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
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, 32-41, and 43 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.
Regarding claim 24, ERHFaB discloses a method comprising using electroadhesion to induce adhesion between a cationic hydrogel and anionic cells (see [01]-[02]).
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 a tissue to a cationic hydrogel (see [01]-[02]), comprising: (a) contacting a tissue 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 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 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]); (claim 35) wherein the method is used to perform surgery (see [02]); (claim 36) wherein (d) patches a puncture or cut in the tissue ([02]); (claim 37) wherein the tissue comprises two cut segments and the adhesion rejoins the two cut segments (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]); (claims 40-41) wherein the electric potential has a voltage of between 3-25 volts ([02], 10 volts falls within the claimed range); and (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).
Claim(s) 24 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]).
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 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 claim 42, ERHFaB fails to explicitly disclose wherein the electric potential is applied for at least 10 seconds, 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, by determining whether "just a few seconds" means anywhere between 2-11 seconds, which represent a time span of 10 seconds and which all would be considered "a few seconds", to arrive at the claimed time of 10 seconds, for optimal adhesion.
Requirement for Information
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
An issue of public use, on sale activity, or other public availability has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under 35 U.S.C. 102(a)(1), additional information regarding this issue is required as follows: See MPEP 2120.02 and MPEP 2128.01(IV). It is noted that one of the current named inventors, Srinivasa Raghavan, is the presenter of ERHFaB as set forth above in paragraph 4. Specifically, Applicant is required to provide copies of any slides, videos, handouts, or other materials presented at the conference set forth in paragraph 4 above in order to determine if any material made publicly available at the conference raises an issue of patentability under 35 U.S.C. 102(a)(1).
Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the attached PTO-892 Notice of References cited for additional relevant prior art disclosing hydrogels to which an electric current is applied.
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.
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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.
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/SHAUN L DAVID/Primary Examiner, Art Unit 3771