www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/033,679
`
`09/26/2020
`
`Yuki Namigata
`
`083710-3163
`
`3419
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`RONEY, CELESTE A
`
`1612
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/30/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-7 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-7 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)(J accepted or b)( objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)1) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a)C All
`1... Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`9/26/20;11/8/20.
`
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230824
`
`Application No.
`Applicant(s)
`17/033 ,679
`Namigata etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`CELESTE A RONEY
`1612
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 26 September 2020.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA 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.
`
`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-AlA 35
`
`U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from
`
`AlA to pre-AlA) 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.
`
`Claim Rejections - 35 USC § 103 - Obviousness
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`A patentfora claimed invention may notbe 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 beforethe effectivefiling date of the claimedinvention to a person having ordinary skill
`in the art to which the claimed invention pertains. Patentability shall not be negated by the
`mannerin which the invention was made.
`
`Claim(s) 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Kawashima et al [EP 3 542 784 Al].
`
`Kawashima taught [title] a film to be adhered toaliving body, comprising a self-
`
`supporting cellulose membrane having a thickness of between 20 nm and 1300 nm, and
`
`composedof regenerated cellulose having a weight average molecular weight of 150,000
`
`or more [abstract]. The cellulose membrane was prepared on a nonwoven fabric of
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 3
`
`polyethylene or polyethylene terephthalate (e.g., reads on a support formed of a material
`
`in which a hydrogen bonding component 6H in a Hansen solubility parameter is 2 to 20
`
`MPa”) [0056, 0097, Figure 5, Example 10].
`
`Claim 1
`
`is rendered prima facie obvious over the teachings of Kawashima,
`
`because it
`
`is prima facie obvious to combine prior art elements according to known
`
`methods,in order to yield predictable results.
`
`In the instant case, all the claimed elements
`
`(e.g.,
`
`living body adhesive film) were known in the prior art (e.g., Kawashima), and one
`
`skilled in the art could have combined the elements as claimed by known methods with
`
`no change in their respective functions, and the combination yielded nothing more than
`
`predictable results (e.g., a living body adhesive film) to one of ordinary skill
`
`in the art.
`
`MPEP 2143.A.
`
`Kawashima reads on claims 1 and 5-7.
`
`The instant claim 1 recites the adhesive film having a thickness of 5 um or less.
`
`The instant claim 5 recites cellulose having a molecular weight of 30,000 or more.
`
`The instant claim 6 recites a thickness of 20 to 1300 nm.
`
`Kawashima taught the film having a thickness of between 20 nm and 1300 nm and
`
`molecular weight of 150,000 or more. In the case where the claimed ranges "overlap or
`
`lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists.
`
`MPEP 2144.05 A.
`
`Claim(s) 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Kawashima et al [EP 3 542 784 A1], in view of Ishii et al (US 2013/0218262 A1).
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 4
`
`The 35 U.S.C.
`
`103 rejection over Kawashima was previously described.
`
`Kawashima taught the support as a non-woven fabric, as previously discussed (e.g.,
`
`reads on the instant claim 3).
`
`Although Kawashima taught a support, Kawashima was silent
`
`the support
`
`including protrusions and recesses, as recited in claim 2.
`
`Ishii taught [title, abstract, claim 1] a biological adhesive sheet position-able in a
`
`living body in contact with living tissue of the living body, the biological adhesive sheet
`
`comprising a substrate formed of a biocompatible material; a plurality of spaced apart
`
`projections (e.g., reads on protrusions and recesses) formed of a biocompatible material
`
`and projecting from a surface of the substrate,
`
`the plurality of spaced apart projections
`
`being contactable with the living tissue; and, the biological adhesive sheet being bondable
`
`to the living tissue when the plurality of spaced apart projections contactthe living tissue.
`
`With the plurality of projections in contact with the living tissue, there is no need for other
`
`configurations for holding the bonded state of the biological adhesive sheet, and so the
`
`influence on theliving tissue can be reduced, and safety can be enhanced [0009-0010].
`
`It would have been prima facie obvious to one of ordinary skill in the art to include,
`
`within the teachings of Kawashima, a support
`
`including protrusions and recesses, as
`
`taught by Ishii. The ordinarily skilled artisan would have been so motivated, because
`
`having a support with a plurality of projections in contact with theliving tissue, means that
`
`there is no need for other configurations for holding the bonded state of the biological
`
`adhesive sheet. Thereby, the influence on the living tissue can be reduced, and safety
`
`can be enhanced, as taught byIshii [Ishii at §s 0009-0010).
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 5
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kawashima
`
`et al [EP 3 542 784 A‘1],
`
`in view of Yamashiro et al (JP 2017-164930 A).
`
`The 35 U.S.C. 103 over Kawashima waspreviously discussed.
`
`Although Kawashima taught a support, as previously discussed, Kawashima was
`
`silent its weight, as recited in claim 4.
`
`Yamashiro taughta thin film adherent sheet comprising a substrate, where the thin
`
`film was layered onto the substrate. The substrate was a nonwovenfabric of polyethylene
`
`and polyethylene terephthalate fibers with a weight of 45-60 g/m?. The substrate was
`
`excellent in transferability, and reliably allowed for a secure, clean, clear and smooth
`
`adherence of
`
`the film onto skin [abstract; page 2, 1s! paragraph; page 4,
`
`last
`
`two
`
`paragraphs].
`
`Since Kawashima taught a support of a nonwoven fabric of polyethylene or
`
`polyethylene terephthalate fibers,
`
`it would have been prima facie obvious to one of
`
`ordinary skill in the art to have included the support at a weight of 45-60 g/m2, as taught
`
`by Yamashiro. The ordinarily skilled artisan would have been motivated to include a
`
`weight wherein the substrate was excellent in transferability, and reliably allowed fora
`
`secure, clean, clear and smooth adherence of the film onto skin, as taught by Yamashiro
`
`[Yamashiro: abstract; page 2, 1st paragraph; page 4, last two paragraphs].
`
`The instant claim 4 recites a weight of 20 to 70 g/m2.
`
`Kawashima taught a weight of 45-60 g/m?. A prima facie case of obviousness
`
`exists because of overlap, as discussed above.
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 6
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CELESTE A RONEY whose telephone number is
`
`(571)272-5192. The examiner can normally be reached Monday-Friday; 8 AM-6 PM.
`
`Examiner and_videointerviews are available via telephone, in-person,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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, Frederick Krass can be reached on 571-272-0580. The fax phone numberfor
`
`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: httos://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/pate nt -
`
`center for more information about Patent Center and https:/Awww.uspto.gov/patents/doc x
`
`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.
`
`/CELESTE A RONEY/
`Primary Examiner, Art Unit 1612
`
`