide support scaffold, and actively and/or passively drying said graphene oxide on said support scaffold, optional said drying is conducted under vacuum; optionally said support scaffold is contacted with graphene oxide and dried at least twice, said contacting comprising spraying said support scaffold with graphene oxide, dipping said support scaffold into graphene oxide solution and/or coating said support scaffold with a graphene oxide solution;
a) contacting a support scaffold with graphene oxide to form a graphene oxide support scaffold, and actively and/or passively drying said graphene oxide on said support scaffold, optional said drying is conducted under vacuum; optionally said support scaffold is contacted with graphene oxide and dried at least twice, said contacting comprising spraying said support scaffold with graphene oxide, dipping said support scaffold into graphene oxide solution and/or coating said support scaffold with a graphene oxide solution; said support scaffold comprising pores having walls said pores passing through said support scaffold;
a) contacting a support scaffold with graphene oxide to form a graphene oxide support scaffold, and actively and/or passively drying said graphene oxide on said support scaffold, optional said drying is conducted under vacuum; optionally said support scaffold is contacted with graphene oxide and dried at least twice, said contacting comprising spraying said support scaffold with graphene oxide, dipping said support scaffold into graphene oxide solution and/or coating said support scaffold with a graphene oxide solution; said support scaffold comprising pores having walls said pores passing through said support scaffold, during said process, said graphene oxide being attached to the walls of said pores and said support scaffold's exterior surface.
There is no support for this process (repeating “contacting a support scaffold with graphene oxide,” etc. four times) in the Specification. If Applicants disagree, a claim chart reading the claims on the Specification would be helpful in withdrawing the rejection.
Note the requirement for dependent claims in 35 U.S.C. 112(d). Dependent claims contain a reference to a claim previously set forth and then specify a further limitation. It is not necessary to repeat the language of the previous claim. Note the example of the dependent claims in the references applied below as an example of writing dependent claims. Generally, the formula is: “The method of claim __, further comprising ______,” etc.
Dependent claims not specifically addressed import the issues of the claims from which they depend.
112(b)
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.
I. Claims 6-10 – or as stated below – is/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.
Claim 6 recites alternatives “a)” or “b),” not repeated here. Alternative a) recites “optional said drying.” This suggests a previous optional drying step was introduced in the claim. No such optional step exists, and the language lacks antecedent basis. The Examiner recommends an amendment reciting “optionally conducted under vacuum…” if the intent is to make the vacuum condition optional.
Claims 7-9 repeat limitations from Claim 6. As discussed above in the written description rejection, this sequence of repeated steps is not supported. However, to the extent it somehow is, it is unclear whether or not the added steps in each dependent claim are to be carried out on the structure of the previous claim (i.e. whatever is made by limitation a) or limitation b)), or whether this requires another process of making whatever is made in limitation a) or limitation b) with their added steps. Stated yet another way: does Claim 9 make four scaffolds or one?
Dependent claims not specifically addressed import this issue.
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.
I. Claim(s) 1-5 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0101398 to Worsley, et al.
With respect to Claim 1, this claim requires “[a] scaffold comprising graphene oxide.” Worlsey teaches a graphene oxide scaffold. (Worsley 4: [0066]: “a graphene oxide scaffold;” Figs. 8, 11).
As to Claim 2, graphene oxide with a three dimensional structure comprising an exterior surface is taught. Id. Pores are optional, so they are not addressed. Alternatively, pores are taught. (Worsley 3: [0056]-[0057]; Figs.). Graphene oxide is so attached. (Worsley 3: [0059] et seq.; Figs.; passim).
As to Claim 3, pores are taught. (Worsley 3: [0056]-[0057]; Figs.).
As to Claim 4, graphene oxide is so attached. (Worsley 3: [0056]-[0057]; Figs.).
As to Claim 5, nanotubes are taught. (Worsley 3: [0056]). Metal nanowires are interpreted as fibers. Id. Nanoparticles are taught throughout. See e.g. (Worsley 1: [0006]).
II. Claim(s) 1-10 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Garcia-Tunon, et al., Graphene Oxide: An All-in-One Processing Additive for 3D Printing, ACS Appl. Mater. Interfaces 2017; 9: 32977-32989 (hereinafter “GT at __”).
With respect to Claim 1, this claim requires “[a] scaffold comprising graphene oxide.” What is interpreted as a graphene scaffold is taught. (GT at 32980, Fig. 3).
As to Claim 2, pores/walls are taught. (GT at 32980, Fig. 3).
As to Claim 3, pores/walls are taught. (GT at 32980, Fig. 3).
As to Claim 4, GO is attached to the walls. (GT at 32980, Fig. 3).
