DETAILED ACTION
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 .
The examiner acknowledges receipt of request for continued examination under 37 CFR 1.114, request for extension of time, IDS and amendment filed 02/11/2026.
Claim 1 is amended.
Claims 1, 3-5, 13, 16-24 and 26-29 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5, 7, 8, 13, 15-24 and 26 in the reply filed on 04/28/2025 was acknowledged. Applicant also elected poly(ethylene glycol) methyl ether acrylate (PEGMEA) as specific hydrophilic monomer, hydroxypropyl acrylate (HPA) as the hydrophobic monomer, N,N’-methylenebisacrylamide (MBAA) as a short chain crosslinker, lithium phenyl-2,4,6-trimethylbenzoylphosphinate (LAP) as a photo-initiator, water as protic solvent, and printable composition.
Therefore, based on the election, claims 21-24, 26 were withdrawn from consideration.
Claim 4 was withdrawn because poly(ethylene glycol) methacrylate (PEGMA) and hydroxyethyl acrylate (HEA) were not elected.
Claim 13 was also withdrawn because combination of hydrophilic monomers HPA and HEA, HBA and HEA were not elected.
Therefore, based on the election, claims 4, 13, 21-24 and 26-29 stand withdrawn from consideration.
Claims 4, 13, 21-24 and 26-29 stand withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/28/2025.
Claims 1, 3, 5 and 16-20 are under consideration.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/11/2026 has been entered.
Priority
This application claims benefit of 63/185,300 filed 05/06/2021.
Information Disclosure Statement
The IDS filed 02/11/2026 has been considered by the examiner.
Specification
The proposed amendment to paragraphs [0002] and [0032] of the specification is acknowledged.
Response to Arguments
Claim Rejections - 35 USC § 103
Citing paragraphs [0043]-[0046], [0051], and FIGS. 3m 4 and 6 applicant argues that the claimed invention reciting the claimed ratio of hydrophilic monomer to monomer that is associated with the printed polymer surprisingly controlled swelling in aqueous solution in that including hydrophilic monomers but no monomers that are hydrophobic resulted in uncontrollable swelling >300%. That the examples show that HPA surprisingly provides polymers with controllable swelling values between about -15% to about 240% “that scale with the weight ratio of hydrophilic monomer to HPA.” That FIGS 3, 4, and 6 show that swelling increases with increasing weight ratio of hydrophilic monomer to HPA and that the experimental data presented in FIG. 7 show that printable composition including HBA, which is outside the scope of claim 1 did not provide polymers exhibiting scalable swelling. Therefore, applicant concludes that Weigel, Krueger, Makuska and Hahnle do not provide guidance to include hydrophilic monomer recited in claim 1 with monomer that is hydrophobic relative to the hydrophilic monomer, the photo-initiator and the vehicle recited in claim 1, in the weight ratio of the hydroohilic monomer to the monomer that is hydrophobic relative to the hydrophilic monomer of about 3:1 to about 1:3 to achieve a polymer with controllable swelling. That, the person of ordinary skill in the art (POSITA) would not have reasonably expected to modify Weigel to include HPA in the amount recited in the claims to arrive at a printable composition that provides a polymer with controllable swelling.
Response: The examiner disagrees. a) In claim 1, the monomer that is hydrophobic relative to one or more hydrophilic monomers is not limited to hydroxypropyl acrylate (HPA) but is limited one or more of hydroxyethyl methacrylate, hydroxypropyl acrylate (HPA), hydroxypropyl methacrylate, hydroxybutyl methacrylate or mixtures. b) The examples or the FIGS, such as FIGS. 3, 4, 6 and 7 do not provide swelling parameters/characteristics between hydroxypropyl acrylate (HPA) and hydroxybutyl acrylate (HBA). c) while applicant has narrowed the ratio of hydrophilic to monomer that hydrophobic relative to the hydrophilic from about 20:1 to about 1:20 to 3:1 to about 1:3 in claim 1, Weigel teaches hydrophilic monomer PEGMEMA to hydrophobic monomer HBA is at about 1:2 is encompassed in the claimed ratio. d) Krueger was relied upon for teaching that hydroxybutyl acrylate (HBA) and hydroxypropyl acrylate (HPA) are functionally equivalent hydroxyalkyl monomers used in coating for rheology. f) Makuska was relied upon for teaching that poly(ethylene glycol) methyl ether acrylate (PEGMEA) or poly(ethylene glycol) methyl ether methacrylate (PEGMEMA) used in the hydrogels have increased optical densities. g) Hahnle was relied upon for teaching that hydroxypropyl acrylate (HPA) and hydroxybutyl acrylate (HBA) have crosslinking sites which have been used in hydrogels, and are functionally equivalent being different only by one carbon (column 14, lines 47-48). Further, N,N’-methylenebisacrylamide and poly(ethylene glycol) diacrylates are hydrophilic crosslinkers and are thus functionally equivalent (column 4, lines 18 and 19 of Hahnle). Therefore, the POSITA would have had reasonable expectation that using hydroxypropyl acrylate (HPA) in place of hydroxybutyl acrylate (HBA) would predictably control swelling of the printable composition.
