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 amendment of 9/8/25 has been entered. Claims 1, 3, 8-9, 11-13, 17, 22, 29, 32, 35, 37-38, 42, 44-45, and 47-48 are pending.
Rejections
Double Patenting
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
3. Claims 1, 3, 8-9, 11-13, 17, 22, 29, 32, 35, 37-38, 42, 44-45, and 47-48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Pat. No. 12239758, Santerre et al., which is the issued patent of copending Application No. 17/787552. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the patented claims differ somewhat in scope and the instant claims are directed to the adhesive and method of adhering first and second surfaces per se while the patented claims are directed to devices and methods of adhering the devices to a first and/or second surface, one practicing the patented claimed invention would practice the instantly claimed inventions because the ordinary skilled artisan reading the patented claims would readily envision the inventions of the instant claims.
4. Claims 1, 3, 8-9, 11-13, 17, 22, 29, 32, 35, 37-38, 42, 44-45, and 47-48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-12, 14, 16, 18, 20-21, 23, 25, 27, and 30-31 of copending Application No. 17/787531. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the copending claims differ somewhat in scope, one practicing the copending claimed invention would practice the instantly claimed inventions because the ordinary skilled artisan reading the copending claims would readily envision the inventions of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
5. Claims 1, 3, 8-9, 11-13, 17, 22, 29, 32, 35, 37-38, 42, 44-45, and 47-48 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, 14, 30-35, and 41-46 of copending Application No. 17/825751. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the copending claims differ somewhat in scope, one practicing the copending claimed invention would practice the instantly claimed inventions because the ordinary skilled artisan reading the copending claims would readily envision the inventions of the instant claims, particularly noting the adhesive composition of copending claim 14.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
6. Claims 1, 3, 8-9, 11-13, 17, 22, 29, 32, 35, 37-38, 42, 44-45, and 47-48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of US Pat. No. 11384260 Floros et al. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the copending claims differ somewhat in scope, one practicing the copending claimed invention would practice the instantly claimed inventions because the ordinary skilled artisan reading the copending claims would readily envision the inventions of the instant claims, particularly noting the adhesive composition of the patented claim 14.
Claim Rejections - 35 USC § 112
7. 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 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
8. Claim 3 is 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.
A. The instant claim 3 seems to have become reformatted such that the recitation of “Structure 3” is no longer associated with the block structure formula that it named in originally presented claim 3. The current claim language does not make it clear what the claimed block structure represents and what structure is required by “Structure 3” because no specific structure is associated with “Structure 3”. The scope of the claim language is therefore not clear.
For examination purposes, the recitation of “Structure 3” is taken as applying to the claimed block structure formula based on the originally presented claim 3.
Claim Rejections - 35 USC § 102
9. 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.
10. Claims 1, 3, 8-9, 11, 13, 17, 22, 29, 32, 35, 37, 38, 42, 44, 45, 44, 45, 47, and 48 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2017/044896 Kontra et al.
Regarding claims 1, 3,13, 17, 32, 44-45, 44, 45, 47, and 48:
Kontra discloses polyurethanes falling within the scope of the instantly claimed structure 2. Kontra discloses using their polyurethanes as adhesives at paragraph [071]. Kontra discloses their polyurethanes as curable with oxidant at paragraph [075]. The cured foam with reduced flow would be water insoluble due to the curing. Note also the four lines on page 34 of Kontra, particularly that the sealant remains where it is dispensed which indicates a degree of curing such that it would no longer be water soluble. Kontra, paragraph [080] discloses their compositions as being adhesives. “Sealant” appears to be used synonymously with “adhesive”. Kontra, paragraph [088] describes the crosslinking of their polymer, its bonding to various surfaces, and interactions to make a cohesive material. The crosslinking and cohesion in the discussed environments necessitate that the cured adhesive is water insoluble inherently. See MPEP 2112. Kontra, paragraph [090] describes the adhesive qualities of their compositions due to the reactive functional groups. Kontra, paragraph [049], discloses their polymers as being elastic. They therefore necessarily and inherently have glass transition temperatures (Tg) below 25℃. The examiner notes the hardening effect of cold on rubber. Elastomers therefore necessarily have Tgs below ambient temperature or they would turn glassy at temperatures at which they are used. Such glassy polymers are not elastomeric. See MPEP 2112.
