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 Group I, claims 1-9, in the reply filed on 4 May 2026 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4 May 2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 112
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.
Claims 8 and 9 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.
At claim 8, “configured to be loaded into a bioprinting system” is indefinite because it is unclear how the bioink is “configured” and the Specification at paragraph [0048] for example is not specific about the metes and bounds of the limitation.
At claim 9, line 2, the limitation “optimized” is indefinite and would appear to be relative but the claim fails to set forth that the limitation is relative to. Hence, the metes and bounds of the claim are unclear.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant claims a bioink comprising a bioink formula optimized using a surrogate machine learning model (MLM).
Applicant prophetically describes “Parameters to be explored for hydrogel selection…” in Table 1 on page 21.
Applicant does not describe an optimized bioink formula or a surrogate machine learning model useful for optimizing bioink formulas.
Hence, it is unclear that Applicant was in possession of the invention as broadly claimed. See also, MPEP § 2163 which states that the claimed invention as a whole may not be adequately described where an invention is described solely in terms of a method of its making coupled with its function and there is no described or art-recognized correlation or relationship between the structure of the invention and its function.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 6, 7 and 8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Beckwith (US 2023/0193197, published 22 June 2023 and filed 2 December 2022).
The Examiner considers the limitation “bioink” as an intended use of a hydrogel encapsulating wood forming plant cells.
Beckwith discloses making a hydrogel comprising live plant cells in claim 1, wherein the hydrogel can be GELZAN® at paragraph [0025]. Beckwith discloses that the shape of the cultivated materials can be controlled via bioprinting at paragraph [0027] and claim 10. Beckwith discloses that the “plant cell culture medium” can contain nutrients, carbohydrates and growth regulators at Table 2 on page 3. Because Beckwith discloses using a bioprinting method Beckwith would inherently disclose a bioink configured to be loaded into a bioprinting system. Beckwith discloses that the plant cells used in the claimed method under the proper hormone conditions, can differentiate into lignified tracheary elements at paragraph [0037], hence the cells disclose meet the limitation “wood forming”.
Hence, Beckwith had previously disclosed the claimed invention.
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.
Claim(s) s 1-5 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beckwith (US 2023/0193197, published 22 June 2023 and filed 2 December 2022) in view of Lee et al (2010) and MacKay et al (1997).
Beckwith teaches making a hydrogel comprising live plant cells in claim 1, wherein the hydrogel can be GELZAN® at paragraph [0025]. Beckwith discloses that the shape of the cultivated materials can be controlled via bioprinting at paragraph [0027] and claim 10. Beckwith teaches that the “plant cell culture medium” can contain nutrients, carbohydrates and growth regulators at Table 2 on page 3. Because Beckwith teaches using a bioprinting method Beckwith would inherently teach a bioink formula optimized for a bioprinting system. Beckwith teach using cells from Pinus radiata and Populus trichocarpa at claims 2 and 12.
Beckwith does not teach producing a bioink comprising a hydrogen wherein the wood forming plant cells comprise cambial meristematic cells.
Lee et al teach culturing cambial meristematic cells from Taxus cuspidata, and that said cells have the advantage of not having to go through a dedifferentiation step (Abstract on page 1213).
MacKay et al teach a Pinus taeda comprising a mutation in the lignin biosynthesis pathway.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant claims to modify the teachings of Beckwith to use cambial meristematic cells as taught by Lee et al, particularly since it bypasses a dedifferentiation step. Further, it would have been obvious to use the Pinus taeda as taught by MacKay et al to produce the hydrogel taught by Beckwith, such a substitution would have been a design choice and essentially a substitution of equivalents with the Pinus radiata of Beckwith. Given the success of Beckwith and Lee et al, one of ordinary skill in the art would have had a reasonable expectation of success. One of ordinary skill in the art would have been motivated to use other Pinus species than those explicitly recited in claim 2, for example, of Beckwith.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID H KRUSE whose telephone number is (571) 272-0799. The examiner can normally be reached Monday-Friday 7AM-3:30PM.
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, Amjad Abraham can be reached on (571) 270-7058. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/David H Kruse/
Primary Examiner, Art Unit 1663
Prosecution Insights