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 amendment filed 12/19/2025 is acknowledged. Claims 10-16 are pending. Claims 1-9 and 17 are cancelled.
Drawings
The drawings were received on 12/19/2025. These drawings are acceptable.
Claim Rejections - 35 USC § 103
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 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.
Claims 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over CN 101879148 to Donghua University (“Donghua”, and note the attached translation in the Office action mailed 09/19/2025) in view of applicant’s admitted prior art (“AAPA”).
Regarding claim 10, Donghua teaches an apparatus (para [0001], [0012], [0027], translation, abstract) made from a hydrogel characterized in that the apparatus is made from a hydrogel of bacterial cellulose.
Donghua does not explicitly teach that the apparatus is usable as a dam and that the cellulose comprises nanocelluse. However, hydrogels made from bacterial cellulose were known in the art as dimensionally stable (see, e.g., AAPA, the present specification at page 1, paragraph beginning “Dimensionally stable”), and It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the Donghua apparatus as was known wherein the cellulose comprises nanocellulose, with a reasonable expectation of success, since it was known as dimensionally stable. Further, the modified Donghua apparatus appears to be fully capable of being used as a rubber dam since it is disclosed a useful as a medical-grade patch (translation, abstract) and includes the claimed components.
Regarding claim 11, Donghua discloses an apparatus made of bacterial nanocellulose with a cellulose content of more than 0.5% by weight (translation, page 7, Embodiment 7).
Regarding claim 12, Donghua discloses an apparatus wherein the hydrogel made of bacterial nanocellulose is loaded with water and another substance (claims 1, 2 and 9).
Regarding claim 13, Donghua discloses an apparatus wherein the other substance is a pharmaceutical (claims 1, 2 and 9).
Regarding claim 14, Donghua does not explicitly teach the apparatus has a water content of between 7.5% and 99.5% by weight. However, it can be reasonably expected that the Donghua apparatus has a water content of between 7.5% and 99.5% by weight since water content of the bacterial cellulose hydrogel in preparation is disclosed as 70% - 90%. Note that similar and overlapping ranges are prima facie obvious. MPEP 2144.05(I).
Regarding claim 15, Donghua discloses an apparatus with a thickness of between 0.1-3 mm (translation, page 3, last paragraph). Note that similar and overlapping ranges are prima facie obvious. MPEP 2144.05(I). Further, since a thickness that is too low risks insufficient strength, while a thickness that is too high risks waste, the skilled artisan would have found it obvious to optimize the thickness through routine experimentation with predictable results.
Regarding claim 16, Donghua discloses sterilizing the apparatus (translation, abstract), but does not explicitly teach the apparatus wherein in it is reprocessed by a method comprising washing the loaded utensil in a lye solution; and sterilizing the utensil. However, this is interpreted as a product-by-process claim, and product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. The Donghua apparatus appears to be substantially identical to the claimed apparatus, and it is not clear what, if any, structure is implied by the recited steps. Note MPEP 2113(I) and (II). Thus, the Donghua apparatus appears to read on the claimed apparatus.
Response to Arguments
Applicant's arguments filed 12/19/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the presently claimed dam is impermeable) (remarks, para bridging pages 7-8) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that cellulose and nanocellulose are not necessarily interchangeable, such that the Dongua/AAPA modification would require processing (remarks, page 8, para beginning “In contrast”), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Indeed, the breathability, or permeability, of nanocellulose depends on, inter alia, how it is processed (e.g., porous membranes).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC GOLIGHTLY whose telephone number is (571)270-3715. The examiner can normally be reached M-F: 10 am - 7 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kaj Olsen can be reached at (571) 272-1344. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC W GOLIGHTLY/Primary Examiner, Art Unit 1714