DETAILED ACTION
This Office Action is a Response to Applicant’s Arguments and Amendment submitted 06/03/2026.
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
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) 24-31, 32-34, and 38-41 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the attached Conference abstract entitled “Electro–Responsive Hydrogel Films and Beads: Using Electric Fields To Break Or Stick Solids” (hereinafter “ERHFaB”), presented publicly at conference entitled Collodial, Macromolecular, and Biological Gels II under the organization of Engineering Conferences International, on July 23, 2019 in Cork, Ireland as a printed publication, or otherwise made available to the public at the conference set forth above (previously of record).
Regarding claim 24, ERHFaB discloses a method comprising using electroadhesion to induce adhesion between a cationic hydrogel and anionic cells (see [01]-[02]) of an animal tissue (see [02] which specifically states that “the same phenomenon also works with certain animal tissues”).
ERHFaB further discloses (claim 25) wherein the electroadhesion comprises: a) contacting the anionic cells with a first electrode; b) contacting the cationic hydrogel with a second electrode; and c) applying an electric potential to the first electrode and the second electrode to induce the adhesion between the cationic hydrogel and the anionic cells (see [02], it is inherent that in an electric field as set forth in ERHFaB, there will be two electrodes which allow for an electric potential between them); (claim 26) further comprising stopping the applying, wherein the adhesion remains after the stopping (see [02], adhesion remains until polarity is reversed); (claim 27) further comprising reversing the adhesion (see [02]); (claim 28) wherein the reversing comprises applying a second electric potential to the cationic hydrogel and the anionic cells, wherein the second electric potential has reversed polarity relative to the electric potential (see [02]); (claim 29) wherein the adhesion between the cationic hydrogel and the anionic cells occurs in a double network wherein one or both networks of the double network has a cationic charge (see [01]-[02]); (claim 30) wherein the anionic cells comprise an extracellular matrix, and wherein a network in the double network comprises the extracellular matrix (see [02]); and (claim 31) wherein the cationic hydrogel is adhered to the anionic cells via electrophoresis (see [02]).
Regarding claim 32, ERHFaB discloses a method of electroadhering an animal tissue to a cationic hydrogel (see [01]-[02]), comprising: (a) contacting the animal tissue (see [02] which specifically states that “the same phenomenon also works with certain animal tissues”) comprising anionic cells with a first electrode ([02], it is inherent that in an electric field as set forth in ERHFaB, there will be two electrodes which allow for an electric potential between them); (b) contacting a cationic hydrogel with a second electrode ([02]); (c) bringing the cationic hydrogel and the animal tissue into contact ([02]); and (d) applying an electric potential to the first electrode and the second electrode to induce an adhesion between the cationic hydrogel and the animal tissue ([02]).
ERHFaB further discloses (claim 33) wherein (d) further comprises maintaining the adhesion between the tissue and the cationic hydrogel (see [02], adhesion is maintained until polarity is reversed); (claim 34) further comprising reversing the adhesion between the tissue and the cationic hydrogel by applying a second electric potential, wherein the second electric potential has reversed polarity from the electric potential (see [02]); (claims 38-39) wherein the adhesion between the cationic hydrogel and the tissue comprises a single or multiple network, and includes: i) a chemical crosslink; ii) a physical crosslink; iii) a biodegradable hydrogel; or iv) any combination thereof (see [01]-[02]); and (claims 40-41) wherein the electric potential has a voltage of between 3-25 volts ([02], 10 volts falls within the claimed range).
Claim(s) 24, 32, 35-37, and 44-47 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN112457501A, inventors Yuan et al. (hereinafter “Yuan”) (cited in an IDS dated 01/22/2024 with included English translation, citations to English translation).
Regarding claim 24, Yuan discloses (see abstract; [n0003]; [n0017]-[n0028]) a method comprising using electroadhesion to induce adhesion between a cationic hydrogel and anionic cells (see [n0017]-[n0028]) of an animal tissue (see [n0024]).
