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 .
Response to Arguments
Applicant's arguments filed 2/13/2026 are found persuasive. The only remaining rejection is claims 12-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,986,999 B2.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 12-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,986,999 B2. Although the claims at issue are not identical, they are not patentably distinct from each other:
Regarding claim 12, U.S. Patent No. 11,986,999 B2 meets the claimed method of increasing actin coverage of cells, the method comprising: providing a polymeric scaffold, (Claim 1, lines 1-3) the polymeric scaffold comprising polymerized poly(ethyelene glycol) di(meth)acrylate moieties, (claim 1, lines 2-4) polymerized poly(ethyelene glycol) di(meth)acrylamide moieties, polymerized poly(ethyelene glycol) (meth)acrylate/(methacrylamide) moieties, or mixtures thereof; contacting the polymeric scaffold with a hydrolysis agent comprising NaOH (claim 1, lines 5-7) and a proteolysis agent comprising cholesterol esterase; (claim 1, lines 7-9)
U.S. Patent No. 11,986,999 B2 does not teach and after contacting the polymeric scaffold with the hydrolysis agent and the proteolysis agent, contacting the polymeric scaffold with the cells to increase actin coverage of the cells, wherein contacting the polymeric scaffold with the hydrolysis agent and the proteolysis agent increases cell attachment to the polymeric scaffold and reduces a Young's modulus of the polymeric scaffold.
U.S. Patent No. 11,986,999 B2 teaches contacting the polymer scaffold with lung cells, claim 1, lines 15-20.
This limitation “to increase actin coverage of the cells, wherein contacting the polymeric scaffold with the hydrolysis agent and the proteolysis agent increases cell attachment to the polymeric scaffold and reduces a Young's modulus of the polymeric scaffold.” is treated as a previously unappreciated property of a prior art composition, see §MPEP 2112. Examiner notes the materials and methods claimed in the present application and U.S. Patent No. 11,986,999 B2 are identical, therefore the increase actin coverage of the cells and changes to Young’s modulus is presumed inherent.
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).)
Claims 13-24 are not patentably distinct from the claims 2-14 of the U.S. Patent. No. 11,986,999 B2.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Skardal et al. (US 2017/0307598 A1) teaches Abstract, [0036] An extrudable hydrogel composition useful for making a three-dimensional organ construct includes a cross-linkable prepolymer, a post-deposition crosslinking group, optionally, an initiator that catalyzes the reaction between the prepolymer and said the crosslinking group; live cells (e.g., plant, animal, or microbial cells), optionally at least one growth factor, and optionally water to balance. Methods of using the same and products so made are also described.
Larsen (US 2013/0029030 A1) teaches Abstract, the present invention relates to a matrix material comprising a pharmaceutical composition such as a matrix material with a pharmaceutical composition applied by ultrasonic spray technology on the surface. In one embodiment the pharmaceutical composition comprises thromb in.
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 MICHAEL M. ROBINSON whose telephone number is (571)270-0467. The examiner can normally be reached Monday-Friday 9:30AM-6PM.
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, Sam Zhao can be reached at (571)270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL M. ROBINSON/Primary Examiner, Art Unit 1744