As to Claim 5, what is interpreted as a mesh is taught. (GT at 32980, Fig. 3).
With respect to Claim 6, this claim presents alternatives. One alternative is: “a) contacting a support scaffold with graphene oxide to form a graphene oxide support scaffold, and actively and/or passively drying said graphene oxide on said support scaffold, optional said drying is conducted under vacuum; optionally said support scaffold is contacted with graphene oxide and dried at least twice.” This alternative is not addressed.
A second alternative is “b) three dimensionally printing (i.e., 3-D printing) a graphene oxide ink to form a porous three dimensional structure comprising graphene oxide, said three dimensional structure comprising graphene oxide not comprising a support scaffold.” GT teaches 3D printing graphene oxide inks. (GT at 21979 – Printing).
As to Claim 7, alternative a) is not addressed. What is interpreted as a mesh is taught. (GT at 32980, Fig. 3). Alternatively or additionally, what is interpreted as a graphene oxide cartridge is taught. (FT at 32981, Fig. 4).
As to Claim 8, alternative a) is not addressed. What is interpreted as a mesh is taught. (GT at 32980, Fig. 3). Alternatively or additionally, what is interpreted as a graphene oxide cartridge is taught. (GT at 32981, Fig. 4).
As to Claim 9, alternative a) is not addressed. What is interpreted as a mesh is taught. (GT at 32980, Fig. 3). Alternatively or additionally, what is interpreted as a graphene oxide cartridge is taught. (GT at 32981, Fig. 4).
As to Claim 10, what is interpreted as a mesh is taught. (GT at 32980, Fig. 3).
III. Claim(s) 1 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Raslan, et al., Graphene oxide and reduce graphene oxide-based scaffolds in regenerative medicine, International Journal of Pharmaceuticals 2020; 580: 119226, pp. 1-14 (hereinafter “Raslan at __”).
With respect to Claim 1, this claim requires “[a] scaffold comprising graphene oxide.” Raslan teaches a graphene oxide scaffold. See (Raslan at 6; passim).
IV. Claim(s) 1-9 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Belaid, et al., Development of new biocompatible 3D printed graphene oxide-based scaffolds, Materials Science & Engineering C 2020; 110: 110595, pp. 1-10 (hereinafter “Belaid at __”).
With respect to Claim 1, this claim requires “[a] scaffold comprising graphene oxide.” Belaid teaches graphene oxide scaffolds. (Belaid at 2 – 2.2. Preparation of the PLA/GO scaffolds).
As to Claim 2, pores and walls are taught. (Belaid at 2 – 2.3. Morpohological properties). See also (Belaid at 4, Fig. 1).
As to Claim 3, pores and walls are taught. (Belaid at 2 – 2.3. Morpohological properties). See also (Belaid at 4, Fig. 1).
As to Claim 4, GO is attached to walls/pores. (Belaid at 4, Fig. 1).
As to Claim 5, what is construed as a mesh is taught. (Belaid at 4, Fig. 1).
With respect to Claim 6, this claim presents alternatives. One alternative is: “a) contacting a support scaffold with graphene oxide to form a graphene oxide support scaffold, and actively and/or passively drying said graphene oxide on said support scaffold, optional said drying is conducted under vacuum; optionally said support scaffold is contacted with graphene oxide and dried at least twice.” This alternative is not addressed.
A second alternative is “b) three dimensionally printing (i.e., 3-D printing) a graphene oxide ink to form a porous three dimensional structure comprising graphene oxide, said three dimensional structure comprising graphene oxide not comprising a support scaffold.” A 3D scaffold is printed. (Belaid at 2 – 2.2. Preparation of the PLA/GO scaffolds).
As to Claim 7, the filament is interpreted as a cartridge. Id.
As to Claim 8, the filament is interpreted as a cartridge. Id.
As to Claim 9, the filament is interpreted as a cartridge. Id.
V. Claim(s) 1-5 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0330833 to Ruiz, et al.
With respect to Claim 1, this claim requires “[a] scaffold comprising graphene oxide.” Ruiz teaches a scaffold comprising graphene oxide. (Ruiz 6: [0066]). Alternatively or additionally, Ruiz teaches coating PVDF filters with GO. (Ruiz 5: [0063]). This is interpreted as a scaffold.
As to Claim 2, a support is taught. (Ruiz [0046]). Discussion of filters more than reasonably suggests pores to facilitate flow. Id.
As to Claim 3, attachment to the outside of the scaffold is taught. (Ruiz 5: [0063]).
As to Claim 4, graphene oxide is taught. (Ruiz 5: [0063]).
As to Claim 5, graphene oxide is taught. (Ruiz 5: [0063]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2018/0022023 to Therriault, et al. (note 3D printing).
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736