Regarding claim 32,Yuan discloses (see abstract; [n0003]; [n0017]-[n0028]) a method of electroadhering an animal tissue to a cationic hydrogel (see [n0017]-[n0028]), comprising: (a) contacting the animal tissue comprising anionic cells with a first electrode (see [n0017]-[n0020] & [n0024]), it is inherent that in an electric field as set forth in Yuan, there will be two electrodes which allow for an electric potential between them); (b) contacting a cationic hydrogel with a second electrode (see [n0017]-[n0020]); (c) bringing the cationic hydrogel and the animal tissue into contact (see [n0017]-[n0028]); and (d) applying an electric potential to the first electrode and the second electrode to induce an adhesion between the cationic hydrogel and the animal tissue (see [n0017]-[n0028]).
Yuan further discloses (claim 35) wherein the method is used to perform surgery on a a cartilage (see [n0024]); (claim 36) wherein (d) patches a puncture or cut in the tissue (see [n00224]); (claim 37) wherein the tissue comprises two cut segments and the adhesion rejoins the two cut segments (see [n0024]-[n0028]); (claims 44 and 45) wherein the animal tissue and the cationic hydrogel are in contact with whole blood (see [n0024], wounds needing closure frequently if not always involve whole blood being present at the wound which would contact the blood); (claims 46 and 47) wherein the animal tissue comprises human tissue (see [n0024]).
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) 42-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over ERHFaB.
ERHFaB discloses the invention substantially as claimed as discussed above, however, with respect to claims 42-43, ERHFaB fails to explicitly disclose wherein the electric potential is applied such that the adhesion strength between the cationic hydrogel and the tissue saturates, but rather, discloses that the electric potential is applied for "just a few seconds" (see [02]). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, as a matter of being obvious to try - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (see KSR International Co. v. Teleflex Inc., 550 U.S.398,82 USPQ2d 1385,1395- 97(2007)), to obtain the predictable result of determining the optimal amount of time to determine when adhesion strength between the cationic hydrogel and the tissue saturates, by determining that the disclosure of "just a few seconds" would be sufficient to experiment with the specific amount of time necessary to meet the ultimate end goal of applying the electric potential, which is to adequately adhere the hydrogel to the tissue to the point of saturation. Further, ERHFAB discloses (claim 43) wherein the electric potential is applied for at most 60 seconds (see [02], "a few seconds" is understood to be less than 60 seconds).
Requirement for Information
Applicant submitted a copy of slides in response to the previous Requirement for Information. This submission is deemed sufficient to comply with the Requirement.
Response to Arguments
Applicant's arguments filed 06/03/2026 have been fully considered but they are not persuasive.
Applicant alleges that ERHFaB is deficient with respect to the amended limitation involving “of animal tissues” because the slides provided merely ask the question of whether this could work with animal tissue but involved ongoing work. Nonetheless, the ERHFaB conference abstract explicitly sets forth that the disclosed technique “also works with certain animal tissues” at [02], and therefore there is sufficient anticipation of the claim because this establishes that ERHFaB anticipates the claim even when modified to specify “of animal tissues”.
Applicant’s arguments regarding Yuan are not persuasive. Applicant’s specification states that a cationic hydrogel is contacted by a positive electrode while the anionic substrate (gel or tissue) is contacted by the negative electrode so that when voltage is applied, the hydrogel strongly adheres to the anionic substrate (and conversely, when if the electroadhered gel is connected to the electrodes in the reverse orientation with a voltage applied, the gel loses its adhesion and can be detached (see [0043]-[0044]). This functions the same way as Yuan’s disclosure at [n0017]-[n0020] – thus, Yuan’s hydrogel is cationic in the context of the claims. Further, 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., that the cationic hydrogel is a cationic polyelectrolyte and specifically not PVA-based with catechol groups) 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).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SHAUN L DAVID whose telephone number is (571)270-5263. The examiner can normally be reached M-F 10AM-6:30PM.
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, Darwin Erezo can be reached at 571-272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHAUN L DAVID/Primary Examiner, Art Unit 3771
Prosecution Insights