DETAILED 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 .
Status of the Claims
2. Claims 24-41 are currently pending. Claims 24-31 have been withdrawn as being drawn to a nonelected invention. Claims 32-41 are currently under examination. This office action is in response to the amendment filed on 07/21/2025.
Election/Restrictions
3. Claims 24-31 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/21/2025.
Applicant's election with traverse of Group II claims 32-33 in the reply filed on 07/21/2025 is acknowledged. The traversal is on the ground(s) that Group I is directed to a method of preparing a crosslinked porous particle and group II is directed to a method preparing a substrate bearing a crosslinked coating both involve at least the formation of an aqueous phase monomer mixture and to polymerizing the mixture resulting in a product comprising a ligand functional group. Furthermore the groups of inventions are not mutually exclusive to be mutually exclusive the selection of one group must necessitate the exclusion of the alternate group. However as the instant group of inventions relates to a method preparing a particle and a method of preparing a substrate with a coating wherein the particle and the coating both comprise the claimed ligand functional group there is no logical reason for one of ordinary skill int eh art to conclude that one method necessarily excludes the other. IN other words the claimed methods are capable of being used together as being methods of preparing an item (particles or coated substate), comprising related chemical moieties and ligand functional groups. This is not found persuasive because The claims as currently drafted are drawn to different methods that can not be practiced together and are mutually exclusive with one another. In particular one method creates a crosslinked coating on a substrate where a porous substrate is coated with an aqueous phase monomer mixture on the substrate and then polymerized, where the other method creates a porous particle where an aqueous phase monomer mixture is suspended in a non-polar solvent and the monomer mixture is polymerized to form particles. These processes form two different articles one which is particles with no mention of any substrate the other which is a coating on a substrate. These products are different from each other can not be made by the method used to make the other product. The method of making particles can not be used to make the coating as it requires making a dispersion which would not be capable of coating the aqueous phase monomer mixture on the substrate as is required by the other invention. As such these inventions are considered to be mutually exclusive and not capable of use together as they make different products by different methods.
Applicants argue that due to overlapping scope identified int eh traversal as discussed previously a search of one of the groups of inventions would reveal any art related to the other identified group of inventions. Therefor there is no search or examination burden present for the claimed groups of inventions. Additional the office action concludes that the groups of inventions are drawn to different areas of the art as indicated by their different classifications. Applicant respectfully submits that the recited classifications appear to be erroneous Group I’s classification of C08F2/18 directed to suspension polymerization. This is erroneous as the claims of Group I are not directed toward the process of suspension polymerization but to a method of preparing a particle. While the particles are formed from polymerization of the utilized monomers, the claims are not directed to wards a process of polymerization or suspension polymerization per se. Group II classification of C09D133/02 is directed toward coating composition based on homopolymers or copolymers of compounds having one or more unsaturated radical and an additional functional groups. Group II is not directed towards a coating composition but to method of preparing a coated substrate. The coating per se ins not being instantly claimed. Therefor applicant respectfully traverses that there is a search burden for the identified group of inventions due to differing classifications for at least these reasons.
This argument is not found to be persuasive as a search of one group of invention would not necessarily reveal any art related to the other identified groups of inventions. The search terms for a method of coating and for the formation of a particle in an aqueous non aqueous suspension would very different from one another and the search for one would by no means result in searching all the areas required to search the other, which is particularly the case as one invention would require search terms such as suspension and particle and the other would require terms such as coating and substrate. It should be noted that the particulars of the classification do not change that the different inventions would require different search terms and areas and so would provide a serious search burden. However The use of C08F2/18 for group I is correct as the method requires forming a suspension (“suspending the aqueous phase monomer mixture in a non-polar solvent”) and then polymerizing in order to form particles. Which is the normal action of suspension polymerization which is used to make particles or beads. That applicant claims a method of making a porous particle does not change that the method indicates suspension polymerization, particularly as there is no classification drawn specifically to making particles. Similarly the use of C09D133/02 for invention II is proper because the claim recites an aqueous phase monomer mixture which is coated on a substrate and so would be a coating composition, and in the majority of cases the method of coating is classified with the classification. As such there is a serious search burden among the different inventions.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
4. The foreign references JP 47049913 and JP 2008201726 as well as the NPL document of Boutevin, B et al listed on the IDS filed on 03/14/2022 have not been considered as no copy of these documents has been provided.
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.
5. Claim 38 is 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.
Concerning claim 38 the claim recites “the porous substrate is a thermally induced phase separation membrane” which renders the claim indefinite as it is not clear what is meant by this. Does this mean that the porous substrate must have two phases that are separated? That the membrane is made by thermally induced phase separation? That the membrane can be used in thermally induced phase separation?
