Notice of Pre-AIA 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 .
Priority
Applicant’s claim for the benefit of a prior-filed application (PRO 63/181,714, filed 29 April 2021) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Interpretation
Claim 1 has been amended to cite only “a urea moiety” (amended to remove reference to “an amide… moiety”). It is noted that Claim 4 makes reference to “an amide linkage or a urea linkage”. While not an indefinite issue under 35 USC 112(b) or a Claim Objection, it is unclear whether Applicant intends to maintain reference to “an amide”.
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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 3 are 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.
Regarding Claim 2, there is insufficient antecedent basis for “the amide or urea moiety”. Claim 1 has only introduced “a urea moiety”. Claim 3 is also rejected due to its dependence on Claim 2.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claim 12, Claim 1 has been amended to cite “the chromatographic material comprises a particle”. While not claimed to be the composition of the claimed “bulk material”, it is noted that the Specification discloses the “bulk material” is either “a monolithic material or a particulate material” (p0017; see also p0071 and p0072) (Applicant interchangeably uses the terms “particle” and “particulate” throughout the Specification). Because support in the Specification indicates “particulate” and “monolithic” to only be associated with the bulk material—and no other component—the Examiner will interpret the limitation “the chromatographic material comprises a particle” is attributed to the claimed “bulk material”. In light of this interpretation, Claim 12 is rejected as failing to include all the limitations of the claim upon which it depends because Claim 12 requires the bulk material to be monolithic whereas Claim 1 has required the bulk material to be a particle or particulate.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-4 and 7-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHEN et al. (Electrophoresis 2013, 34, 1877-1885) in view of O’GARA (US 2007/0215547 A1) and further in view of LAUBER et al. (US 2019/0126241 A1).
Regarding Claim 1, CHEN discloses a sulfoalkylbetaine-based zwitterionic organic-silica hybrid monolith (§1, pg. 1878, par. 3). Said monolith is prepared as a column with urea, vinyltrimethoxysilane (VTMS), and tetramethoxysilane (TMOS) first forming the bulk of the silica monolith and 3-dimethyl-3(N-methacrylamido)propyl) ammonium propane sulfonate (DMMPPS) added as the zwitterionic polymer (§2.2, pg. 1879) (i.e., [a] chromatographic material comprising (a) a bulk material and (b) a zwitterionic polymer covalently linked to a surface of the bulk material, the zwitterionic polymer comprising one or more residues that comprise…, a positively charged moiety and a negatively charged moiety; see FIG. 1 for structure of DMMPPS).
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CHEN fails to explicitly disclose (1) the one or more monomer residues comprise a urea moiety or (2) the zwitterionic polymer has a specific surface coverage on the bulk material of from 0.5 µmol/m2 to 40 µmol/m2.
O’GARA discloses the preparation of polymeric monoliths for use in liquid chromatography (p0002, p0017). O’GARA further discloses that the polymer binding ligands, which include one or more moieties including amide and urea (p0022, p0097, Claim 7), on the monoliths have certain surface concentrations, e.g., “between about 1.0 and about 3.4 µmol/m2” (p0023), which reads upon the claimed range of from 0.5 µmol/m2 to 40 µmol/m2. Advantageously, such polymeric surface concentrations reduce or eliminate reduced retention times and peak compression and thereby negate the need for high backpressures during chromatography (p0016). (Such issues are similarly recognized by CHEN; see §1, par. spanning pg. 1877-1878; §3.1, pg. 1880). Thus, one of ordinary skill in the art prior to the effective filing date of the claimed invention would have found it obvious to provide a specific surface coverage of at least 0.5 µmol/m2 as taught by O’GARA for the zwitterionic polymers on bulk material taught by CHEN.
Further, as noted, O’GARA teaches that the one or more moieties includes amide and urea (i.e., one or more monomer residues that comprise a urea moiety; p0022, p0097, Claim 7). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute a urea moiety as taught by O’GARA as a functional group in place of an amide moiety as taught by CHEN because such an equivalent substitution is disclosed in the prior art and is acknowledged by the Applicant in their disclosure to have no differential effect, i.e., the substitution of one known element for another would have yielded predictable results (MPEP §2143.01 B).
Modified CHEN is deficient in disclosing the chromatographic material/bulk material comprises a particle.
