Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Objection to the Specification
2. Objection is made to the specification, because before the description of the figures, a “Brief Description of the Drawings” heading is required.
Claim Rejections - 35 USC § 112
3. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
4. Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Firstly, with respect to claim 1, applicants have improperly specified “PLC” (two occurrences), as opposed to “PCL”.
Secondly, with respect to claim 3, the language, “the polymer chains” and “the unrolling of the polymer matrices”, lacks antecedent basis. Furthermore, it is unclear what criteria must be satisfied in order for the cylindrical shape to be considered “stable”. Lastly, it is unclear how to interpret claim 3 when step (c) of claim 1 pertains to the “loading” embodiment.
Thirdly, with respect to claim 4, the language, “said cells of step i)”, lacks antecedence from claim 1.
Fourthly, with respect to claim 5, it cannot be determined what constitutes “their derivatives” (both occurrences).
Fifthly, with respect to claim 8, the language, “the solvent”, lacks antecedent basis. Also, as drafted, it is unclear what is meant by stating “The method … produced …”.
5. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
6. Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The alternative process operations of claim 8 fail to further limit the subject matter of claim 1. The subject matter of claim 8 changes the foundational construct of claim 1, which is beyond the fundamental purpose to be accomplished by a dependent claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
In view of the issues set forth with respect to claim 8 within paragraphs 3 and 5, claim 8 has not been further examined on the merits.
Prior Art Rejection
7. 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.
8. Claims 1, 2, 4, 7, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over CN 111035810 A.
CN 111035810 A discloses within page 3, fourth and next to last paragraphs, and page 5, first paragraph, of the English translation (the English abstract constituting the first page of the translation) a shape memory polymer material prepared by electrospinning a PLA-PCL copolymer, corresponding to a) of claim 1, and the subsequent loading of the spun material with cells, corresponding to c) of claim 1, such as neural cells, considered to correspond to applicants’ claimed products of biotechnological origin (claims 7 and 10). Regarding b) of claim 1, though the reference fails to specifically recite sanitizing and sterilizing operations, these operations would have been obvious for any product or construct to be used in the medical field. Furthermore, though the reference is silent regarding the claimed weight ratio of PLA to PCL, the position is taken that determining the optimal weight ratio, depending on the properties desired, such as, for example, transition temperature characteristics or physical properties dependent on the ratio, would have been obvious. It is not seen that anything unexpected has been established with respect to the claimed ratio values.
Allowable Subject Matter
9. Claims 3, 5, and 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/Primary Examiner, Art Unit 1765
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