Therefore, the rejections below is made. The rejections below are the similar to the rejection in the office action mailed10/17/2025 because the ratio of about 3:1 to about 1:3 encompasses the ration disclosed in Weigel, 1:2.
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.
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, 3, 5 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weigel et al. “Photopolymer formulations for mSL printing hydrogel microstructures as swellable functional elements” in Proc. Of SPIE Vol. 11637, pp 1-13, March 5, 2021, submitted by applicant in Form 1449, in view of Krueger (US 4156678) for reasons of record with minor modification to address the new ratio of about 3:1 to about 1:3 in claim 1.
Weigel teaches composition for 3-D printing, the composition comprises 4-hydroxybutyl acrylate (HBA) meeting the limitation of hydrophobic monomer, poly(ethylene glycol) methyl ether methacrylate (PEGMEMA) meeting the limitation of hydrophilic monomer, poly(ethylene glycol) diacrylate (PEGDA) meeting the requirement for short chain crosslinker, lithium phenyl(2,4,6-trimethylbenzoyl)phosphinate (LAP) meeting the requirement for photo-initiator, and tartrazine (TAR) which is a dye (See the whole document with emphasis on the abstract, introduction and section 2).
For claim 1, a printable composition comprising hydrophilic monomer PEGMEMA at 30%, hydrophobic monomer HBA at 62.3%, short chain crosslinker PEGDA at 2.5%, photo-initiator LAP at 0.1% (Resin R2 in Table 1). The PEDGA at 2.5 % is a specific point within the range of 0.01 wt% to about 5 wt% of the short chain crosslinker in the provisor; and the ratio of hydrophilic monomer PEGMEMA to hydrophobic monomer HBA is at about 1:2 which is a point within the claimed range of about 3:1 to about 1:3 as this claimed range in the proviso encompasses ratio of 1:2. While Weigel teaches hydroxybutyl acrylate (HBA), Weigel does not teach hydroxypropyl acrylate (HPA). However, hydroxybutyl acrylate (HBA) and hydroxypropyl acrylate (HPA) are structurally different only by a methyl group. It is known that homologs differing only by methylene/methyl groups have presumed expectation that these compounds have similar properties (see In re May, 574 F.2d 1082, 1093-95, 197 USPQ 601, 610-11 (CCPA 1978), In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977), In re Hoch, 428 F.2d 1341, 1344, 166 USPQ 406, 409 (CCPA 1970), In re Druey, 319 F.2d 237, 240, 138 USPQ 39, 41 (CCPA 1963)). Furthermore, Krueger teaches that hydroxybutyl acrylate (HBA) and hydroxypropyl acrylate (HPA) are functionally equivalent hydroxyalkyl monomers used in coating for rheology (see column 3, line 67 to column 4, line 8). Therefore, because hydroxybutyl acrylate (HBA) and hydroxypropyl acrylate (HPA) are homologous differing only by methylene group, these hydroxyalkyl acrylates have similar chemical properties; because it is also known in the art that hydroxybutyl acrylate (HBA) and hydroxypropyl acrylate (HPA), before the effective date of the invention, the ordinary skilled artisan would reasonably expect that using hydroxypropyl acrylate (HPA) in place of hydroxybutyl acrylate (HBA) would predictably control swelling of the printable composition. The poly(ethylene glycol) diacrylate (PEGDA) in the R2 resin in Table 1 has the PEG at molecular weight of 575 which is a specific point within the claimed range of about 400 to about 20,000 meeting the limitation of crosslinker of claim 1.
