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 .
Status of Claims
A new claim set was filed on 5/28/26 with the following:
Amended claims
1, 9-10 and 13
Newly canceled claims
Newly added claims
21-24
Previously canceled claims
Previously withdrawn claims
18-20
Claims under instant examination
1-17 and 21-24
Withdrawn Claim Objections/Rejections
The objections to claim 13 for minor informalities are hereby withdrawn in view of the claim amendments filed on 5/28/26.
The rejections of claim 9 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention are hereby withdrawn in view of the claim amendments filed on 5/28/26.
The rejections of:
claims 1-3, 5-8 and 10-13 under 35 U.S.C. 102(a)(1) as being anticipated by Gong et al. (US 2015/0114907; published: 4/30/15);
claims 1-5, 12-14 and 16-17 under 35 U.S.C. 102(a)(1) as being anticipated by Mo et al. (CN 111068112; published: 4/28/20);
claims 1-5, 9, 12-14 and 16-17 under 35 U.S.C. 103 as being unpatentable over Mo et al. (CN 111068112; published: 4/28/20); and
claims 15 under 35 U.S.C. 103 as being unpatentable over Mo et al. (CN 111068112; published: 4/28/20) as applied to claims 1-5, 9, 12-14 and 16-17 above, and further in view of Bauer et al. (WO 2010/126792; published: 04/11/10)
are hereby withdrawn in view of the claim amendments filed on 5/28/26.
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.
Claims 1, 9-10, 12-13, 22 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu et al. (CN 115746378; published: 3/7/23), as evidenced by AlShafei (US 2022/0280883; published: 9/8/22).
Zhu is directed to super-flexible polyphenylene sulfide fiber aerogel elastomers [Title].
With regards to instant claims 1, 9 and 24, Zhu teaches wherein the aerogel comprises polyphenylene sulfide superfine fiber dispersion liquid; wherein the mass fractions of the polyphenylene sulfide superfine fibers with the fiber lengths of 0.5-1 mm (reads on average lengths for the claimed nanofibers), 1-2 mm (reads on average lengths for the claimed microfibers) and 2-5 mm (reads on average lengths for the claimed microfibers) are 0-30%, 50-100% and 0-30% respectively [Abstract]. That is the mass ratio of nanofibers to microfibers is 0-30 : 50-100, which reads on the claimed weight ratio of 25:75 to 75:25.
With regards to instant claims 10 and 22, Zhu teaches that the diameters of the polyphenylene sulfide ultrafine fibers are 0.1-5 µm (i.e., 100-5,000 nm) [Figure 1].
With regards to instant claim 12, the Examiner notes that the broadest reasonable interpretation includes wherein the first polymer and the second polymer are the same and therefore, the abovementioned teachings of Zhu reads on such.
With regards to instant claim 13, Zhu teaches polyphenylene sulfide, which are hydrophobic as evidenced by AlShafei [0337].
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-3, 5-8, 10-13, 16-17 and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Gong et al. (US 2015/0114907; published: 4/30/15; of record), in view of Zhu et al. (CN 115746378; published: 3/7/23).
The passages cited below which indicate the teachings of the ‘378 publication are based on its English translation (see attached machine translations).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Gong is directed to highly porous, lightweight, and sustainable organosilane-coated organic aerogels with ultra-low densities and excellent material properties [Abstract].
With regards to instant claim 1, Gong teaches an aerogel comprising cellulose fibrils, which include both nanofibrils and microfibrils [claims 1 and 5-6]. Gong teaches that the length of the cellulose nanofibrils and/or microfibrils can be optimized depending on the desired characteristics of the aerogel and in some embodiments, have a length from about 10 nm to about 3 µm (i.e., overlaps with the claimed nanofiber length) [0042].
With regards to instant claims 2-3 and 5-7, Gong teaches that the abovementioned aerogel further comprises a water-soluble organic polymer such as a polyvinyl alcohol or polyethylene glycol, wherein the water-soluble organic polymer is cross-linked to the abovementioned cellulose fibrils with glutaraldehyde [claims 1-2, 8 and 15].