Claim Rejections - 35 USC § 102
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-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
(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.
6. Claim(s) 32-34, 38, 40 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Rajagopal (US 2013/0130270 A1) as is evidenced by Sartomer ( Sartomer, “SR 610”, 2025, accessed on the internet on 12/09/2025 at https://emea.sartomer.arkema.com/en/product-finders/product/f/sartomer_MonomerAcrylates_EMEA/p/sr610/) and Babu (US 5,506,279)
Concerning claim 32 Rajagopal teaches a method of making a solution of 1 wt% ethylene vinyl alcohol copolymer 2 wt% of SR@610 and 1 wt% of a reactive photo initiator VAZPIA of 2-{4-(2-hydroxy-2-methyl propanoyl)phenoxy}]ethyl-2-methyl-2-N-propenoylamino propanoate in an ethanol/ water mixture (paragraph 0087-0088 and 0119-0121). This aqueous phase monomer mixture what then used to saturate a TIPS microporous membrane which was then exposed to UV light and cured (paragraph 0089)which corresponds to the claimed coating the aqueous phase mixture on the substrate and polymerizing the monomer mixture to form a coating on the substate comprising the ligand functional group, as the groups of VAZIPA monomer would be present in the coating.
Sartomer provides evidence that the SR 610 monomer indicated by Rajagopal is a polyethylene glycol diacrylate monomer (paragraph 1) and as such would be crosslinking monomer.
Rajagopal teaches that the particular photo initiator is disclosed in US 5,506,279 (paragraph 0088) hereafter referred to as Babu. Babu teaches that this monomer has a structure of (column 14 lines 25-65)
PNG
media_image1.png
56
350
media_image1.png
Greyscale
.
It should be noted that this monomer has 9 catenated atoms between the ethylenically unsaturated vinyl group and the phenyl ring. It should also be noted that the OH group at the end of the monomer is a lightly acidic group that is capable of being a ligand and so would be considered to meet the monovalent ligand functional group. The group between the Vinyl group and the OH group would be considered to be a multivalent spacer group that is directly bonded to said monovalent group and would include a chain of at least 9 catenated atoms between the groups. As such this monomer would meet the claimed structure of the claimed at least one monomer.
Therefore Rajagopal teaches the claimed method.
Concerning claims 33-34, 38 the TIPS microporous membrane is indicated to be made out of polypropylene (paragraphs 0067-0083) and is indited to be made by a thermally induced phase separation process (paragraph 0045) and as such would be considered to be a porous polymeric membrane and a thermally induced phase separation membrane.
Concerning claim 40 Rajagopal teaches that the microporous membranes which is saturated with the coating solution are R1933-7 and R1933-18 membranes (paragraph 0121) which are indicated to have a bubble pore size which is 0.34 and 0.23 micrometers respectively (Paragraph 0094 Table 2). It should be noted that the claimed pore size is indicated to be merely “a pore size” and as such this bubble pore size would correspond to the claimed pore size and is within the claimed range of 0.1 to 10 micrometers
7. Claim(s) 37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rajagopal (US 2013/0130270 A1) as is evidenced by Sartomer ( Sartomer, “SR 610”, 2025, accessed on the internet on 12/09/2025 at https://emea.sartomer.arkema.com/en/product-finders/product/f/sartomer_MonomerAcrylates_EMEA/p/sr610/) , Babu (US 5,506,279), and Green (US 20020015690 A1)
Concerning claim 37 Rajagopal teaches the method of claim 32 as is stated above which includes coating using a coating solvent which is a mixture of water and ethanol (paragraph 0087-0088).
Green is drawn to polymer composition and provides evidence that certain solvents such as ethanol are used as the porogen in a bulk polymerization process (paragraph 0046). As such ethanol is a porogen and so the example of Rajagopal teaches the claimed method.
8. Claim(s) 32, 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsushige (US 2010/0317762) as is evidenced by Jefferies (US 4,875,858).
Concerning claim 32, 36 Matsushige teaches an adhesive composition for dental use exhibiting acidic properties (abstract) and particularly teaches a composition that comprises 10-methacryloyloxydecyl dihydrogen phosphate (paragraph 0252, BisGMA 2,2’bis[4-(2-hydroxyl-3methacryloyloxypropoxy)phenyl] propane (paragraph 0255) triethylene glycol dimethacrylate (paragraph 0256) and 2-hydroxyethyl methacrylate (paragraph 0257) in a mixed solvent of water and isopropyl alcohol (paragraphs 0345-0347 and Table 1 example 17). This composition would be an aqueous phase monomer mixture.
