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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-7) in the reply filed on 7/28/2026 is acknowledged.
Groups II-IV (claims 8-18) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/28/2026.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 1-3 and 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shin et al (“Reduced graphene oxide-GelMA hybrid hydrogels as scaffolds for cardiac tissue engineering”, Small, July 2016, 12(27): 3677–3689), provided on 6/5/2026.
Regarding claim 1, Shin teaches a reduced graphene oxide (rGO)-incorporated gelatin methacrylyol (GelMA) hybrid hydrogel [abstract], which reads on the claimed composite hydrogel comprising gelatin and reduced graphene oxide.
Regarding claim 2, Shin teaches that the gelatin has a concentration of 7% w/v in the rGO-GelMA hydrogel [P10 under “Preparation of rGO-GelMA hydrogel”], falling within the claimed range of 2% to 40% (w/v).
Regarding claim 3, the gelatin methacrylyol (GelMA) reads on the claimed gelatin methacrylate.
Regarding claim 5, Shin teaches prepared samples in which the rGO has concentrations of 0, 1, 3 and 5 mg•mL−1 [P10 under “Preparation of rGO-GelMA hydrogel”], equivalent to 0, 0.1, 0.3, and 0.5 % (w/v). The samples of 0.1, 0.3, and 0.5 % (w/v) meets the claimed range of 0.05% (w/v) or more.
Regarding claim 6, the 7% w/v of gelatin and 0.1% w/v of rGO gives a ratio of 70:1, falling within the claimed range of 2000:1 to 10:1.
Regarding claim 7, the recited “wherein the composite hydrogel has a ratio (ID/IG) of D-band intensity to G-band intensity of 1.0 or more in a Raman spectrum” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is inherent.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shin et al (“Reduced graphene oxide-GelMA hybrid hydrogels as scaffolds for cardiac tissue engineering”, Small, July 2016, 12(27): 3677–3689), provided on 6/5/2026, alternatively in view of Enrione Caceres et al (US 20190194460 A1).
Regarding claim 4, Shin teaches the composite hydrogel according to claim 1. Shin further teaches that GelMA with high degree of methacryloyl modification was chosen to provide as many methacryloyl groups as possible to promote sufficient UV-induced crosslinking density in these hybrid hydrogels [P5L27-29]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to choose a GelMA with high degree of methacryloyl modification and meet the claimed “the gelatin methacrylate has a degree of substitution of polymer of 10 to 100 based on a methacrylate group peak and an amine group peak of gelatin”.
Alternatively, Enrione Caceres teaches a methacrylated gelatin with 90% degree of methacryloyl functionalization [0075], and teaches that the degree of methacryloyl functionalization could enhance the mechanical properties of photo-crosslinked hydrogels [0290]. Enrione Caceres and Shin are in the same field of endeavor because both teaches using the methacrylated gelatin in tissue engineering (Enrione Caceres [0290], Shin [title]), and both recognized that high degree of methacryloyl functionalization helps photo-induced crosslinking in the hydrogel.
It would have been obvious to one of ordinary skill in the art at the time of the invention to select a GelMA having 90% degree of methacryloyl substitution in Shin’s hydrogel, as Enrione Caceres demonstrates this degree of methacryloyl substitution to be suitable for similar hydrogels. This represents the use of a suitable degree of methacryloyl substitution for a GelMA which is compositionally similar to those of Enrione Caceres and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
The GelMA having 90% degree of methacryloyl substitution meets the claimed gelatin methacrylate having a degree of substitution of polymer of 10 to 100 based on a methacrylate group peak and an amine group peak of gelatin.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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