DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-21, 66 in the reply filed on 5/14/2025 is acknowledged.
Claims 28, 44, 67, 76 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/14/2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
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.
Claim(s) 1-15, 19-21, 66 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Daniloff et al U.S 2005/0281883.
Claims 1, 66: Daniloff et al disclose a kit for preparing a photocurable liquid adhesive as best seen in fig. 1, comprising: a first container2 defining a first chamber and containing a sterile liquid preparation in the first chamber (see paragraph 251), the sterile liquid preparation including an aqueous liquid, one or more polymers containing phenolic groups, and a photoactivatable metal ligand complex (see paragraph 282); a second container 2 with a second chamber. Note that in yet another embodiment of the homogeneous dry powder composition, the nucleophilic groups are sulfhydryl groups and the electrophilic groups are sulfhydryl-reactive groups. The sulflhydryl-reactive groups may be selected so as to form a thioester, imido-thioester, thioether, or disulfide linkage upon reaction with the sulfhydryl groups. Where the sulflhydryl-reactive groups form a disulfide linkage, they may have the structure --S--S--Ar where Ar is a substituted or urisubstituted nitrogen-containing heteroaromatic moiety or a non-heterocyclic aromatic group substituted with an electron-withdrawing moiety. Where the sulfhydryl-reactive groups form a thioether linkage, they may be selected from maleimido, substituted maleimido, haloalkyl, epoxy, imino, aziridino, olefins, and .alpha.,.beta.-unsaturated aldehydes and ketones. The sulfhydryl-reactive groups may be selected from mixed anhydrides; ester derivatives of phosphorus; ester derivatives of p-nitrophenol, p-nitrothiophenol and pentafluorophenol; esters of substituted hydroxylamines, including N-hydroxyphthalimide esters, N-hydroxysuccinimide esters, N-hydroxysulfosuccinimide esters, and N-hydroxyglutarimide esters; esters of 1-hydroxybenzotriazole; 3-hydroxy-3,4-dihydro-benzotriazin-4-one; 3-hydroxy-3,4-dihydro-quinazoli- ne-4-one; carbonylimidazole derivatives; acid chlorides; ketenes; and isocyanates. The reactive groups are electrophilic and nucleophilic groups, which undergo a nucleophilic substitution reaction, a nucleophilic addition reaction, or both. The term "electrophilic" refers to a reactive group that is susceptible to nucleophilic attack, i.e., susceptible to reaction with an incoming nucleophilic group. Electrophilic groups herein are positively charged or electron-deficient, typically electron-deficient. The term "nucleophilic" refers to a reactive group that is electron rich, has an unshared pair of electrons acting as a reactive site, and reacts with a positively charged or electron-deficient site (see paragraphs 11, 106). Alternatively, it would have been obvious that the above description of Daniloff et al device would show a second container defining a second chamber and containing an electron acceptor in the second chamber. Thus, claim 1 is unpatentable over Daniloff et al.
Claims 2-3: Daniloff et al disclose wherein the first container and/or the second container is a syringe barrel (see paragraphs 49, 57)., wherein the one or more polymers containing phenolic groups includes a natural polymer and/or a phenol enriched natural polymer (see paragraph 282).
Claims 4-5, 10, 19: Daniloff et al disclose the invention substantially as claimed but is silent regarding wherein the natural polymer is collagen, gelatin, or a collagen peptide composition having an average molecular weight of less than about 20 kilodaltons, and wherein the phenol enriched natural polymer is phenol enriched collagen, phenol enriched gelatin, or a phenol enriched collagen peptide composition having an average molecular weight of less than about 20 kilodaltons., wherein the one or more polymers containing phenolic groups includes a phenol enriched natural polymer having a Phe/P value of at least about 7. It would have been obvious to one having ordinary skill in the art before the claimed invention to modify the device of Daniloff by making the natural polymer is collagen, gelatin, or a collagen peptide composition having an average molecular weight of less than about 20 kilodaltons, and wherein the phenol enriched natural polymer is phenol enriched collagen, phenol enriched gelatin, or a phenol enriched collagen peptide composition having an average molecular weight of less than about 20 kilodaltons., wherein the one or more polymers containing phenolic groups includes a phenol enriched natural polymer having a Phe/P value of at least about 7, since it has been held that where the only difference between the prior arts and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v Tec Syst., Inc., 725 F 2d 1338, 220 USPG 777 (Fed. Cir. 1984). In the instant case it appears there has been no critically placed of the specific the natural polymer is collagen, gelatin, or a collagen peptide composition having an average molecular weight of less than about 20 kilodaltons, and wherein the phenol enriched natural polymer is phenol enriched collagen, phenol enriched gelatin, or a phenol enriched collagen peptide composition having an average molecular weight of less than about 20 kilodaltons., wherein the one or more polymers containing phenolic groups includes a phenol enriched natural polymer having a Phe/P value of at least about 7, as evidence in application’s specification on paragraphs 6, 18, where the ranges and values are given with no preferences to one over another nor any evidence of unexpected results.
Claims 6-7,14-15,20-21: Daniloff et al disclose the invention substantially as claimed but is silent regarding wherein the phenol enriched natural polymer includes added 4-hydroxyphenyl groups., wherein the electron acceptor in the second chamber is in dry powder form. wherein the electron acceptor is a persulfate compound, a periodate compound, a perbromate compound, or a perchlorate compound, vitamin B12, Co(II) (NH3)SCh’, cerium (IV) sulphate dehydrate, ammonium cerium (IV) nitrate, oxalic acid or EDTA., wherein the electron acceptor is a persulfate compound, a periodate compound, a perbromate compound, or a perchlorate compound; and, preferably wherein the electron acceptor is sodium persulfate. wherein the collagen peptide composition is a mixture of the collagen peptide composition and the phenol enriched collagen peptide composition., wherein the phenol enriched collagen peptide composition includes added 4-hydroxyphenyl! groups, preferably added 4-hydroxypheny] propionyl groups. It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the device that included added 4-hydroxyphenyl groups., wherein the electron acceptor in the second chamber is in dry powder form. wherein the electron acceptor is a persulfate compound, a periodate compound, a perbromate compound, or a perchlorate compound, vitamin B12, Co(II) (NH3)SCh’, cerium (IV) sulphate dehydrate, ammonium cerium (IV) nitrate, oxalic acid or EDTA., wherein the electron acceptor is a persulfate compound, a periodate compound, a perbromate compound, or a perchlorate compound; and, preferably wherein the electron acceptor is sodium persulfate. wherein the collagen peptide composition is a mixture of the collagen peptide composition and the phenol enriched collagen peptide composition., wherein the phenol enriched collagen peptide composition includes added 4-hydroxyphenyl! groups, preferably added 4-hydroxypheny] propionyl groups, since it has been held to be within the general skill of a worker in the art to select a known material on the basic of its suitability for the intended use or as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claims 16-18 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.
Conclusion
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/VI X NGUYEN/Primary Examiner, Art Unit 3771