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 species B) magnetic field separation, species D) exposing microspheroids to crosslinking and species E) cell in the reply filed on 3/9/26 is acknowledged.
Claims 8-9 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/9/26.
Claim Rejections - 35 USC § 103
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 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) 1-5, 7, 10, and 12-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Di Carlo et al. (US 2019/0381497).
Regarding claims 1-4, 10, 12, and 14-15: Di Carlo et al. (US ‘497) discloses a method of producing particle drops comprising a drop-carrier particle and a dispersed phase contained therein [abstract; 0005], wherein the drop-carrier particles have diameters of around 100-200 microns [0089]. Di Carlo et al. (US ‘497) discloses the drop-carrier particles can be made by crosslinking polymer materials [0088], such as PPGDA and PEGDA [0054; Fig. 20D]. Di Carlo et al. (US ‘497) discloses the particles can be magnetically embedded to pass the particle drops between solutions using magnetic force [0092; 0098; 0131-0132], wherein the magnetic particles can be contained in one or more of the prepolymer components [0098]. Di Carlo et al. (US ‘497) discloses a hydrogel matrix having a mesh size of about 25 nm as the internal phase [0096-0097; 0155; Fig. 5]. Di Carlo et al. (US ‘497) discloses cells can be entrapped within the hydrogel by polymerization with exposure to UV light [0157].
Di Carlo et al. (US ‘497) does not disclose a specific process comprising producing particle drops, magnetically embedding the particle drops to pass the particle drops between solutions using magnetic force, and polymerizing a hydrogel matrix containing cells to entrap the cells within the hydrogel. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed such a process based on the invention of Di Carlo et al. (US ‘497), and would have been motivated to do so since Di Carlo et al. (US ‘497) discloses producing particle drops comprising a drop-carrier particle and a dispersed phase contained therein [abstract; 0005], wherein the particles can be magnetically embedded to pass the particle drops between solutions using magnetic force [0092; 0098; 0131-0132], and a hydrogel matrix as the internal phase [0096-0097; 0155; Fig. 5] can have cells entrapped within the hydrogel by polymerization with exposure to UV light [0157]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 5: Di Carlo et al. (US ‘497) discloses particle sizes of < 500 micrometers in diameter [0152; 0154].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claim 7: Di Carlo et al. (US ‘497) discloses micro-sized or nanometer-sized magnetic particles manipulating the drop-carrier particles through a magnetic field [0098].
Di Carlo et al. (US ‘497) does not specifically disclose about 5 magnetic particles to about 1000 magnetic particles. However, differences in concentration will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 13: Di Carlo et al. (US ‘497) discloses collecting the particle drops [0132].
Regarding claims 16-17: Di Carlo et al. (US ‘497) discloses the basic claimed process [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. at least 80% of the microparticles in the hardened microparticle-localized microspheroid of the population of microparticle-containing microspheroids are disposed in the microspheroid sub-region [instant claim 16]; for the microspheroid of the population of microparticle-containing microspheroids, the majority of microparticles are disposed in a monolayer in the microspheroid sub-region of the microspheroid [instant claim 17], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 18: Di Carlo et al. (US ‘497) discloses the magnetic particles 36 contained in an exterior region 16 {corresponding to a cap} [0098; Fig. 7].
Regarding claims 19-20: Di Carlo et al. (US ‘497) discloses the magnetic particles 36 contained in an exterior region 16 [0098; Fig. 7]. Di Carlo et al. (US ‘497) discloses photocrosslinked drop-carrier particles with tuned shapes [0051; Fig. 20A]. Di Carlo et al. (US ‘497) discloses the particle inner diameter can be adjusted by the flow rate ratio [0177; Fig. 26A].
Di Carlo et al. (US ‘497) does not specifically disclose the microparticle-localized microspheroids are defined by an average microspheroid radius r, and: (i) the microspheroid cap comprises a radius a less than 2/3 of the microspheroid radius r, or (ii) the microspheroid cap comprises a height h less than half of the microspheroid radius r, or (iii) the microspheroid cap radius a is less than 2/3 of the microspheroid radius r and the microspheroid cap height h is less than half of the microspheroid radius r [instant claim 19]; the microspheroid sub-region is of a surface area of about 25% or less of the total microspheroid surface area [instant claim 20]. However, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 21: Di Carlo et al. (US ‘497) discloses the magnetic particles can be contained in one or more of the prepolymer components [0098], and contacting the drop-carrier particles with the hydrogel [0096-0097].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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