Kontra, paragraph [0046] encompasses the instantly claimed Block W. Kontra, paragraph [058] discloses a polyurethane which falls within the scope of the instantly claimed structure 2 when m is 1 and n is 0. The polyethylene oxide segment is polyether and therefore block B. The subscript n of the instantly claimed structure 2 may be 0. The terminal PD units are derivatives of the instantly claimed benzene diol and triol. L1 and L2 may be urethane or urea groups and therefore fall within the scope of the instantly claimed Linkers L and L’. The moiety R1 falls within the scope of the instantly claimed Block A. It is noted that L3 need not be present and that R2 is the PD terminating group in that case. This molecule of Kontra clearly encompasses the instantly claimed structure 2 of the instant claim 1 and structure 3 of the instant claim 3. This molecule of Kontra clearly encompasses the instant claims 44, 45, 47, and 48. See Kontra, paragraphs [087], noting that the dihydroxyphenylalanine, i.e. DOPA, falls within the scope of the 3,4-dihydroxy-phenylalanine of the instant claim 48. Note the diisocyanate and polyethylene glycol.
See Kontra, paragraph [073], Formula VI. The polyurethane of Kontra, paragraph [092] falls within the scope of the instantly claimed structure 2. The terminal groups PD of Kontra, paragraph [092] are derivatives of the instantly claimed benzene diols and triols. The polyethylene oxide block is the instantly claimed block B. The diisocyanate gives the urethane or urea linkages and block A of the instant claims. Kontra, paragraph [0160], the isophorone diisocyanate, falls within the scope of the instant claim 47, noting the isophorone diisocyanate structure therein. The dopamine therein falls within the scope of the instant claim 48. The resulting polyurethane anticipates the polymers of the instant claims, in view of the general formulas therein discussed above paragraph [0160] of Kontra.
Kontra, page 13/20, Figure 13 discloses PEG 10K, which is taken as having a molecular weight of 10K. If that molecular weight is weight average, its number average molecular weight is necessarily less than 10K. This would fall within the scope of the instantly claimed MW if it is a number average molecular weight. Additionally, there is error in measuring the molecular weights which is particularly dependent on the method of measuring the molecular weights. The instant claims and the prior art do not disclose the method of measuring their molecular weights. It is not seen that the instant claims do not contain the molecular weights of the instant claims based on errors in measuring the molecular weights. The presentation of the molecular weight as 10K additionally implies rounding. The formula of Figure 13 of Kontra shows a subscript of 226. 226 * 40 + 18 gives 9962 g/mole, which is less than 10,000 g/mol of the instant claims. The hexamethylene diisocyanate and DOPA terminals fall within the scope of the instant claims 47 and 48. The molecule of Kontra, Figure 13 anticipates the instantly claimed structure 1. The molecule of Kontra, page 15/20, Figure 15 anticipates the instantly claimed structure 1. The molecule of Kontra, page 17/20, Figure 17 anticipates the instantly claimed structure 1. The molecule of Kontra, page 18/20, Figure 18 anticipates the instantly claimed structure 1. The molecule of Kontra, page 20/20, Figure 20 anticipates the instantly claimed structure 1. The isocyanate hydrocarbon residues therein fall within the scope of the instant claim 13.
Regarding claim 8:
Kontra is silent regarding the Tm of their compound. However, in order to maintain the described in vitro, the compound of Kontra’s adhesives would necessarily and inherently possess Tm above 37℃. The compounds of Kontra also have the structure of the compounds of the instant claim and are therefore expected to necessarily possess the same properties, including Tm. See MPEP 2112.
Regarding claim 9:
The polyethylene oxide chain of Kontra which falls within the scope of the instantly claimed Block B is necessarily hydrolysable to ethylene glycol units in aqueous base with heating. This falls within the scope of the instant claim 9. It is expected that there necessarily exists some enzyme which will degrade it as well. See MPEP 2112.
Regarding claim 11:
The urethane or urea bonds in the above discussed polyurethanes of Kontra that correspond to L and/or L’ of the instant claim 11 are the same bonds as those of the instant claim 11. They therefore necessarily and inherently have the properties of the instant claim 11. It is known to hydrolyze urethane bonds by heating them in aqueous base. It is expected that there necessarily exists an enzyme which can degrade these bonds of Kontra. See MPEP 2112.
