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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 09/08/2026 has been entered.
Status of the Application
Claims 1-3, 21 and 23 are pending.
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 23 is rejected under 35 U.S.C. 103 as being unpatentable over Poelmans (US US20230151222 A1; effective filing date 05/8/2018).
Determining the scope and contents of the prior art
Poelmans discloses amino(methacrylate) hyperbranched polymer (i.e., end-capped with an amino group) with molecular weight of 7kDa, 10kDa prepared using Michael addition reaction:
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, wherein components (i)-v are same as in the instant claims (entire application, especially abstract and paragraphs 0014-0090). The cited prior art discloses that the reaction may be conducted in any manner (0051-0058, 0088-0107). The cited prior art discloses examples of component (i)-v, such as for (i) 4-branched monomer- epoxy meth(acrylates), hydroxy-containing meth(acrylates), urethane-containing meth(acrylates) (with example of tetrafunctional polyether acrylate, EBECRYl40, same as DTTA and closely similar to PTTA) (paragraphs 0047-0048, 0144-0145); amine component (ii), (iii) and v as diamine (examples such as 1, 3-diaminopropane (same as DA of the instant claim), N,N-dimethyl-1,3-diaminopropane), amines (examples, such as ethylamine, n-propylamine) (paragraphs 0065-0074, 0084-0086), component iv as di-meth(acrylates), such as formed from 1, 3-propane diol, 1, 4-butane diol (same as BDA) , propylene glycol (0040, 0043) (entire application, especially abstract, paragraphs 0015-0023, 0040-0042, 0047-0048, 0051-0058, 0065-0074, 0084-0107, 0144-0148 claims and examples). Example 5 (paragraph 0148) teaches hyperbranched polymer formed by reacting TAMPTA:
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, dipropylene glycol diacrylate (same as component (ii) of formula I), 3-dimethylamino-1-propylamine (same as component (i) (with four branches with diamine, which has two NH2 groups), iii and iv and reads on the instant), and dipropylamine (same as component, iii and iv, first and second amine). Example 5 provides using additional 3-dimethylamino-1-propylamine (i.e., 2nd amine and same as in the instant claim) at the end of the process to make amino(methacrylate) hyperbranched polymer, i.e. end-capped with amino groups.
Although the instant claims are product-by-process claims and have process steps as in the instant claims, the case law has established that “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, “because validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009).
Ascertaining the differences between the prior art and the claims at issue
Poelmans discloses amino(methacrylate) hyperbranched polymer (i.e., end-capped with an amino group) with molecular weight of 7kDa, 10kDa prepared using Michael addition reaction using same components and process as in the instant claims. However, the cited prior art fails to teach example with tetraacrylate, PTTA.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference, the cited prior art teaches using tetraacrylate (encompass DTTA and PTTA), such as DTTA , closely similar to PTTA, in the process of making amino(methacrylate) hyperbranched polymer. Thus, based on the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art that tetraacrylate, such as PTTA having structural similarity with DTTA (taught by the cited prior art), may be useful in making hyperbranched polymer.
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Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Poelmans discloses amino(methacrylate) hyperbranched polymer (i.e., end-capped with an amino group) with molecular weight of 7kDa, 10kDa prepared using Michael addition reaction using same components and process as in the instant claims.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that tetraacrylate, such as PTTA having structural similarity with DTTA (taught by the cited prior art), may be useful in making hyperbranched polymer and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive at applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, 21 and 23 in the instant application are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims 1-6 and 29 of co-pending US application 17/763441. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
The claims of instant application are drawn to a hyperbranched polymer and claims of co-pending application are drawn to a nanoparticle comprising hyperbranched polymer with a difference in wording.
The difference in wording, however, does not constitute a patentable distinction, because the claims in the present invention simply fall within the scope of co-pending application. For the foregoing reasons, the instantly claimed process is made obvious.
This is provisional obviousness-type double patenting rejection because the conflicting claims have not been patented yet.
Response to Arguments
Applicants’ remarks and amendments, filed on 09/08/2026, have been fully considered but not found persuasive.
Applicants argue that office has not provided evidence that PTTA is effective in making hyperbranched polymer and the cited prior art provides no suggestion or motivation to use PTTA.
This is not found persuasive and the instant claim stand rejected over the cited prior art. This is because (1) if Poelmans has provided example of using acrylate PTTA, the rejection would have been anticipation and not based on obviousness; (2) Poelmans teaches using tetraacrylate (encompass DTTA and PTTA), such as DTTA, closely similar to PTTA, in the process of making amino(methacrylate) hyperbranched polymer. Thus, based on the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art that tetraacrylate, such as PTTA having structural similarity with DTTA (taught by the cited prior art), may be useful in making hyperbranched polymer.
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Applicants didn’t argue over ODP rejection and is maintained.
Conclusion
No Claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milligan Adam can be reached at 571-2707674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
Prosecution Insights