With regards to instant claims 8, 10-11 and 22, Gong teaches wherein the cellulose nanofibrils have an average diameter in the range of about 1 to about 100 nm (e.g., 100 nm) [0040] and wherein the cellulose microfibrils have an average diameter in the range of about 100 to about 1000 nm (e.g., 1 µm) [0041]. That is, if the abovementioned nano- and microfibrils are on the lower end of the ranges (e.g., 1 nm and 100 nm), then the microfibrils are 100 times greater than the nanofibrils. And vice versa, if the abovementioned nano- and microfibrils are on the upper end of the ranges (e.g., 100 nm and 500 nm), then the microfibrils are 5 times greater than the nanofibrils. This provides evidence of “sufficient specificity” that Gong teaches a substantially overlapping or entirely encompassing range compared to the instant claims (See MPEP §2131.03). Gong teaches that the average length of the cellulose nanofibrils and/or microfibrils are about 10nm to 1000nm and in other embodiments the average lengths range from about 1000 nm to about 3000 nm [0042], which reads on the ranges recited in instant claims 10-11. It is noted that the wherein clauses in instant claim 10 are separated by an “or” and therefore the prior art reads on the claim even if it only teaches one of the wherein clauses.
With regards to instant claims 12-13, Gong teaches aerogels that include cellulose nanofibers (CNF) and/or microfibers (i.e., the same polymer) in combination with a water-soluble thermoplastic polymer (e.g., PVA) that is crosslinked to itself and/or the cellulose fibers (i.e., comprising different polymers) [0051].
With regards to instant claim 16, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). The method steps recited in claim 16 (producing via electrospinning or wet spinning processes) do not appear to impart any structural limitations to the aerogel cited in the claim.
With regards to instant claim 17, Gong teaches wherein the water-soluble organic polymer is polymerized resorcinol-formaldehyde, phenol-formaldehyde, urea-formaldehyde, polyamic acid or a combination of any two or more thereof [See claim 12]. Such ingredients are bioactive agents.
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Gong does not specifically teach wherein the microfibers have an average length of about 0.1-100 mm, as required by instant claim 1; and more specifically, wherein said microfibers have an average length of about 0.5 mm to about 20 mm and said nanofibers have an average fiber length of about 10 µm to about 250 µm, as required by instant claims 11, 21 and 23-24. However, this deficiency is cured by Zhu.
Similar to Gong, Zhu is also directed to highly porous, sustainable aerogels with good thermal stability [Abstract]. Zhu teaches that:
when the fiber length is 100% distributed in the range of 0.5-1 mm [Ex. 7], the fibers are well dispersed and easy to form but due to poor entanglement between fibers, the flexibility of the aerogel is poor and the resilience effect is not good;
when 100% of the fiber length is distributed in the range of 1-2 mm [Ex. 8], the entanglement force between the fibers is enhanced, the resilience and flexibility become better and the thermal conductivity decreases;
when 100% of the fiber length is distributed in 2-5 mm [Ex. 9], the fibers are severely entangled, cannot be uniformly dispersed in the dispersion, and cannot be molded to prepare an aerogel and the aerogel elastomer cannot be obtained;
when the distribution of fiber is 0.5-1 mm (25%), 1-2 mm (50%) and 2-5 mm (25%) [Ex. 10], short fiber is conducive to dispersion, long fiber is conducive to its entanglement, intermediate length fiber has better resilience and flexibility and the thermal conductivity is further reduced (the smaller the heat insulation effect is, the better it is); the various properties of the aerogel are excellent;
additionally, when the fiber length is 100% distributed below 0.5 mm, the aerogel will not show the effect of flexibility and resilience; and
when the fiber length is 100% distributed above 5 mm, the aerogel cannot be formed and prepared.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
The fiber length is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal fiber length in order to best achieve the desired results as such would provide advantageous biological effect (flexibility, resilience and thermal conductivity). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955). In the instant case, Zhu teaches that fiber length affects flexibility, resilience and thermal conductivity of the final product (See Ex. 7-10). The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that fiber length would impact the flexibility, resilience and thermal conductivity of the final aerogel product and therefore be an optimizable variable.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Gong et al. (US 2015/0114907; published: 4/30/15; of record) and Zhu et al. (CN 115746378; published: 3/7/23) as applied to claims 1-3, 5-8, 10-13, 16-17 and 21-24 above, and further in view of Sachithanadam et al. (WO 2019/070193; published: 4/11/19).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Gong and Zhu teach the limitations of instant claims 1-3, 5-8, 10-13 and 21-24 (See rejection above for details).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Gong and Zhu do not teach wherein the binder is gelatin, as required by instant claim 4. However, this deficiency is cured by Sachithanadam.