For claim 3, the poly(ethylene glycol) methyl ether methacrylate (PEGMEMA) meets the requirements of the claim.
For claim 5, hydrophilic monomer PEGMEMA at 30% is a species of the claimed range of about 5-35 wt%.
For claim 16, the poly(ethylene glycol) diacrylate (PEGDA) meets the claim.
For claim 17, the PEDGA at 2.5 % is a specific point within the range of 0.5 wt% to about 3 wt% of the short chain crosslinker.
For claim 18, lithium phenyl(2,4,6-trimethylbenzoyl)phosphinate (LAP) meets the LAP photo-initiator of the claim.
For claim 19, the tartrazine (TAR) dye meets the UV dye additive of claim 19.
For claim 20, the water meets the claim.
Therefore, Weigel in view of Krueger renders claims 1, 3, 5 and 16-20 prima facie obvious.
Rejection made to address
Elected Species
Claim(s) 1, 3, 5 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weigel et al. “Photopolymer formulations for mSL printing hydrogel microstructures as swellable functional elements” in Proc. Of SPIE Vol. 11637, pp 1-13, March 5, 2021, submitted by applicant in Form 1449 in view of Krueger (US 4156678) as applied to claims 1, 3, 5 and 16-20, and further in view of Makuska (US 20080029392 A1).
Weigel in view of Krueger has been described to render claims 1, 3, 5 and 16-20 prima facie obvious.
Weigel’s printable composition does not contain the elected hydrophilic monomer poly(ethylene glycol) methyl ether acrylate (PEGMEA). However, it is known in the art that poly(ethylene glycol) methyl ether acrylate (PEGMEA) or poly(ethylene glycol) methyl ether methacrylate (PEGMEMA) used in the hydrogels have increased optical densities (see Makuska, paragraphs [0011], [0093]). Therefore, before the effective date of the invention the ordinary skilled artisan looking to Weigel and Makuska would use one results effective monomer in place of the other for predictable printable composition.
The teachings of Weigel in view of Krueger described above are incorporated herein.
Therefore, Weigel in view of Krueger and further in view of Makuska renders claims 1, 3, 5 and 16-20 prima facie obvious with respect to the elected hydrophilic monomer, poly(ethylene glycol) methyl ether acrylate (PEGMEA).
Claim(s) 1, 3, 5 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weigel et al. “Photopolymer formulations for mSL printing hydrogel microstructures as swellable functional elements” in Proc. Of SPIE Vol. 11637, pp 1-13, March 5, 2021, submitted by applicant in Form 1449 in view of Krueger (US 4156678) as applied to claims 1, 3, 5 and 16-20, and further in view Hahnle et al. (US 6174929 B1).
The teachings of Weigel in view of Krueger has been described above for teaching all the elements of claims 1, 3, 5 and 16-20.
Weigel’s printable composition does not contain the elected hydrophobic monomer hydroxypropyl acrylate (HPA), and N,N’-methylenebisacrylamide (MBAA) short chain crosslinker. However, it is known in the art that hydroxypropyl acrylate (HPA) and hydroxybutyl acrylate (HBA) have crosslinking sites and have been used in hydrogels and are functionally equivalent being different only by one carbon (column 14, lines 47-48). Further, N,N’-methylenebisacrylamide and poly(ethylene glycol) diacrylates are hydrophilic crosslinkers and are thus functionally equivalent.
Therefore, before the effective date of the invention, the artisan looking to Weigel in view of Krueger and Hahnle would use one functionally effective crosslinker and one hydrophobic monomer having crosslinking sites would be used in place of the other for hydrogel for predictable drug delivery.
Therefore, Weigel in view of Krueger Hahnle renders claims 1, 3, 5 and 16-20 prima facie obvious with respect to the elected hydrophobic monomer hydroxypropyl acrylate (HPA), and N,N’-methylenebisacrylamide (MBAA) short chain crosslinker.
No claim is allowed.
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLESSING M FUBARA whose telephone number is (571)272-0594. The examiner can normally be reached 7:30 am-6 pm (M-T).
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/BLESSING M FUBARA/Primary Examiner, Art Unit 1613