DETAILED ACTION
Notice of 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 .
Election/Restrictions
Applicant’s election with traverse of Group I as set forth in the Cadenaro Declaration under 37 CFR 1.132 filed on 8/07/2025 is acknowledged. In view of Applicant’s amendments to the claims, the argument is found persuasive. Nevertheless, Group I still does not share a special technical feature with the instant claims of Groups II-III based on Von Seggern et al (CA 2,281,602 – 8/16/1999) for the reasons discussed below.
Accordingly, the requirement is still deemed proper and is therefore made FINAL.
Claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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’s election with traverse of a single species in the reply filed on 8/07/2025 is also acknowledged. However, since Applicant does not provide a basis for this traversal, the argument is not found persuasive.
The elected species read upon claims 1-8 and 13-20.
Expansion of Election of Species Requirement
As indicated above, Applicant’s elected species – namely, the following compound of formula (I)
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128
474
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and compositions thereof further comprising camphorquinone (CQ) and a 70:28.75 mixture of Bis-GMA and TEDGMA – reads upon claims 1-8 and 13-20.
The elected species has been searched and is deemed to be free of the prior art and non-obvious. Accordingly, the search has been expanded as called for under current Office Markush practice – a compound by compound search – to include a single additional species (M.P.E.P. § 803.02). That species is:
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158
820
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•2Br- wherein, in formula (I), A is
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102
94
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wherein R2 and R3 are methyl, R4 is n-propylene, Y is
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70
114
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and X1 is Br; R1 is -(CH2)12-; and B is
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102
94
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wherein R2 and R3 are methyl, R4 is n-propylene, Y is
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70
114
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and X1 is Br; and compositions thereof further comprising a photopolymerization activator and a compound comprising at least one ethylenic unsaturated group – which reads on claims 1-4, 6-8 and 13-18. A rejection to those claims follows.
Since the search has not been expanded beyond the single additional species identified above, claims 5 and 19-20, which are directed to the elected species but which do not include the single additional species, are objected to as indicated below, and have not been further examined.
Claim Rejections – Improper Markush Group
The improper Markush Group Rejection is based on a judicially approved doctrine when the claim contains an improper grouping of alternatively useable species. See In re Harnisch, 631 F.2d 716 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059 (Bd. Pat. App. & Int. 1984). A Markush claim contains an “improper Markush grouping” if: (1) The species of the Markush group do not share a single structural similarity,” and/or (2) the species do not share a common use. Members of a Markush group share a "single structural similarity” when they belong to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the specification or known in the art to be functionally equivalent (see Federal Register, Vol. 76, No. 27, Wednesday, February 9, 2011, p. 7166, left and middle columns, bridging paragraph).
Claims 1-8 and 13-20 are rejected on the grounds of containing an “improper Markush grouping”, which contains species that fail to share a single structural similarity.
The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons:
The claims are drawn to compounds of formula (I) and compositions thereof wherein formula (I) embraces a variety of structurally unrelated compounds lacking even a single structural similarity, for example:
(a)
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240
534
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•X1-, wherein A is
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102
94
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wherein R2 and R3 are methyl, R4 is ethylene, Y is
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70
114
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; R1 is -(CH2)12-; and B is
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102
94
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wherein R2 and R3 are methyl, R4 is ethylene, and Y is
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70
114
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; and
(b)
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288
642
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•X2-, wherein A is
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84
186
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wherein Y is
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74
114
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; R1 is
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68
140
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; and B is
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84
186
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wherein Y is
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74
114
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.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided).
Claim Rejections - 35 USC § 102
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Von Seggern et al (CA 2,281,602 – 8/16/1999).
Claim 1 is drawn to a compound of formula (I) which embraces the following compound species:
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158
820
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•2Br- wherein A is
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102
94
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wherein R2 and R3 are methyl, R4 is n-propylene, Y is
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70
114
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and X1 is Br; R1 is -(CH2)12-; and B is
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102
94
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wherein R2 and R3 are methyl, R4 is n-propylene, Y is
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70
114
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and X1 is Br – which reads on claims 1-4.
Von Seggern et al teach the instantly claimed compound of formula (I) (Page 26, Example 3a).
Accordingly, claims 1-4 are anticipated.
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.
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.
Claims 6-7, 13-14 and 15-18 are rejected under 35 U.S.C. 103(a) as being unpatentable over Von Seggern et al (CA 2,281,602 – 8/16/1999) as applied to claims 1-4 above, in further view of Qie et al (US 2018/0265754) and Andrzejewska et al (MOJ Poly Sci 1:58-60, 2017).
Claims 6, 13, 15 and 17 are each independently drawn to a photopolymerizable composition comprising at least one compound of formula (I) according to claims 1, 2 3 and 4, respectively (more specifically, wherein the compound of formula (I) is present in an amount of from 0.1% to 10% by weight (claims 7, 14, 16 and 18)), and at least one photopolymerization activator.