LAUBER discloses high purity chromatographic material (HPCM) comprising a chromatographic core material that is a hybrid inorganic-organic material (p0007). The HPCM is in the form of a particle, monolith, or a superficially porous particle or monolith (i.e., wherein the chromatographic material/bulk material comprises a particle; p0059). Thus, the suitability of preparing a chromatographic material as a particulate or as a monolith is known in the art. The claim would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention because the substitution of one known element for another, e.g., the particulate material disclosed by LAUBER as the bulk for the chromatographic material made obvious by modified CHEN, would have yielded predictable results (MPEP §2143.01 B).
Regarding Claim 2, modified CHEN makes obvious the chromatographic material of Claim 1. As noted, CHEN discloses a monolithic capillary column prepared with a urea, VTMS, and TMOS bulk and DMMPPS zwitterionic polymer. This sol-gel solution underwent condensation reaction to yield the disclosed chromatographic material (§2.2, pg. 1879) (i.e., wherein the urea moiety, the positively charged moiety and the negatively charged moiety are separated from one another by C1-C12 alkyl groups).
Regarding Claims 3 and 4, modified CHEN makes obvious the chromatographic material of Claim 2. As noted, CHEN discloses DMMPPS zwitterionic polymer (i.e., wherein the positively charged moiety is a quaternary ammonium moiety and wherein the negatively charged moiety is a sulfate moiety, a sulfonate moiety, a phosphate moiety or a phosphonate moiety; wherein the zwitterionic polymer comprises a residue of a monomer that comprises a sulfobetaine moiety containing an amide linkage or a urea linkage).
Regarding Claim 7, modified CHEN makes obvious the chromatographic material of Claim 1. As noted, CHEN discloses a TMOS/VTMS organic-silica monolith which provides organosilane residues for linking to the zwitterionic polymer (i.e., wherein the zwitterionic polymer is covalently linked to the surface of the bulk material through a residue of an organosilane monomer; §2.2, pg. 1879; FIG. 1).
The limitation “that is able to participate in radical polymerization” is directed toward an optional property of the claimed organosilane monomer. Claim scope is not limited by claim language that suggests or makes optional but does not limit a claim to a particular structure. Because the prior art, singly or in combination, teaches all claimed structural language, the “adapted to” or “adapted for” clause in question is optional and does not limit the claim. The clause expresses the intended use of the claimed structural element and thereby, does not further limit the claim (MPEP §2111.04). However, even if positively recited, the organosilane monomer disclosed by CHEN is indeed capable and does provide for radical polymerization.
Regarding Claims 8 and 9, modified CHEN makes obvious the chromatographic material of Claim 1. CHEN further discloses vinlytrimethoxysilane (i.e., wherein the zwitterionic polymer is covalently linked to the surface of the bulk material through a residue of an alkenyl-functionalized organosilane monomer; wherein the alkenyl-functionalized organosilane monomer is selected from… vinyltrimethoxy silane; §2.2, pg. 1879).
Regarding Claim 10, modified CHEN makes obvious the chromatographic material of Claim 1. LAUBER further discloses the high purity chromatographic material (HPCM) comprising the chromatographic core material is in the form of a superficially porous particle (i.e., wherein the bulk material is a porous or a superficially porous material; p0059).
Regarding Claim 11, modified CHEN makes obvious the chromatographic material of Claim 10. LAUBER further discloses the average pore diameter of the HPCM ranges from 110 to 500 Å (p0066), which reads upon the claimed surface pore size ranging from 45 to 3000 Å.
Regarding Claim 12, modified CHEN makes obvious the chromatographic material of Claim 1. As noted above, CHEN discloses an organic-silica hybrid monolith (i.e., wherein the bulk material is a monolithic material; §2.2, pg. 1879).
Regarding Claim 13, modified CHEN makes obvious the chromatographic material of Claim 1. As noted earlier, LAUBER further discloses the HPCM is in the form of a particle, monolith, or a superficially porous particle or monolith (i.e., wherein the bulk material is a particulate material; p0059).
Regarding Claim 14, modified CHEN makes obvious the chromatographic material of Claim 13. LAUBER further discloses the particulate material has an average particle size of about 0.3-100 µm (p0067), which reads upon the claimed range of a particle size ranging from 0.3 to 100 µm.
Regarding Claim 15, modified CHEN makes obvious the chromatographic material of Claim 1. The instant limitation requiring that “the chromatographic material is stable over pH ranging from 2 to 11” is directed toward properties inherent to the claimed chromatographic material. The claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable (In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977)). Modified CHEN makes obvious all limitations of the claimed chromatographic material of Claim 1; any claimed properties derived from such limitations are necessarily present.
