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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/033,679
`
`09/26/2020
`
`Yuki Namigata
`
`083710-3163
`
`3419
`
`Rimon PC - Pansonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`RONEY, CELESTE A
`
`1612
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/06/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time 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):
`USPTOmail@rimonlaw.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`17/033,679
`Namigataetal.
`
`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 STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof 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 29 November 2023.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J This action is non-final.
`3) 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)(2) 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.
`
`Disposition of Claims*
`1.and 3-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1and3-8 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* 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://www.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)7) 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
`1.1.) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240301
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 2
`
`DETAILED ACTION
`
`Previous Rejections
`
`Applicant’s arguments, filed 11/29/2023, have been fully considered. Rejections
`
`and/or objections not reiterated from previous office actions are hereby withdrawn. The
`
`following rejections and/or objections are either
`
`reiterated or newly applied. They
`
`constitute the complete set presently being applied to the instant application.
`
`Claim Rejections - 35 USC § 103 - Obviousness
`
`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 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, 3 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Kawashima etal [EP 3 542 784 A1],
`
`in view of Ishii et al (US 2013/0218262 A1).
`
`Kawashima taught [title] a film to be adhered to a living 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 nonwovenfabric of
`
`polyethylene or polyethylene terephthalate (e.g., reads on a support formed of a material
`
`in which a hydrogen bonding component 5H in a Hansen solubility parameter is 2 to 20
`
`MPa) [0056, 0097, Figure 5, Example 10].
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 3
`
`The cellulose membrane was formed of a multilayer membrane, having multilayer
`
`sheets, wherein which a second sheet was on the opposite side of the principle surface
`
`of the first sheet, where the first sheet contacted the skin [0062-0066].
`
`Although Kawashima taught a support, Kawashima was silent
`
`the support
`
`including protrusions and recesses, as recited in claim 1.
`
`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,
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`the plurality of spaced apart projections
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`being contactable with theliving tissue; and, the biological adhesive sheet being bondable
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`to the living tissue whenthe plurality of spaced apart projections contacttheliving tissue.
`
`With the plurality of projections in contact with the living tissue, there is no need for other
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`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 oneof 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 4s 0009-0010].
`
`Theinstant claim 1 recites the adhesivefilm having a thickness of 5 um orless.
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 4
`
`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 3 is rendered prima facie obvious because Kawashima taught the support
`
`as a non-wovenfabric, as previously discussed.
`
`Kawashima,in view of Ishii, reads on claims 1, 3 and 5-7.
`
`Regarding claim 8, Kawashima was silent polystyrene, as instantly recited.
`
`However,
`
`Ishii taught
`
`[abstract] a biological adhesive sheet
`
`that includes a substrate
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`formed of a biocompatible material, where the substrate was formed of polystyrene [(see
`
`claim 14, reciting an inner tube, and at 40102 where the material of the inner tube was
`
`formed of polystyrene)].
`
`It would have been prima facie obvious to one of ordinary skill in the art to include
`
`Ishi’s polystyrene within the teachings of Kawashima. The ordinarily skilled artisan would
`
`have been motivated to include a biocompatible substrate for the biological adhesive
`
`sheet, as taught by Ishii [Ishii at the abstract, at claim 14 and at 70102].
`
`Response to Arguments
`
`Applicant's arguments filed 11/29/2023 have been fully considered but they are
`
`not persuasive.
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 5
`
`Applicant argued that Kawashima andIshii fail to teach the newly recited feature
`
`of “a support that supports a second surface ofthe living body-adhesive film, wherein the
`
`second surface is opposite to the first surface of the living body-adhesive film...wherein
`
`the support
`
`includes protrusions and recesses that are covered with the living body-
`
`adhesive film” of claim 1.
`
`The Examiner disagrees. This is because Kawashima taught a multilayer film,
`
`wherethefirst layer contacted skin and the back of thefirst layer contacted the second
`
`layer. This, combined with Ishii's teachings of a film including protrusions and recesses,
`
`reads on the claimed invention (see the body of the rejection).
`
`Applicant argued that new claim 8 is patentable, based on dependency.
`
`The Examinerresponds that patentable material has not beenidentified. No claims
`
`are allowed.
`
`Claim 4 is 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) and further in view of
`
`Yamashiro et al (JP 2017-164930 A).
`
`The 35 U.S.C. 103 over Kawashima and Ishii was previously 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, wherethe 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
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 6
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`excellent in transferability, and reliably allowed for a secure, clean, clear and smooth
`
`adherence of
`
`the film onto skin [abstract; page 2, 1‘! 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 for a
`
`secure, Clean, clear and smooth adherenceof the film onto skin, as taught by Yamashiro
`
`[Yamashiro: abstract; page 2, 1s! paragraph; page 4, last two paragraphs].
`
`The instant claim 4 recites a weight of 20 to 70 g/m?.
`
`Kawashima taught a weight of 45-60 g/m?. A prima facie case of obviousness
`
`exists because of overlap, as discussed above.
`
`Response to Arguments
`
`Applicant's arguments filed 11/29/2023 have been fully considered but they are
`
`not persuasive.
`
`The Applicant did not traverse the rejection over Yamashiro.
`
`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR 1.136(a).
`
`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 7
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`A shortened statutory period for reply to this final action is set to expire THREE
`
`
`
`MONTHS from the mailing date of this action. In the eventafirst reply is filed within TWO
`
`MONTHS of the mailing date of this final action and the advisory action is not mailed until
`
`after the end of the THREE-MONTHshortened statutory period,
`
`then the shortened
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`statutory period will expire on the date the advisory action is mailed, and any extension
`
`fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory
`
`action.
`
`In no event, however, will
`
`the statutory period for reply expire later than SIX
`
`MONTHS from the mailing date of this final action.
`
`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.
`
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`
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`

`

`Application/Control Number: 17/033,679
`Art Unit: 1612
`
`Page 8
`
`for information about
`
`filing in DOCX format. For additional questions, contact
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`the
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`
`/CELESTE A RONEY/
`Primary Examiner, Art Unit 1612
`
`