As discussed above, Von Seggern et al teach a compound of formula (I) as recited by claims 1-4 (Page 26, Example 3a).
As further taught by Von Seggern et al, “396 mg of free-radical initiator VA-044 [was] added to a solution of 39.6 g of Example 3a in 160 ml of water” and stirred, followed by “[a]nother 396 mg of VA-044”, additional stirring, “200 ml of degassed water… added for dilution”, and finally, “another 100 mg of VA-044” which “gave a colorless gel” (Page 27, Lines 5-17).
As such, Von Seggern et al teach a composition comprising the compound of formula (I) in an amount of about 9.9% by weight and further comprising the polymerization activator VA-044.
The composition of Von Seggern et al thus differs from the instantly claimed composition in that it comprises a thermal free-radical polymerization activator (i.e., VA-044) as opposed to a photopolymerization free-radical activator.
Yet, as taught by Qie et al – similarly disclosing compositions comprising polymerized vinyl monomers – “[t]he polymerizable composition… typically includes a free radical initiator to commence polymerization of the monomers. The free radical initiator can be a photoinitiator or a thermal initiator” (Paragraph 0059).
And, as further taught by Andrzejewska et al, photopolymerization “offers special advantages: short polymerization time (seconds to minutes), low reaction temperature (room or ambient), full control of the process (the polymerization starts with the light is switched on and stops when the light is turned off) and spatial resolution” (Page 58, Column 1).
Accordingly, in further view of Qie et al and Andrzejewska et al, it would have been prima facie obvious to utilize a photopolymerization free-radical activator (i.e., a photopolymerization activator) in the composition of Von Seggern et al as opposed to a thermal free-radical polymerization activator. At the outset, the simple substitution of one known polymerization initiator useful in polymerizing vinyl monomers (e.g., a photopolymerization free-radical activator, as taught by Qie et al) for another known polymerization activator useful in polymerizing vinyl monomers (e.g., a thermal free-radical polymerization activator, as taught by Von Seggern et al) is prima facie obvious. Moreover, it would have also been obvious to carry out the substitution to realize “special advantages: short polymerization time (seconds to minutes), low reaction temperature (room or ambient), full control of the process (the polymerization starts with the light is switched on and stops when the light is turned off) and spatial resolution”, as taught by Andrzejewska et al, with a reasonable expectation of success.
For all the foregoing reasons, claims 6-7, 13-14 and 15-18 are rejected as prima facie obvious.
Claim 8 is rejected under 35 U.S.C. 103(a) as being unpatentable over Von Seggern et al (CA 2,281,602 – 8/16/1999) in view of Qie et al (US 2018/0265754) and Andrzejewska et al (MOJ Poly Sci 1:58-60, 2017) as applied to claims 1-4, 6-7, 13-14 and 15-18 above, in further view of Adams et al (Chochrane Database Syst Rev 6:CD012282, published 3/06/2018).
Claim 8 is drawn to the photopolymerizable composition according to claim 6, comprising at least one further compound comprising at least one ethylenic unsaturated group.
As discussed above, Von Seggern et al in view of Qie et al and Andrzejewska et al teach a photopolymerizable composition according to claim 6.
As further taught by Von Seggern et al, “[t]he invention relates to vinyl polymers… and to the use of the polymers as medicaments for… therapy of hypercholesterolemia” (Page 1, Lines 3-8), and “further relates to mixtures of the… polymers with other polymers and/or biologically active substances” (Page 21, Lines 32-33), in particular “one or more other lipid-lowering active compounds” (Page 125, Line 30 to Page 126, Line 1).
And, as taught by Adams et al, “[f]luvastatin… reduced LDL cholesterol by 15% to 33%” providing “strong linear dose-related effects on blood total cholesterol and LDL cholesterol” (Page 2, Key Results) and “[f]luvastatin lowers lipid parameters in a dose-related fashion” (Page 25, Author’s Conclusions).
It would have been prima facie obvious, in further view of Adams et al, to include fluvastatin in the composition taught by Von Seggern et al in view of Qie et al and Andrzejewska et al. As stated in MPEP 2144.06, “[i]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose… [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846 (CCPA 1980).
And since fluvastatin, having the following structure
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, comprises an ethylenic unsaturated group, claim 8 is rejected as prima facie obvious.
Claim Objections
Claims 5 and 19-20, which are directed to the elected species but which do not include the single additional species examined above, are objected to as depending from a rejected base claim and have not been further examined.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG D RICCI whose telephone number is (571) 270-5864. The examiner can normally be reached on Monday through Thursday, and every other Friday, 7:30 am - 5:00 pm ET. 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, Bethany Barham can be reached on (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRAIG D RICCI/Primary Examiner, Art Unit 1611