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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1-7, 13, in the reply filed on 06/10/2026 is acknowledged.
Claims 8-12 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
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) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou et al., (Bioactive Materials, 2021)
Zhou et al. teaches, “The multifunctional nanomatrix was composed of polypyrrole@polydopamine (PPy@PDA, 342±5.6 nm) nanoparticles-crosslinked Pluronic F-127 (F127)-polycitrate matrix (FPCP)” (Abstract). Here, the FPCP suffices as the citrate-based elastomer and the PPy@PDA suffices as the conductive polymer.
The prior art is anticipatory insofar as it teaches a composition comprising a citrate-based elastomer functionalized with a conductive polymer.
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.
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) 1-7 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ameer et al. (WO 2021/042015) in view of Xu et al., (J Biomed Mater Res A. 2016) and further in view of Lamont et al. (J. Mater. Chem. B. 2015).
Ameer et al. teaches “poly (octamethylene-octanol citrates) (POOC) scaffolds with native mechanical properties that are comparable to urinary bladder tissue” (Abstract). POOC is a citrate-based elastomer of claims 1-3, 7, 13.
Note: Applicant’s specification states, “poly (octamethylene-octanol citrates) (POOC) may be referred to synonymously as poly(1,8-octamethlene-citrate-co-octanol) (POCO)” (p. 8, lines 17-18).
Ameer et al. does not teach where the citrate-based elastomer (POOC) is functionalized with a conductive polymer.
Xu et al. teaches, conductive polymers “have been employed to control or regulate cellular behavior (e.g. cell proliferation, differentiation and metabolism) with/without electrical stimulation for tissue engineering applications. Additionally, biomolecules entrapped with conductive polymers can be released with electrical stimulation. They also can be utilized as bioactuators due to their redox activity and as biosensors by entrapping targeted molecules. However, current conductive polymer families have limitations to meet the needs of various biomedical applications. Specifically in soft tissue engineering, a conductive material with softness, elasticity (stretchability) and full degradation is expected. One major limitation of current conductive polymers is their poor flexibility. It creates difficulties in processing and it also results in high mechanical stiffness, which negatively influences the mechano-biological interactions between cells with and polymers in soft tissue engineering. Blending a soft elastomer with an intrinsically conductive polymer is simple and effective to improve its flexibility and stretchability, which has also been utilized in tissue engineering application” (p. 2, Introduction).
The reference recognizes “PEDOT” as a conductive polymer for creating conductive composites (see p. 11, line 1).
Lamont et al. teaches “A conductive stretchable PEDOT-elastomer hybrid with versatile processing and properties” (TI.).
Lamont et al. provides motivation for selecting PEDOT (clms. 4-7, 13) as a conductive polymer for hybridization with an elastomer insofar as it teaches, “As one of the quintessential CPs, PEDOT is selected as the conductive component within the hybrid material. As well as demonstrating long-term thermal and environmental stability compared to other notable CPs.” (p. 8445, right column, 2nd paragraph).
Concerning claims 6 and 11, "[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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (See MPEP 2113.). The concepts of blending and hybridizing are sufficient to suggest the same or obvious form of the claimed product.
It would have been obvious to a person having ordinary skill in the art at the time of applicant’s disclosure to add PEDOT to the elastomer of Ameer et al. for the advantage of controlling or regulating cellular behavior (e.g. cell proliferation, differentiation and metabolism) with/without electrical stimulation for tissue engineering applications. Additionally, biomolecules entrapped with conductive polymers can be released with electrical stimulation. They also can be utilized as bioactuators due to their redox activity and as biosensors by entrapping targeted molecules, as taught by Xu et al. The artisan would have been further motivated to select PEDOT insofar as it is the “quintessential” conductive polymer, which provides long-term thermal and environmental stability compared to other notable conductive polymers, as taught by Lamont. The PEDOT would also benefit from the elastomer of Ameer et al. by improving its flexibility and stretchability, which has also been utilized in tissue engineering application, as taught by Xu et al.
Conclusion
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to WALTER E WEBB whose telephone number is (571)270-3287 and fax number is (571) 270-4287. The examiner can normally be reached from Mon-Fri 7-3:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Walter E. Webb
/WALTER E WEBB/Primary Examiner, Art Unit 1612
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