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 .
Claims 1-27 are pending as amended on 12/9/2025.
No new grounds of rejection have been set forth. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Rejections - 35 USC § 103
Claim(s) 1-6 and 8 stand rejected under 35 U.S.C. 103 as being unpatentable over Dagorne et al (US 2015/0307656) for the reasons previously made of record in the action mailed on 6/12/2025.
Claim(s) 7, 12-15 and 24-26 stand rejected under 35 U.S.C. 103 as being unpatentable over Dagorne et al (US 2015/0307656) in view of Sikes et al (US 2009/0304767) for the reasons previously made of record in the action mailed on 6/12/2025.
Allowable Subject Matter
Claims 9-11, 16-23 and 27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The reasons for indicating the allowable subject matter are the same as previously set forth in paragraph 29 of the action mailed on 6/12/2025.
Response to Arguments
Applicant's arguments filed 12/9/2025 have been fully considered.
In view of the amendments to the claims, the objections and rejection under 35 USC 112(b) which were previously set forth in the action mailed on 6/12/2025 have been overcome.
Applicant argues (p 10) that the rejection of the structure recited in independent claim 1 from the disclosure of Dagorne is based on impermissible hindsight due to the number of selections within Dagorne which are needed to arrive at the presently claimed structure. Applicant shows an example of a structure encompassed by Dagorne’s generic formula which is not encompassed by the instant formula. However, the fact that Dagorne’s generic formula encompasses structures which are not encompassed by the instant claims in addition to structures which are encompassed by the instant claims does not establish the nonobviousness of the claimed subject matter.
In a determination of obviousness, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co V. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious."). Although Dagorne does not exemplify an embodiment of a polymer derived from a monomer of formula (II) which meets instant formula [I], the broader disclosure of Dagorne would have reasonably suggested to one of ordinary skill in the art to choose from a finite number of identified, predictable solutions with a reasonable expectation of success (as set forth in the rejection of record), including selection of R group structures within Dagorne’s definitions in [0027] encompassed by instant formula [I]. Additionally, as set forth in the rejection of record: given the breadth of the definition of R1 and R2 within instant claim 1, there is substantial overlap between the scope of polymers obtained from a monomer of formula II (as disclosed by Dagorne in [0026-7]) and the scope of polymers encompassed by instant formula [I], which supports a finding that a prima facie case of obviousness exists.
Applicant argues (p 11) that a skilled artisan would need to realize that the thus formed polymer would have pendant group which can readily be used for attaching functional moieties comprising active agents to the formed polymer, and argues that certain examples provide a monomer from jasmine lactone. However, Applicant’s arguments fail to establish the nonobviousness of the rejected claims for at least the reasons that none of the claims rejected over Dagorne are limited to a polymer which is necessarily derived from jasmine lactone, and, none of the claims rejected over Dagorne and Sikes limit the structure through which a functional moiety must be attached to the polymer. Note that teachings in Sikes, rather than in Dagorne, were relied on to reject instant limitations drawn to a drug combined with a polymer, and Applicant has not provided any arguments which specifically address the rejection citing Sikes as a secondary reference.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 event a first 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-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) 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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/Primary Examiner, Art Unit 1766