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 .
Receipt is acknowledged for amendment and remarks filed 09/04/2026.
Claims 16, 23, 31 and 35 are amended.
New claims 38-42 are added.
Claim 28 is canceled.
Claims 16-21, 23-27 and 29-42 are pending.
Priority
This application is a 371 of PCT/EP2021/087200 filed 12/22/2021 and which claims benefit of Germany application 10 2020 134 827.4 filed 12/23/2020.
Response to Arguments
Applicant appears to be arguing that the polyurethane is the solid phase of the hydrogel and that polyurethane is a matrix and is porous. Claim 16 states that the solid phase is polyurethane and is porous. Further claim 23 also says that the solid phase is polyurethane and is porous. Based on the new limitation in the claims and the arguments, the rejection under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Aslam (US 20190046547 A1), and the rejection under 35 U.S.C. 103 as being unpatentable over Cartmell et al., (EP 0 630 629 A1) in view of Shima Tavakoli et al., “Advanced Hydrogels as Wound Dressings” in Biomolecules, 2020, pp 1-20, and the rejection under 35 U.S.C. 103 as being unpatentable over Aslam (US 20190046547 A1) in combination with Shima Tavakoli et al., “Advanced Hydrogels as Wound Dressings” in Biomolecules, 2020, pp 1-20, and Abhishek Gupta et al., “The production and application of hydrogels for wound management: A review” in European Polymer Journal, 2019, 134-151, and the rejection under 35 U.S.C. 103 as being unpatentable over Aslam (US 20190046547 A1) in combination with Shima Tavakoli et al., “Advanced Hydrogels as Wound Dressings” in Biomolecules, 2020, pp 1-20, and Abhishek Gupta et al., “The production and application of hydrogels for wound management: A review” in European Polymer Journal, 2019, 134-151, as applied to claims 16 and 23, in view of Junginger et al. (US 9579413 B2), and the rejection under 35 U.S.C. 103 as being unpatentable over Aslam (US 20190046547 A1) in combination with Shima Tavakoli et al., “Advanced Hydrogels as Wound Dressings” in Biomolecules, 2020, pp 1-20, and Abhishek Gupta et al., “The production and application of hydrogels for wound management: A review” in European Polymer Journal, 2019, 134-151, as applied to claim 23, in view of Miinea et al., (US 20190321507 A1), and the rejection under 35 U.S.C. 103 as being unpatentable over Aslam (US 20190046547 A1) in combination with Shima Tavakoli et al., “Advanced Hydrogels as Wound Dressings” in Biomolecules, 2020, pp 1-20, and Abhishek Gupta et al., “The production and application of hydrogels for wound management: A review” in European Polymer Journal, 2019, 134-151, as applied to claims 23 and 28, in view in view of JP 2018509455 A, Eng Trans, and the rejection under 35 U.S.C. 103 as being unpatentable over Aslam (US 20190046547 A1) in combination with Shima Tavakoli et al., “Advanced Hydrogels as Wound Dressings” in Biomolecules, 2020, pp 1-20, and Abhishek Gupta et al., “The production and application of hydrogels for wound management: A review” in European Polymer Journal, 2019, 134-151, as applied to claims 16 and 23, in view of JP 2018531652 A, Eng Trans, PE2E, are all withdrawn.
However, the amendment stating that the solid phase is porous polyurethane is not envisioned by the specification as filed and raises the issue of new mater. Mew Matter rejection is being mad below.
The rejections on the ground of non-statutory double patenting as being unpatentable over claims 1 and 7; and 1-14 of U.S. Patent Nos. 10130531 B2 and 9579413 B2, respectfully, in view of Shima Tavakoli et al., “Advanced Hydrogels as Wound Dressings” in Biomolecules, 2020, pp 1-20, and Abhishek Gupta et al., “The production and application of hydrogels for wound management: A review” in European Polymer Journal, 2019, 134-151 are also withdrawn because the issued claims do not teach transparent hydrogels having porous (foam) solid polyurethane.
New Rejections
Necessitated by Amendment
Claim Rejections - 35 USC § 112
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.
Claims 16-21, 23-27 and 29-42 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. This is New Matter rejection.
Amended claims 16 and 23 say that “… the solid phase is a polyurethane-based three-dimensional matrix having pores ….” The as filed specification does not envision the solid phase to be polyurethane or polyurethane based three-dimensional matrix. The as filed specification and pages 5, 7 and 10 cited to support the amendment do not envision the solid phase to be polyurethane matrix. The second full paragraph of page 5 teaches “finely dispersed system composed of at least one solid phase and one liquid phase. Said solid phase forms a spongy, three-dimensional matrix (network), the pores of which are at least partially filled by a liquid (lyogel), the liquid being water in the present case.” Last full paragraph of page 7 teaches that the hydrogel can be a polyurethane based hydrogel. And the last paragraph of page 10 teaches that films or foam made from polyurethane, polyester, polyether urethane, polyester urethane, polyether-polyamide copolymers, polyacrylate or polymethacrylate are preferably suitable as cover.
New claim 42 teaches producing hydrogel from a composition comprising from …. Having aliphatic diisocyanate groups …. The specification as filed does not envision producing hydrogel as claimed. Last paragraph of page 8 of the as filed specification teaches that the hydrogel used in the invention is composed of “from 6% to 30% by weight of a prepolymer having aliphatic diisocyanate groups.”
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.
Claim 29 is 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 29 depends on canceled claim 28 making the boundaries of protection sought indeterminable and unclear.
Correction is respectfully requested.
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.
No claim is allowed.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613