Regarding claim 22:
The above discussed polyurethanes of Kontra combined with the oxidizing agent that causes them to crosslink falls within the scope of the instant claim 22.
Regarding claim 29:
The instant claim 29 is directed to the adhesive per se. The adhesive strength recited therein is taken as being that of the cured adhesive. It is not seen that there does not exist some substrate and curing process by which the adhesives of Kontra achieve the adhesive strength of the instant claim 29. It is therefore taken that the instant claim 29 encompasses the adhesive composition of Kontra discussed above. See MPEP 2112.
Regarding claims 35, 37, 38, and 42:
The adhesive method of Kontra falls within the scope of the instant claims 35, 37, 38, and 42 when used in living beings. See Kontra, paragraph [070], noting its use in surgical procedures, which will necessarily adhere substrates falling within the scope of those of the instant claims 35, 37, 38, and 42. Note also Kontra, paragraph [081] which adheres soft tissue to a hard device substrate. Note the substrates of Kontra, paragraph [088].
Claim Rejections - 35 USC § 103
11. 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.
12. Claims 1, 3, 8-9, 11, 13, 17, 22, 29, 32, 35, 37, 38, 42, 44, 45, 44, 45, 47, and 48 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/044896 Kontra et al.
Regarding claims 1, 3, 8-9, 11, 13, 17, 22, 29, 32, 35, 37, 38, 42, 44, 45, 44, 45, 47, and 48:
The discussion of paragraph 10 above is repeated here in its entirety.
The subscript n in the formulas of Kontra discussed above include values that give some type of average molecular weight which is less than 10000 g/mole of the instant claim 1 and less than 5000 g/mole of the instant claim 9. See Kontra, paragraphs [049], [050], and [051], noting n in Formula III, Polymer 2A of paragraph [049] and the values of n in paragraph [051].
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to use the lower molecular weight polyethylene glycol residues of the instantly claimed molecular weights of less than 10000 g/mol and less than 5000 g/mol because they are encompassed by Kontra, as discussed above, and would have been expected to give adhesive compositions having the properties of the adhesives of Kontra, including those properties explicitly discussed by Kontra and those properties inherent to the compositions of Kontra.
13. Claims 1, 3, 8-9, 11-13, 17, 22, 29, 32, 35, 37, 38, 42, 44, 45, 44, 45, 47, and 48 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 8916652 Dalsin et al. in view of WO 2017/044896 Kontra et al. with US Pat. No. 5437804 Yamamoto being cited as evidence.
Yamamoto, column 1, lines 24-30 teaches that polyethylene oxide has a glass transition temperature of -67℃ and therefore softens polymers containing it due to its low glass transition temperature. The ordinary skilled artisan would recognize this softening effect as a lowering of the polymer transition temperature.
The polyurethanes of Dalsin discussed below have large portions of polyalkylene oxide which will necessarily lower the glass transition temperatures of the polyurethanes containing them to give a polyurethane having a glass transition temperature relatively close to that of the larger segments therein. Additionally, polyether polyurethanes are elastomers which necessarily have lower than ambient temperature Tgs. Therefore, the polyurethanes of Dalsin discussed below would have been expected to necessarily and inherently possess the instantly claimed Tg. See MPEP 2112.
Regarding claims 1, 3, 8-9, 11-13, 17, 22, 29, 32, 35, 37, 38, 42, 44, 45, 44, 45, 47, and 48:
Dalsin discloses adhesives containing molecules which encompass the molecules of the instant claims at column 2, lines 16-57 and column 17, lines 15-61. Dalsin, column 8, lines 16-18, 26-39, 40-42, which molecular weights fall within the scope of the instant claims 1 and 9, and 51-61, particularly noting the polypropylene oxide of line 52 and the molecular weights of lines 59-61 discloses block B of the instant claims 1-3, 9, and 12, noting the polypropylene glycol therein. Dalsin, column 10, lines 4-8 teaches that their linking groups may be urea or urethane groups which falls within the scope of the instantly claimed Linker groups L and L’. Dalsin, column 10, lines 9-64, particularly lines 59-64 fall within the scope of the instantly claimed blocks W.