10-methacryloyloxydecyl dihydrogen phosphate is a phosphorous acid type monomer which has a ethylenically unsaturated vinyl bond a chain of 12 catenated atoms and then a phosphorous acid group. A phosphorous acid group is capable of acting as a ligand and as such this monomer would correspond to the claimed at least one monomer of the claim.
BisGMA 2,2’bis[4-(2-hydroxyl-3methacryloyloxypropoxy)phenyl] propane and triethylene glycol dimethacrylate are both monomers that comprise two methacrylate groups and as such can be used as a crosslinker and so would be considered to be a crosslinking monomer.
The 2-hydroxyethyl methacrylate would be considered to a third monomer.
This composition is indicated to be evaluated for its durability of adhesion to dentin (paragraphs 0346-0347) which is indicated to occur by means of applying the adhesive composition into a mimic cavity which is fixed onto the dentin surface of a bovine foretooth and then irradiated with light in order to cure the adhesive (paragraph 0038-0340).
Jefferies is drawn to dental methods and teaches that dentin is a relatively porous material (column 1 lines 15-25).
As such the method indicated by Matsushige would comprise providing the porous substrate of the bovine tooth dentin, coating the aqueous phase monomer mixture on the substrate as is indicated by the applying the adhesive composition to the dentin and polymerizing the monomer mixture to form a coating on the substrate that would comprise the phosphate acid groups that correspond to the ligand functional group. As such Matsushige teaches the claimed method.
Claim Rejections - 35 USC § 103
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-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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 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.
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.
9. Claim(s) 35 and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rajagopal (US 2013/0130270 A1) as is evidenced by Sartomer ( Sartomer, “SR 610”, 2025, accessed on the internet on 12/09/2025 at https://emea.sartomer.arkema.com/en/product-finders/product/f/sartomer_MonomerAcrylates_EMEA/p/sr610/) and Babu (US 5,506,279)
Concerning claim 35 Rajagopal teaches the method of claim 32 as is stated above which includes coating a porous substrate of a TIPS membrane. The example of Rajagopal does not specifically teach that the porous membrane is a porous polyamide membrane. However Rajagopal teaches the that the filter membranes can be made by methods such as thermally induced phase separation processes and can be made from polyamides (paragraph 0045).
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the example of Rajagopal to include the use of a porous polyamide membrane because Rajagopal teaches that the porous membranes can be made from polyamide.
Concerning claim 39 Rajagopal teaches the method of claim 32 as is stated above which includes coating a porous substrate of a TIPS membrane. The example of Rajagopal does not specifically teach that the porous membrane is a nonwoven web. However Rajagopal teaches the that the filter membranes can be made by methods such as thermally induced phase separation processes and can also be made by methods such as electrospinning and can be made out of nanofibers (paragraph 0045-0046). This would result in a non woven web as the filter membrane.
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the example of Rajagopal to include the use of a porous nonwoven web because Rajagopal teaches that the porous membranes can be nanofiber membranes made by methods such as electrospinning which would result in a nonwoven web.
10. Claim(s) 32-33, 36, 39, 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyake (US 5,079,034).
Concerning claim 32-33, 36, 39 Miyake is drawn to a method of the preparation of an absorbent composition in which an aqueous solution containing a water soluble radical polymerization initiator and a water soluble ethylenically unsaturated monomer is applied to a substate and the monomer is polymerized (abstract)and column 2 lines 1-10). The substate may include sponge and spongy porous substrates such as synthetic resin foam and fibrous substrates of paper string non woven fabric woven fabric and the like (column 2 lines 54-60). The water soluble ethylenically unsaturated monomer used can be monomers containing sulfonic acid such as 2-(meth)acryloylethane sulfonic acid, 4-(meth)acryloylbutane sulfonic acid and their salts (column 3 lines 15-30). The monomer concentration in aqueous solution is indicated to be in a range of from 20 wt% to saturated concentration or more preferably from 30 to 70 wt% (column 3 lines 60-68).
Miyake teaches that in addition to the water soluble ethylenically unsaturated monomer it is desired to contain a crosslinking agent in the aqueous solution applied to the substrate and that examples of this crosslinking agent include compounds possessing two or more ethylenically unsaturated groups in one molecule.
