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 .
DETAILED ACTION
Response to Election
1. Applicant’s election of claims 1-12, without traverse, in the reply filed on November 7, 2025, is acknowledged. Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is deemed proper and is therefore made FINAL.
Information Disclosure Statement
2. The references disclosed within the information disclosure statement (IDS) submitted on July 18, 2023, and August 29, 2025, have been considered and initialed by the Examiner.
Claim Rejections – 35 USC § 102(a)(1)
3. 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.
4. Claims 1-2 and 7-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by (CN 102224334 A).
Harima discloses a base, a drive control device (transient electronics) and a degradation control unit (paragraph 182). In claim 1, the phrase, “for controlling the degradation of transient electronics”, “for controlling the degradation for degrading transient electronics that are degraded by a biological fluid at a desired time point”, “for controlling the degradation time point of the transient electronics by sealing the transient electronics from a biological fluid with a porous polymer layer in which biocompatible oil is supported in internal pores” is a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Concerning claim 2, Harima discloses a base, a drive control device (transient electronics) and a degradation control unit (paragraph 182). In claim 2, the phrase, “wherein as time elapses after being in contact with the biological fluid, the biocompatible oil which is supported on the porous polymer layer of the composite for controlling the degradation of transient electronics flows out toward the biological fluid, and as a result, the biological fluid flowing into empty pores of the porous polymer layer eventually comes into contact with the transient electronics to degrade the transient electronics” constitutes a ‘capable of’ limitation and that such a recitation that an element is ‘capable of’ performing a function is not a positive limitation but only requires the ability to so perform.
Concerning claim 7, Harima discloses a base, a drive control device (transient electronics) and a degradation control unit (paragraph 182). In claim 1, the phrase, “for controlling the degradation time point of the transient electronics by sealing the transient electronics from a biological fluid with a porous polymer layer in which biocompatible oil is supported in internal pores” is a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Concerning claim 8, Harima discloses a base, a drive control device (transient electronics) and a degradation control unit (paragraph 182). In claim 1, the phrase, “for controlling the degradation time point of the transient electronics by sealing the transient electronics from a biological fluid with a porous polymer layer in which biocompatible oil is supported in internal pores” is a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Concerning claims 9-11, Harima discloses a base, a drive control device (transient electronics) and a degradation control unit (paragraph 182). In claim 1, the phrase, “for controlling the degradation time point of the transient electronics by sealing the transient electronics from a biological fluid with a porous polymer layer in which biocompatible oil is supported in internal pores” is a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Concerning claim 12, Harima discloses a base, a drive control device (transient electronics) and a degradation control unit (paragraph 182). In claim 1, the phrase, “for controlling the degradation of transient electronics”, “for controlling the degradation for degrading transient electronics that are degraded by a biological fluid at a desired time point”, “for controlling the degradation time point of the transient electronics by sealing the transient electronics from a biological fluid with a porous polymer layer in which biocompatible oil is supported in internal pores” is a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Claim Rejections – 35 USC § 103
5. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
6. Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Harima (CN 102224334 A).
Harima discloses a base, a drive control device (transient electronics) and a degradation control unit (paragraph 182). Harima does not explicitly disclose the thickness of the transient electronics; however thickness modifications involve a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art and therefore obvious. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232 (1984) See MPEP 2144.04, as in claim 4.
Concerning claim 6, Harima discloses a base, a drive control device (transient electronics) and a degradation control unit (paragraph 182). Harima does not appear to explicitly teach the elongation of the degradation control unit, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the article is carried out using material and process conditions which are substantially identical to those disclosed by applicants. Therefore the article discussed above would be expected to meet the claimed elongation.
Claim Objections
7. Claims 3, 5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The closest prior art does not teach or suggest the recited composite further including where the support and the porous polymer layer comprise at least one selected from the group consisting of polycaprolactone (PCL), polydioxanone (PDO), poly(L-lactide) (PLLA), poly(DL-lactide-co-glycolide) (PLGA), polyethylene oxide (PEO), polylactic acid (PLA) and polyvinyl alcohol (PVA), and wherein the porous polymer layer is formed of a polymer which is soluble in the biological fluid in order to control the degradation time point of the transient electronics together with the biocompatible oil.
The closest prior art does not teach or suggest the recited composite further including transient electronics comprise at least one of a water-soluble conductive transient organic material or a water-soluble conductive transient inorganic material.
The prior art does not teach motivation or suggestion for modification to make the invention as instantly claimed.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE D FERGUSON/Examiner, Art Unit 1781