Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 17 February 2026 has been entered.
Claim Rejections - 35 USC § 112
3. 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.
4 Claims 10 and 36 are 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.
Regarding claim 10, as amended, the examiner has not found support for the use of the claimed chain extenders in combination.
Regarding claim 36, despite applicants’ remarks, the disclosure within paragraph [00172] of the specification is insufficient to provide support for the claimed subject matter. Firstly, absent an encompassing disclosed range, the examples set forth within Table 7 provide support only for the exemplified water contact angle of each example, as opposed to the claimed range. This position is in agreement with MPM 2163.05 (III). Furthermore, the examiner takes the position that the exemplified values of Table 7 cannot support the endpoints of the claimed range, because the specification, including the referenced examples of paragraph [0172] are completely silent with respect to the endpoints. Also, the claimed range is unsupported, because the examples of Table 7 are outside the scope of claim 1; according to paragraph [00147], polytetramethylene ether glycols (glycols being understood as difunctional) of the examples of Table 1 and Table 7 have equivalent weights of 500-1000 Da, therefore molecular weights of 1000-2000; however, within claim 1, the molecular weight of this component is less than 1000. Taking all of these points together, the subject matter of claim 36 is unsupported as originally filed.
Prior Art Rejections
5 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.
6. Claims 1, 8, 10, 12, 13, and 31-36 are rejected under 35 U.S.C. 103 as being unpatentable over Zdrahala et al. (US 4,841,007) in view of Solvay Specialty Polymers; Fluorolink for Low Energy Coatings.; PFPE- Polymer Modifiers, pages 6-11.
Zdrahala et al. disclose medical articles, such as tubing and catheters, produced from a polyurethane reaction product of polyisocyanate, polyglycol, diol chain extender, and polyether diols having perfluoro groups. Regarding claim 36, since the use of the fluorine containing component would be expected to increase hydrophobicity, one would have reasonably expected the polyurethane to possess the claimed water contact angle. Regarding claim 35, it is well understood that cured polyurethanes, whether produced from one-shot or prepolymer methods, utilize index values that approximate 1. This position is supported by the disclosure within column 3, lines 25-30. The polyurethane has an overlapping hard segment content with that claimed and has the claimed physical properties. Furthermore, as intrinsically understood, the soft segment content is the content other than the disclosed hard segment content; accordingly, the polyurethane has an overlapping soft segment with that claimed. Furthermore, the position is taken that one seeking to modify such properties as hardness or elongation would have been motivated to vary the soft and hard contents; thereby rendering the claimed soft and hard contents obvious. See abstract; column 2, lines 10-21; column 3, lines 6+; column 4, lines 4-22; column 7, lines 13-20; and Tables I and II. Though the reference fails to disclose the claimed content relative to the claimed basis for the perfluoropolyether within claim 1, in view of the disclosures within column 3, lines 51+; column 4, lines 16-18; and components and quantities within Table I, the position is taken that it would have been obvious to select the claimed limitations based on these teachings. Regarding the polytetramethylene ether glycol limitation of claim 1 and the limitation of claim 8, the aforementioned document locations disclose the use of polytetramethylene ether glycol having a molecular weight as low as 500 and the use of this ether glycol as a mixture with polyethylene glycol. See specifically column 3 ,lines 51+. Accordingly, the use of mixtures of these claimed glycols would have been obvious. Regarding claims 31-34, since the aforementioned medical articles, such as catheters, are used in infusion treatments, the position is taken that the skilled artisan would have found such treatments obvious in view of these disclosed articles. Furthermore, with respect to claim 34, considering the effect of the fluorine groups, one would have expected the resulting medical articles to display less fouling.
7. Though the primary reference fails to disclose the diol-containing perfluoropolyether structure of claim 1, the primary reference does disclose within column 3, lines 31-32 that any polyether glycol having from 20-70 weight % fluorine may be used. Considering this disclosure, it is noted that the Fluorolink polymer modifier within page 8 of the Solvay reference has applicant’s claimed structure and the required fluorine content. Accordingly, the position is taken it would have been obvious to employ this perfluorinated polyether diol as the fluorinated diol of the primary reference, so as to arrive at the claimed invention. Upon reaction of this perfluorinated polyether diol, the diol would have been incorporated into the backbone of the polyurethane.
8. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Zdrahala et al. (US 4,841,007) in view of Solvay Specialty Polymers; Fluorolink for Low Energy Coatings.; PFPE- Polymer Modifiers, pages 6-11 and further in view of Moszner et al. (US 2006/0287458 A1).
Zdrahala et al. disclose medical articles, such as tubing and catheters, produced from a polyurethane reaction product of polyisocyanate, polyglycol, diol chain extender, and polyether diols having perfluoro groups. The polyurethane has an overlapping hard segment content with that claimed and has the claimed physical properties. Furthermore, as intrinsically understood, the soft segment content is the content other than the disclosed hard segment content; accordingly, the polyurethane has an overlapping soft segment with that claimed. Furthermore, the position is taken that one seeking to modify such properties as hardness or elongation would have been motivated to vary the soft and hard contents; thereby rendering the claimed soft and hard contents obvious. See abstract; column 2, lines 10-21; column 3, lines 6+; column 4, lines 4-22; column 7, lines 13-20; and Tables I and II. Though the reference fails to disclose the claimed content relative to the claimed basis for the perfluoropolyether within claim 1, in view of the disclosures within column 3, lines 51+; column 4, lines 16-18; and components and quantities within Table I, the position is taken that it would have been obvious to select the claimed limitations based on these teachings. Regarding the polytetramethylene ether glycol limitation of claim 1 and the limitation of claim 8, the aforementioned document locations disclose the use of polytetramethylene ether glycol having a molecular weight as low as 500 and the use of this ether glycol as a mixture with polyethylene glycol. See specifically column 3 ,lines 51+. Accordingly, the use of mixtures of these claimed glycols would have been obvious.
9. Though the primary reference fails to disclose the diol-containing perfluoropolyether structure of claim 1, the primary reference does disclose within column 3, lines 31-32 that any polyether glycol having from 20-70 weight % fluorine may be used. Considering this disclosure, it is noted that the Fluorolink polymer modifier within page 8 of the Solvay reference has applicant’s claimed structure and the required fluorine content. Accordingly, the position is taken it would have been obvious to employ this perfluorinated polyether diol as the fluorinated diol of the primary reference, so as to arrive at the claimed invention. Upon reaction of this perfluorinated polyether diol, the diol would have been incorporated into the backbone of the polyurethane.
10. Though the primary reference fails to disclose the increased surface concentration of perfluoropolyether, the position is taken that one would have reasonably expected such a result in view of the lower surface tension of the fluorinated compounds, causing them to migrate to the surface. Paragraph [0003] within Moszner et al. supports this position.
11. Applicants’ response to the prior art rejections has been carefully considered; however, the response is insufficient to overcome the rejections for the following reasons. Firstly, regarding applicants’ arguments concerning the amended hard and soft segment contents; these limitations have been addressed within thin the bodies of the rejections. The examiner has explained why it would have been obvious to use the segment contents, as claimed. Furthermore, applicants have argued that their showings of unexpected results rebut the prima facie case of obviousness. In response, applicants argued showings are inadequate to overcome the rejections, because the argued examples are not only not commensurate in scope with the claims, they are outside the scope of the claims. Specifically, applicants state within page 10 that the relied upon formulations employ 4,4’-diphenylmethane diisocyanate and butanediol; however, the instant claims are not so limited. Furthermore, according to paragraph [00147], polytetramethylene ether glycols (glycols being understood as difunctional) of the argued examples have equivalent weights of 500-1000 Da, therefore molecular weights of 1000-2000; however, within claim 1, the molecular weight of this component is less than 1000. Applicants’ position that the molecular weight of their exemplified PTMEG is 500-1000 is incorrect. Regarding applicants’ arguments with respect to claim 35, the limitation of claim 35 has been addressed within the body of the rejection. Furthermore, applicants’ argument is not commensurate in scope with the claim limitation, there is nothing within the claim that mandates a one-shot process. Lastly, regarding applicants’ argument with respect to the rejection of claim 2, the examiner notes that Moszner et al. has not been relied upon to address the limitations argued by applicants; these limitations have been addressed in accordance with the disclosures within the primary reference. Applicants’ arguments having been addressed, the examiner finds no justification for withdrawing the prior art rejections.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765