Dalsin, column 3, lines 41-44 discloses their compositions as adhesives for wound closure and surgery. Dalsin, column 3, lines 51-67 and column 4, lines 1-10 meets the limitations of the instantly claimed methods of the instant claims 35, 37-38, and 42 and substrates which are adhered therein.
Dalsin, column 37, lines 50-51 discloses adding an oxidant, which gives crosslinking and curing with the terminal groups of Dalsin’s polymers.
Dalsin does not exemplify the above discussed molecules made with polypropylene oxide and urethane or urea groups.
Kontra discloses making similar adhesives as those of Dalsin using polyethylene oxide instead of polypropylene oxide. Kontra makes their urethane and urea groups by reacting OH or NH with isocyanate to form urethane or urea groups respectively. See the discussion of Kontra in paragraph 10 above.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to make the adhesives of Dalsin containing their polypropylene oxide and urethane or urea groups by reacting the polyols or amines of their polypropylene oxide and terminal groups with diisocyanates, such as the hexamethylene diisocyanate and isophorone diisocyanate of Kontra because such molecules are encompassed by the broad disclosure of Dalsin and would have been expected to give the combination of the properties of Dalsin’s and Kontra’s adhesives with slightly more hydrophobicity than is present in Kontra’s polyethylene oxide based adhesives.
Response to Applicant’s Arguments
14. The following response is in reply to the applicant’s arguments regarding the rejection of paragraphs 3 and 4 above:
In their response of 9/8/25:
The applicant argues “The Office provisionally rejects claims 1-3, 8-9, 11-13, 17, 22, 29, 32, 35, 37-38, 42, 44-45 and 47-48 for nonstatutory double patenting over claims 1-4, 6-7, 9 and 11-23 of co-pending Application No. 17/787,552, which has since granted as US Pat. No. 12,239,758. Without agreeing with the rejection, and solely to expedite examination of the present application, Applicant submits herewith a terminal disclaimer over U.S. Patent No. 12,239,758. Accordingly, the Examiner is asked to withdraw the rejection.” and
“The Office provisionally rejects claims 1-3, 8-9, 11-13, 17, 22, 29, 32, 35, 37-38, 42, 44-45 and 47-48 for nonstatutory double patenting over claims 1, 3-12, 14, 16, 18, 20-21, 23, 25, 27 and 30-31 of co- pending Application No. 17/787,531. Without agreeing with the rejection and solely to expedite examination of the present application, Applicant submits herewith a terminal disclaimer over co- pending Application No. 17/787,531. Accordingly, the Examiner is asked to withdraw the rejection.”
The terminal disclaimers filed on 9/8/25 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration dates of US Pat. No. 12,239,758 and co- pending Application No. 17/787,531 has been reviewed and are NOT accepted.
This application was filed on or after September 16, 2012. The party identified in the terminal disclaimer is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c).
The Power of Attorney is missing. No additional fee is required with the resubmissions.
This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer has failed to state in what capacity it was signed on behalf of the juristic entity, and the person who signed it has not been established as being authorized to act on behalf of the juristic entity.
The person who signed the terminal disclaimer (only for applications filed on or after September 16, 2012)- is not the applicant, patentee or an attorney or agent of record. 37 CFR 1.321(a) and (b).
(Note: Power of Attorney can be given to customer number, wherein all practitioners listed under the customer number have Power of Attorney. If Power of Attorney is given to a list of practitioners by registration number, the list may not comprise more than 10 practitioners or a separate paper signed by a 37 CFR 1.33(b) party must be in the record identifying which of the practitioners, up to 10, are
recognized as having established that the representative is a party authorized to act on behalf of the applicant.)
The terminal disclaimer identifies a party who is not the applicant (only for applications filed on or after September 16, 2012).
The applicant’s arguments are therefore not persuasive because the terminal disclaimers are improper for the reasons stated above.