The content of the water soluble radical polymerization initiator in the solution is indicated to be 0.01 to 5 parts by weight to 100 parts of monomer(column 4 lines 60-68 and the amount of crosslinking agent is indicated to be 0.005 to 5 parts by weight to 100 parts of monomer (column 5 lines 1-5). The amount of the aqueous monomer solution to be deposition on the substate is not particularly limited but is generally in the range of 0.1 to 100 parts by weight and preferably 0.5 to 20 parts by weight based on 1 part by weight of the substrate (column 5 lines 15-25). After the polymerization the composite material is indicated to be dried (column 7 lines 1-15).
Miyake teaches an exemplary method which comprises 100 parts by weight of a 50 wt% aqueous monomer solution comprising acrylic acid, potassium acrylate and 2-methacryloylethane sulfonic acid potassium salt , 0.5 parts by weight of potassium persulfate, 0.003 parts by weight of ethylene glycol diacrylate and 0.1 parts by weight of hydroxyethyl cellulose (column 12 lines 10-20). This composition was indicated to coat a substrate of a polypropylene non woven fabric after which the monomer was polymerized and the substrate was then dried to give the absorbent composite (column 12 lines 20-35). This would result in a coating on the substrate that comprises sulfonate salt groups which would correspond to the claimed ligand functional groups. The nonwoven polypropylene substate would be a non woven web. The ethylene glycol diacrylate would correspond to the claimed crosslinking monomer and the acrylic acid would correspond to a third comonomer.
The difference between the claimed method and the method of Miyake is that 2-methacryloylethane sulfonic acid potassium salt does not comprise a chain of at least 6 catenated atoms.
However as is stated above an alternative monomer for 2-methacryloylethane sulfonic acid and its salts is 4-(meth)acryloylbutane sulfonic acid and its salts and 4-(meth)acryloylbutane sulfonic acid comprises a chain of 6 catenated carbon atoms.
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the example of Miyake to replace 2-methacryloylethane sulfonic acid potassium salt with 4-(meth)acryloylbutane sulfonic acid or its salt to give the claimed method because Miyake teaches that 4-(meth)acryloylbutane sulfonic acid and its salt are alternative monomers to 2-methacryloylethane sulfonic acid and its salt.
Concerning claim 41 Miyake teaches the method of claim 32 as is stated above.
Miyake teaches an exemplary method which comprises 100 parts by weight of a 50 wt% aqueous monomer solution comprising acrylic acid, potassium acrylate and 2-methacryloylethane sulfonic acid potassium salt , 0.5 parts by weight of potassium persulfate, 0.003 parts by weight of ethylene glycol diacrylate and 0.1 parts by weight of hydroxyethyl cellulose (column 12 lines 10-20). The non woven fabric substate is indicated to be present in an amount of 30 g/ m2 and the aqueous monomer solution is deposited in an amount of 150 g/m2 (column 12 liens 20-30). There are 50.603 parts of solid components in the aqueous monomer solution out of a total of 100.603 for a solution of approximately 50.2997 wt% solids, which would indicate that the solids are used in an amount of 75.44954 parts per 30 parts of substrate. Since the composite material is dried only the solids of the aqueous monomer composition would remain after polymerization and would provide a weight gain to the substrate. As such the exemplary composition has a weight gain of 251.4985 wt%.
However Miyake teaches that the amount of the aqueous monomer solution to be deposition on the substate is not particularly limited but is generally in the range of 0.1 to 100 parts by weight and preferably 0.5 to 20 parts by weight based on 1 part by weight of the substrate (column 5 lines 15-25).
If the same aqueous solution used as in the example and the amount of aqueous monomer solution deposited is varied within the limits indicated by Miyake this would result in a range of the weight gain of 5.02997 wt% and 5029.97 wt%. This is an overlapping range with the claimed range of about 5% to about 30% by weight.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.I.
It would have been obvious to one of ordinary skill in the art to alter the method of the example of Miyake to have the claimed weight gain because Miyake teaches that the aqueous solution can be deposited on the substrate in an amount which provides an overlapping range with the claimed range of the weight gain.
11. Claim(s) 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyake (US 5,079,034) as is evidenced by Mayadunne (US 2007/0225387 A1).
Concerning claim 37 Miyake teaches the method of claim 32 as is stated above.
Miyake teaches an exemplary method which comprises 100 parts by weight of a 50 wt% aqueous monomer solution (column 12 lines 10-20) which would include the presence of water.
Mayadunne is drawn to coating applications of polymers and teaches that porogens such as water can be used (paragraphs 0017-0018). This provides evidence that water is a porogen and as such the method of Miyake which includes water would comprise a porogen and so meet the claimed limitations.
Conclusion
12. Claims 32-41 are rejected. No claims are currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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 at 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 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 L MILLER/ Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights