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 .
Applicant’s preliminary amendment filed 7/19/2023, is acknowledged. Claims 1-17 are pending. Claims 9-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/20/2026.
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.
Claim 2 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 2 is indefinite in their use of the term “derivative.” Without more the metes and bound of the claim cannot be determined because under the broadest reasonable interpretation a compound may be derivatize to an extent that it no longer resembles the original compound.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang Linge et al. (CN106620894) in view of Kagayaki et al. (US 2012/0271152).
Wang Ling et al. discloses an in-vivo implant material capable of realizing magnetic resonance imaging, which material is formed by compounding a polymer material and a material with a specific response to nuclear magnetic resonance, wherein the polymer material is hyaluronic acid, polybutylene terephthalate, etc.; and the material with a specific response to nuclear magnetic resonance is one or more of a polyol, a glyceride, or a fatty acid, the fatty acid being lauric acid (equivalent to a long-chain fatty monoacid), etc. A preparation method therefor comprises: dissolving a polymer material in a solvent to obtain a polymer solution, then adding a material with a specific response to nuclear magnetic resonance thereto, mixing same, stirring same until uniform to obtain a mixed spinning solution, and subjecting same to electrostatic spinning, wherein the conditions and parameter ranges are ... , and thereby obtaining superfine fibers, wherein the solvent is dichloromethane, trichloromethane, etc. (see claims 1-7, and description, paragraph 16).
Claim 1 differs from WANG LING ET AL. in that: the material being used for temperature-responsive magnetic resonance imaging and the effect thereof are defined, and the steps of electrostatic spinning are different.
Kagayaki et al. provides the technical motivation that fatty acids in fat tissue and the nuclear magnetic resonance signals of CH2 and CH3 groups in the fatty acids are related to the temperature. On this basis, a person skilled in the art would have been motivated to further test the temperature responsiveness of a material of a fatty acid containing CH2 and CH3 groups in magnetic resonance imaging, and the effect thereof can be obtained by means of experimental verification. The steps of electrostatic spinning can be conventionally adjusted.
Therefore, on the basis of the references combined with common general knowledge, it would have been obvious to arrive at the claimed invention.
Dependent claims 2-8 further define the type and preparation process of the material, and the technical features are either disclosed in Wang et al. or are within the range of conventional adjustments. Therefore, claims 2-8 also do not involve an unobvious step.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S CABRAL whose telephone number is (571)270-3769. The examiner can normally be reached M-F 8 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT S CABRAL/Primary Examiner, Art Unit 1614
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