Sachithanadam is directed to a method of making an aerogel [Title]. Sachithanadam teach that a polymeric binder may be used to hold or drawn materials together and gelatin has both polar and non-polar side chains and numerous amine and carboxyl sites, these attributes render it a good binding agent for silica aerogels.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine two compositions, each of which is taught by the prior art to be useful for the same purpose (binder of Gong and that of Sachithanadam (gelatin) for the purpose of forming hold or draw material together), in order to form a third composition to be used for the very same purpose (See MPEP 2144.06-I). Also, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute equivalents, each of which is taught by the prior art to be useful for the same purpose (binder of Gong with that of Sachithanadam (gelatin) for the purpose of forming hold or draw material together) (See MPEP 2144.06-II).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Gong et al. (US 2015/0114907; published: 4/30/15; of record) and Zhu et al. (CN 115746378; published: 3/7/23) as applied to claims 1-3, 5-8, 10-13, 16-17 and 21-24 above, and further in view of Bauer et al. (WO 2010/126792; published: 04/11/10; of record).
The passages cited below which indicate the teachings of the ‘378 publication are based on its English translation (see attached machine translations).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Gong and Zhu teach the limitations of instant claims 1-3, 5-8, 10-13 and 21-24 (See rejection above for details).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Gong and Zhu do not teach wherein the abovementioned aerogel further comprises a poloxamer, as required by instant claim 15. However, this deficiency is cured by Bauer.
Bauer is directed to aerogel compositions comprising fibers [Abstract]. Bauer teaches that treating a hydrophobic aerogel with a surfactant produces a hydrophilic coating and wherein the surfactant can be PluronicTM P84 [0026-0031]. Bauer teaches that increasing the amount of surfactant tends to increase the depth to which the aqueous phase can penetrate and thus the thickness of the hydrophilic coating surrounding the hydrophobic aerogel core [0032].
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Gong, Zhu and Bauer are each directed to aerogels comprising fibers. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the aerogel of Gong by further incorporating a poloxamer (e.g., PluronicTM P84) taught by Bauer to achieve the predictable result of obtaining a composition suitable for biomaterials. One of ordinary skill in the art would have been motivated to do so because Bauer teaches that it is advantageous for providing a hydrophilic coating surrounding the hydrophobic aerogel.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Gong et al. (US 2015/0114907; published: 4/30/15; of record) and Zhu et al. (CN 115746378; published: 3/7/23) as applied to claims 1-3, 5-8, 10-13, 16-17 and 21-24 above, and further in view of Changsha Haoran Medical Tech Co Ltd (CN 109401228A; published: 3/1/19).
The passages cited below which indicate the teachings of the ‘378 and ‘228 publications are based on its English translation (see attached machine translations).
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Gong and Zhu teach the limitations of instant claims 1-3, 5-8, 10-13 and 21-24 (See rejection above for details).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Gong and Zhu do not teach wherein the abovementioned aerogel further comprises polycaprolactone, as required by instant claim 14. However, this deficiency is cured by Changsha Haoran Medical Tech Co Ltd.
Changsha Haoran Medical Tech Co Ltd is directed to aerogel compositions [Abstract]. Changsha Haoran Medical Tech Co Ltd teach that the introduction of polycaprolactone grafting brings a rich long-chain structure, which further improves the flexibility of the product and further increases the rebound rate.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Gong, Zhu and Changsha Haoran Medical Tech Co Ltd are each directed to aerogels compositions. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the aerogel of Gong by further incorporating polycaprolactone taught by Changsha Haoran Medical Tech Co Ltd to achieve the predictable result of obtaining a composition suitable for biomaterials. One of ordinary skill in the art would have been motivated to do so because Changsha Haoran Medical Tech Co Ltd teaches that it is advantageous for flexibility improvements and increase in rebound rate.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Response to Arguments
Applicants’ arguments are moot in view of the new grounds of rejection.
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 GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617
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