15. The following response is in reply to the applicant’s arguments regarding the rejection of paragraph 5 above:
In their response of 9/8/25:
The applicant argues “The Office provisionally rejects claims 1-3, 8-9, 11-13, 17, 22, 29, 32, 35, 37-38, 42, 44-45 and 47-48 for nonstatutory double patenting over claims 1-6, 8, 14, 30-35 and 41-46 of co-pending Application No. 17/825,751. Application No. 17/825,751 is a continuation-in-part application of Application No. 17/340,313, which granted as US Patent No. 11,384,260, discussed below. US Application No. 17/825,751 has a later patent term filing date than the application under examination — namely, June 7, 2021, as compared with the PCT filing date of December 21, 2020 for the present Application. The aim of non-statutory double patenting is to prevent an unjust extension of patent exclusivity due to the issuance of multiple patents for the same invention by disclaiming the terminal portion of the term of the later patent. 130 Cong. Rec H10525 (daily ed. October 1, 1984); Senate Committee on the Judiciary, Patent Law Amendments Act of 1984, S. Rep 98-663, 98" Cong. 2d Sess. 8 (1984); see also M.P.E.P § 804. However, for such a rejection to be valid, the cited application or patent should have an earlier filing or priority date. A subsequent application, with a later priority date, does not overlap with the present Application in a manner that would justify a double patenting rejection or entry of a terminal disclaimer. Indeed, “[i]f a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earlier patent term filing date, the Examiner should withdraw the rejection in the application having the earlier patent term filing date and permit that application to issue as a patent.” (emphasis added). M.P.E.P § 804. To the extent the nonstatutory double patenting rejection is valid with respect to both patent applications, it should be raised and dealt with in the later- filed patent application. /d.
Given that the co-pending Application No. 17/825,751 has a patent term filing date after the Application, the rejection for non-statutory double patenting is improper and premature.
Applicant submits the provisional double patenting rejection over US Application No. 17/825,751 should be withdrawn.”
The examiner notes that the provisional double patenting rejection above is not the only rejection remaining. Note “Indeed, “[i]f a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earlier patent term filing date, the Examiner should withdraw the rejection in the application having the earlier patent term filing date and permit that application to issue as a patent.” (emphasis added). M.P.E.P § 804.” of the above argument.
The applicant’s argument regarding this rejection is therefore not persuasive.
16. The following response is in reply to the applicant’s arguments regarding the rejection of paragraph 6 above:
In their response of 9/8/25:
The applicant argues “Like co-pending Application No. 17/825,751, US Patent No. 11,384,260 (i.e. the reference patent) has a later effective filing date than the application under examination. A later-filed, later-expiring patent is not a proper basis for an obviousness-type double patenting rejection against an earlier-filed case. See M.P.E.P § 804.02 (noting that the doctrine is intended to prevent the “unjustified extension of patent rights beyond the term of a patent’).
As the Federal Circuit has explained, the aim of obviousness-type double patenting is to prevent an unjust extension of exclusivity through issuance of multiple patents claiming the same invention, typically addressed by requiring a terminal disclaimer to shorten the term of the later patent. Geneva Pharms. V. GlaxoSmithKline, 349 F.3d 1373, 1378 (Fed. Cir. 2003). Here, however, the reference patent has a later filing date (May 26, 2022) than the present Application (PCT filing date of December 21, 2020). Because the present application will expire sooner, the concern of unjust term extension does not arise.
Applicant submits the double patenting rejection over US Patent No. 11,384,260 should be withdrawn.” The examiner notes that the rejection based on US Pat. No. 11384260 is not a provisional rejection because it is based on patented claims. The examiner notes MPEP 804, paragraph II. B., particularly “B. Nonstatutory Double Patenting
A rejection based on nonstatutory double patenting is based on a judicially created doctrine grounded in public policy so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent. 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); In re White, 405 F.2d 904, 160 USPQ 417 (CCPA 1969); In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); In re Sarett, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964). A double patenting rejection also serves public policy interests by preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982).” Particularly note “A double patenting rejection also serves public policy interests by preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982).”
The applicant’s arguments have been considered but are not persuasive in view of the above response. The above rejection is therefore maintained.
17. The following response is in reply to the applicant’s arguments regarding the rejection of paragraph 10 above:
In their response of 9/8/25:
The applicant argues “Applicant respectfully disagrees, however, without conceding the merit of the rejection, and only to advance examination, claim 1 is amended to recite structure 2 (i.e. where “m” is 1) and that “B is a branched or unbranched oligomer derived from a polyester, polyether, polyalkylene glycol, polysilicone or polycarbonate with a molecular weight (Mw) of <5,000 g/mol’.
