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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1,3-4,6-13 and 16-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In particular the examiner did not find support for the new limitation in claim 1 for the new Markush group for R2. These groups, including OH, were listed as a Markush group for E and not R2. Claims 3-4,6-13 and 16-17 incorporate the new matter by dependency.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1,3-4,6-8,11-13 and 17 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Dmitriev et al. “Swelling behavior and network characterization of hydrogels from linear polyacrylamide crosslinked with glutaraldehyde”, Volume 4, September 2015, Pages 93-100.
Dmitriev discloses hydrogels produced with linear polyacrylamide crosslinked by glutaraldehyde, forming imine bonds, polyacrylamide reads on monomer -CH2-CH(R’)-, when R’ is L-NH2 (reading on claim 6) and glutaraldehyde reads on the crosslinker recited in new claims 12 and 17. See entire disclosure especially abstract and Fig. 1. Regarding claims 4 and 7, these claims recite limitations for an optional selectable component in claim 1, therefore the limitations are not limiting when R’ is not EH or formula I. Regarding claim 13, the MW of the polymer was more than 65 kDa (264,000).
Claim(s) 1,3-4,6-8,11-13 and 17 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Tang et al. CN 107353760, English translation provided by examiner. All citations are for English translation.
Tang discloses polyacrylamide coating with super-hydrophilic properties produced from AIBN initiator and crosslinked by glutaraldehyde, forming imine bonds, polyacrylamide reads on monomer -CH2-CH(R’)-, when R’ is L-NH2 (reading on claim 6) and glutaraldehyde reads on the crosslinker recited in new claims 12 and 17. See entire disclosure, especially abstract, page 4 lines 7-12, examples and claims. Regarding claims 4 and 7, these claims recite limitations for an optional selectable component in claim 1, therefore the limitations are not limiting when R’ is not EH or formula I. Regarding claim 13, the MW of the polymer was more than 65 kDa (135,000). See examples
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.
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) 1,3-4,6-13 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dmitriev et al., cited above, as applied to claims 1,3-4,6-8,11-13 and 17 above.
Dmietrev is cited above and is silent with respect to a number of monomer units within the scope of claims 9 and 16. However the preparation of polymer compositions having variable amount of monomer with varying molecular weight is within the level of skill of one having ordinary skill in the art at the time of the invention. It has also been held that the mere selection of proportions and ranges is not patentable absent a showing of criticality. See In re Russell, 439 F.2d 1228 169 USPQ 426 (CCPA 1971).
The end groups which are present on acrylamide are considered to read on moieties derived from radical precursors, RAFT agent or homolytic leaving group of RAFT agent of claim 9. Regarding claim 10, the claim recites limitations for an optional selectable component in claim 9 and is not limiting when R1, RA or FT are not selected.
Claim(s) 1,3-4,6-13 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang et al., cited above, as applied to claims 1,3-4,6-8,11-13 and 17 above. This new rejection
Tang is cited above and is silent with respect to a number of monomer units within the scope of claims 9 and 16. However the preparation of polymer compositions having variable amount of monomer with varying molecular weight is within the level of skill of one having ordinary skill in the art at the time of the invention. It has also been held that the mere selection of proportions and ranges is not patentable absent a showing of criticality. See In re Russell, 439 F.2d 1228 169 USPQ 426 (CCPA 1971).
The end groups of the acrylamide by Tang would be the remnant of the azo initiator AIBN, which features a CN as recited in claim 10 (meeting FT).
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 JAMES W ROGERS whose telephone number is (571)272-7838. The examiner can normally be reached 9:30-6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES W ROGERS/ Primary Examiner, Art Unit 1618