Regarding Claims 16-18, modified CHEN makes obvious the chromatographic material of Claim 1. As noted above, CHEN discloses an organic-silica hybrid (i.e., wherein the bulk material comprises an inorganic material, a hybrid inorganic-organic material, an organic polymeric material, or a combination thereof; §2.2, pg. 1879) comprising TMOS and VTMS (i.e., wherein the bulk material comprises an inorganic-hybrid material that comprises a network of (a) silicon atoms having four silicon-oxygen bonds and (b) silicon atoms having one or more silicon-oxygen bonds and one or more silicon-carbon bonds; wherein the bulk material comprises a substituted or unsubstituted alkylene, alkenylene, alkynylene, or arylene moiety bridging two or more silicon atoms; FIG. 1).
Regarding Claim 19, modified CHEN makes obvious the chromatographic material of Claim 1. As noted above, CHEN discloses an organic-silica hybrid comprising TMOS and VTMS formed by condensation reaction (i.e., wherein the bulk material is formed by hydrolytically condensing (a) one or more silane compounds of the formula SiZ1Z2Z3Z4…; §2.2, pg. 1879; FIG. 1).
Claim(s) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHEN et al. (Electrophoresis 2013, 34, 1877-1885) in view of O’GARA (US 2007/0215547 A1) and further in view of LAUBER et al. (US 2019/0126241 A1), as applied to Claim 1 above, and further with evidentiary support from YU et al. (Talanta 2016, 161, 860-866).
Regarding Claims 5 and 6, modified CHEN makes obvious the chromatographic material of Claim 1. While it is noted that CHEN discloses the zwitterionic polymer comprises 3-dimethyl-3(N-methacrylamido)propyl) ammonium propane sulfonate (DMMPPS), which is differentiated from the instantly claimed methacryloylamino-based sulfobetaine monomer residue of Claim 5 and the dimethyl(methacryloylaminopropyl) ammonium propane sulfonate monomer residue of Claim 6, it would have been obvious to try another zwitterionic sulfobetaine-based polymer especially those having both positively charged ammonium groups and negatively charged sulfonic groups (such as those claimed) given the popularity of such polymers used as stationary phases in HILIC (§1, pg. 1877, par. 2). Further, it is noted that the condensation reaction by which DMMPPS is covalently bound to the monolith lacks the presence of an ester group commonly encountered in methacrylate-type sulfobetaine monomers, which are subject to hydrolytic instability under acidic/basic conditions (YU, §1, pg. 861, par. 2). As similarly noted by the Applicant, the use of a zwitterionic polymer comprising monomer residues covalently linked via non-ester moieties, e.g., through an amide linkage as is also provided by the DMMPPS disclosed by CHEN, provides improved hydrolytic stability (Specification, p0005). Even further, depending on the desired separation conditions, one of ordinary skill in the art would be capable of selecting and choosing a chromatographic material containing a zwitterionic polymer among other acrylamide-based sulfobetaines appropriate for their separation.
Thus, one of ordinary skill in the art would have found it obvious to utilize zwitterionic sulfobetaine polymers as those claimed in Claims 5 and 6 because one of ordinary skill in the art has good reason to pursue the known options of other similar zwitterionic sulfobetaine polymers having both quaternary ammonium and sulfonate groups and lacking hydrolytically unstable ester bonds; if this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense (MPEP §2143.01 E) and further, because the substitution of one known element for another would have yielded predictable results (MPEP §2143.01 B), i.e., increased stability over methacrylate-based sulfobetaine monomers.
Claim(s) 20 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHEN et al. (Electrophoresis 2013, 34, 1877-1885) in view of O’GARA (US 2007/0215547 A1) and further in view of LAUBER et al. (US 2019/0126241 A1), as applied to Claim 1 above, and further in view of LI et al. (Talanta 2020, 216, 120927).
Regarding Claims 20 and 21, modified CHEN makes obvious the chromatographic material of Claim 1. Modified CHEN is deficient in disclosing the zwitterionic polymer further comprises weak cation exchange groups or weak anion exchange groups or that the weak cation exchange groups comprise carboxyl groups and the weak anion exchange groups comprise primary, secondary or tertiary amine groups.
