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 .
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.
Claims 10, 12-14, 20, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clasen (Macromol Symp. 2006, 244, 48-58).
Considering Claims 10, 20, and 21: Clasen teaches a membrane/swellable body comprising bacterial cellulose (Abstract) having a swelling ratio up to 100:1/10,000% (Figure 3).
Clasen teaches the swelling ratio as being a volume ratio rather than a thickness ratio. However, the increase in volume would simultaneously increase the thickness of the body. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). See MPEP § 2112.
Considering Claims 12-14: Claims 12-14 recite an intended use for the swellable body. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
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.
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.
Claims 1, 3-8, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 103861154) in view of Ulmer (WO 2016/083351). Note: A machine translation is being used for CN 103861154.
Considering Claims 1, 3, 5, 18, and 19: Zhang et al. teaches a method of producing an article comprising bacterial cellulose (Abstract) comprising providing a bracket/body made of bacterial cellulose (¶0018), washing the bacterial cellulose body with an sodium hydroxide solution and distilled water (¶0018); freezing the body in a vacuum freeze drying box for 7-8 hours (¶0018); and freeze drying the body (¶0018). As the vacuum is not started until the freeze-drying step, the pressure would be atmospheric in the freezing step.
Zhang et al. does not teach mechanically pressing the body or parts thereof after the freeze-drying step. However, Ulmer teaches mechanically pressing a bacterial cellulose body at 80 to 100 ºC (5:25-6:3). Zhang et al. and Ulmer are analogous art as they are concerned with the same field of endeavor, namely medical implants made of bacterial cellulose. It would have been obvious to a person of ordinary skill in the art to have performed the mechanical pressing step of Ulmer on the bacterial cellulose body of Zhang et al., and the motivation to do so would have been, as Ulmer suggests, to control the swellability and mechanical strength of the bacterial cellulose body (5:25-6:3).
Considering Claim 4: Zhang et al. teaches the freezing step as occurring at -15 to -20ºC (¶0018).
Considering Claims 6 and 7: Zhang et al. does not teach cutting the body with a laser or blade. However, Ulmer teaches that the thickness of the cellulose layer can be controlled by cutting with a blade or laser (18:23-30). It would have been obvious to a person of ordinary skill in the art to have cut the bacterial cellulose body of Zhang et al. with the technique of Ulmer, before or after pressing, and the motivation to do so would have been, as Ulmer suggests, to shape the article to the proper shape and thickness.
Considering Claim 8: Zhang et al. teaches a thin bracket/strip (¶0018).
Response to Arguments
Applicant's arguments, filed July 27, 2026, have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Clasen does not teach the swelling in the thickness direction is not persuasive. Clasen teaches the swelling ratio as being a volume ratio rather than a thickness ratio. However, the increase in volume would simultaneously increase the thickness of the body. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). See MPEP § 2112.
B) The applicant’s argument that Zhang et al. does not teach “a body” is not persuasive. The term body is being given its broadest reasonable interpretation consistent with the original specification. Zhang et al. teaches a bone tissue engineering bracket (¶0014), which reads on the broadest reasonable interpretation of body. The original specification does not provide an explicit definition of body which would exclude the structure shown in Zhang et al.
C) In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). While Zhang et al. does not teach pressing, and Ulmer et al. does not teach freezing, the combination of references teach these features.
D) In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Zhang et al. and Ulmer are analogous art as they are concerned with the same field of endeavor, namely medical implants made of bacterial cellulose. It would have been obvious to a person of ordinary skill in the art to have performed the mechanical pressing step of Ulmer on the bacterial cellulose body of Zhang et al., and the motivation to do so would have been, as Ulmer suggests, to control the swellability and mechanical strength of the bacterial cellulose body (5:25-6:3).
.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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