DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
It is noted that the effective filing date of the instant application is 8/31/2018. The provisional application 62/553,377 supports a species of hydroxyapatite as an insoluble inorganic salt and it does not support a genus of an insoluble inorganic salt.
Election/Restrictions
Applicant’s election without traverse of a species of a particulate additive in the reply filed on 7/3/2026 is acknowledged. Claims 31, 33, 40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 7/3/2026.
Claim Objections
Claim 34 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 2. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-5, 16, 30, 32 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 pre-AIA the applicant regards as the invention.
Claims 1, 34 recite a melt flow index of 2.5-30 g/10min at a temperature above 50°C. MFI is a property heavily dependent on measuring temperature (instead of a temperature range) and weight. The claimed range can always be achieved by adjusting measuring temperature and weight. Without these two conditions MFI value is meaningless from a scientific point of view. For purposes of expediting prosecution, any number would read on the claimed range.
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) 1-5, 30, 32, 34-37, 39 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Castro et al (US 2018/0055643).
Claim 1, 30: Castro teaches a composition comprising polyethylene glycol, nano hydroxyapatite and polycaprolactone [0125]. The composition is solid at RT.
Claims 2-5, 32, 34-37, 39: it is noted that these claims are directed to a composition, the claim limitations are related to an article. The features of the article focus on the capabilities of the composition. The composition of Castro has the capabilities to be formed into a monofilament having the claimed features.
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.
Claim 16, 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Castro et al (US 2018/0055643).
Castro teaches the limitation of claim 1 as discussed above.
Castro does not teach the content of hydroxyapatite.
However, Castro teaches the tissue engineering scaffolds were designed with a varying porosity and nano hydroxyapatite content [0092]. The content of hydroxyapatite is a result effective variable which determine the degree of porosity. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the content of hydroxyapatite through routine experimentation to reach the desired porosity. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENWEN CAI whose telephone number is (571)270-3590. The examiner can normally be reached on M-F 9am-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, Joseph Del Sole can be reached on (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WENWEN CAI/
Primary Examiner, Art Unit 1763
Prosecution Insights