LI discloses zwitterionic stationary phases for HILIC and specifically a weak cation and weak anion zwitterionic polymer (i.e., the zwitterionic polymer further comprises weak cation exchange groups or weak anion exchange groups; §1, pg. 2, par. 3). The stationary phase G-Diol-Cys presents a carboxylate group and a primary amine group (i.e., the weak cation exchange groups comprise carboxyl groups and the weak anion exchange groups comprise primary, secondary or tertiary amine groups; abstract; see FIG. 1). This zwitterionic phase with weak cation and anion groups advantageously offers higher flexibility for controlling surface charge especially compared with zwitterionic polymers offering strong cation and anion groups, e.g., sulfonic and quaternary ammonium groups (§1, pg. 2, par. 3). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to provide weak cation exchange groups and weak anion exchange groups, including carboxyl groups and primary, secondary, or tertiary amine groups as disclosed by LI for the chromatographic material of modified CHEN.
Response to Amendments/Arguments
Applicant’s amendments filed 03 October 2025 have been fully considered.
Regarding the objection of Claim 8, Applicant’s amendment is sufficient; the objection has been withdrawn.
Regarding the rejections of Claim(s) 1-4, 7-12, and 15-19 under 35 U.S.C. 103 as being unpatentable over CHEN et al. (Electrophoresis 2013, 34, 1877-1885) or, in the alternative, further in view of O’GARA (US 2007/0215547 A1); Claim(s) 5 and 6 under 35 U.S.C. 103 as being unpatentable over CHEN et al. (Electrophoresis 2013, 34, 1877-1885) or, in the alternative, further in view of O’GARA (US 2007/0215547 A1), and with evidentiary support from YU et al. (Talanta 2016, 161, 860-866); Claim(s) 13 and 14 under 35 U.S.C. 103 as being unpatentable over CHEN et al. (Electrophoresis 2013, 34, 1877-1885) or, in the alternative, further in view of O’GARA (US 2007/0215547 A1), and in view of LAUBER et al. (US 2019/0126241 A1); and Claim(s) 20 and 21 under 35 U.S.C. 103 as being unpatentable over CHEN et al. (Electrophoresis 2013, 34, 1877-1885) or, in the alternative, further in view of O’GARA (US 2007/0215547 A1), and in view of LI et al. (Talanta 2020, 216, 120927), Applicant’s amendments are persuasive; these rejections have been withdrawn. However, upon further search and consideration, new grounds of rejection have been made for Claim(s) 1-4 and 7-19 under 35 U.S.C. 103 as being unpatentable over CHEN et al. (Electrophoresis 2013, 34, 1877-1885) in view of O’GARA (US 2007/0215547 A1) and further in view of LAUBER et al. (US 2019/0126241 A1).
Regarding the arguments with respect to the rejections under 35 USC 103 (pg. 5-8), Applicant’s arguments have been fully considered but are not persuasive because they are directed to grounds of rejection that have been withdrawn. Therefore, the arguments are not commensurate in scope with the presently pending claims.
However, regarding argument (1) that neither CHEN nor O’GARA teach or suggest a polymer including a urea moiety (pg. 6-7), Applicant argues that “there is no suggestion (in either Chen or O'Gara) that there is any expectation of success in replacing the ester-type and amide-type moieties taught by Chen with a different chemical group, least of all a urea-type moiety. In contrast, the present application is replete with examples of zwitterionic materials including a urea-type moiety (see, e.g., Examples Z20, Z36, Z37, and Z38)” and therefore, the rejection should be withdrawn (pg. 7, bottom).
The Examiner respectfully disagrees.
Applicant has not provided any specific examples utilizing zwitterionic materials with urea moieties that produce an unexpected or non-obvious result or effect. References in the Specification to a urea moiety are all alternatively paired with the other listed moieties, especially amides, and no specific example has shown any unexpected or non-obvious result attributed to the presence of a urea moiety.
O’GARA lists a number of possible moieties for polymer binding ligands, of which amides and urea are part of (see p0022, p0097, Claim 7), much like how Applicant has similarly listed a number of functional moieties, of which amides and urea are part thereof. As such, one of ordinary skill in the art would have found it obvious to substitute a urea moiety as taught by O’GARA as a functional group in place of an amide moiety as taught by CHEN because such an equivalent substitution is disclosed in the art and is also acknowledged by the Applicant in their disclosure to have no differential effect, i.e., the substitution of one known element for another would have yielded predictable results (MPEP §2143.01 B).
Regarding argument (2) (pg. 8), the prior rejection based on CHEN and O’GARA has been withdrawn in light of the amendments to Claim 1; therefore, the arguments are not commensurate in scope with the presently pending claim.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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/Ryan B Huang/Primary Examiner, Art Unit 1777