Applicant submits that Kontra does not teach the subject matter of amended claim 1, and thus claim 1 is novel over Kontra.
As claims 3, 8-9, 11-13, 17, 22, 29, 32, 44, 45 and 47-48 depend from claim 1, directly or indirectly, Applicant submits that these claims are also novel over Kontra at least as a result of this dependency. As method claims 35, 37-38 and 42 recite a method of adhering that comprises applying the adhesive of claim 1, Applicant similarly submits these claims are novel over Kontra.” For the reasons discussed in the above rejection, Kontra does disclose polymers falling within the scope of the instantly claimed structure 2. There is no probative evidence to the contrary.
The applicant’s arguments have been fully considered but are not persuasive for the reasons stated above. The above rejection is therefore maintained as stated above.
18. The following response is in reply to the applicant’s arguments regarding the rejection of paragraph 12 above:
In their response of 9/8/25:
The applicant argues “The Examiner points to the subscript n in the formulas of Kontra as including values that give some type of average molecular weight which is less than the 5000 g/mole of claim 9. The Examiner points in particular to Kontra, paragraphs [049], [050], and [051]. The Examiner asserts that it would have been obvious to one of ordinary skill in the art to use the lower molecular weight polyethylene glycol residues of the instantly claimed molecular weight of less than 5000 g/mol. Kontra specifically identifies the polymers described at paragraph [0049] as yielding water-soluble sealants. Kontra does not exemplify any adhesives falling within the scope of the amended claims. A person of skill in the art would not have expected that polymers as recited in the amended claims would yield effective water insoluble adhesives that may be used neat including in the challenging environment of biological tissues. Further, it is well Known in the field that as soluble molecules become smaller they become even more soluble, they do not become insoluble. Thus, the presently claimed water insoluble adhesive could not have been obvious to one of ordinary skill in the art based on the teachings of Kontra.” For the reasons discussed in the above rejection, Kontra does disclose polymers falling within the scope of the instantly claimed structure 2. There is no probative evidence to the contrary.
As noted in the discussion of Kontra incorporated into the above rejection, “Kontra discloses using their polyurethanes as adhesives at paragraph [071]. Kontra discloses their polyurethanes as curable with oxidant at paragraph [075]. The cured foam with reduced flow would be water insoluble due to the curing.” The instant claims require the adhesive to be water insoluble, not the polymers from which the adhesive is made. Water soluble polymers crosslinked with covalent bonds are no longer water soluble which meets the requirement that the adhesive per se be water insoluble. The argument that Kontra, paragraph [049], discloses water soluble adhesives ignores the crosslinked embodiments of Kontra. These arguments are therefore not commensurate with the full teachings of the above cited prior art and are therefore not persuasive.
The examiner sees no unexpected result stemming from any difference between the instantly claimed structure 2 and the above noted polymers of Kontra which is demonstrated in a manner commensurate in scope with the instant claims and which compares to the closest prior art. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
The applicant’s arguments have been fully considered but are not persuasive for the reasons stated above. The above rejection is therefore maintained as stated above.
19. The following response is in reply to the applicant’s arguments regarding the rejection of paragraph 13 above:
In their response of 9/8/25:
The applicant argues “The Office rejects pending claims 1-3, 8-9, 11-13, 17, 22, 29, 32, 35, 37-38, 42, 44-45 and 47-48 as being obvious in view of US Pat. No. 8,916,652 to Dalsin et al. (“Dalsin”) over Kontra. The Examiner states that it would have been obvious to one of ordinary skill in the art to make the adhesives of Dalsin containing polypropylene oxide and urethane or urea groups by reacting the polyols and amines of their propylene oxide and urethane or urea groups by reacting the polyols or amines of their polypropylene oxide and terminal groups with diisocyanates. Applicant respectfully disagrees. Like Kontra, Dalsin does not exemplify any adhesives falling within the scope of the amended claims. A person of skill in the art would not have expected that polymers as recited in the amended claims would yield effective water insoluble adhesives that may be used neat including in the challenging environment of biological tissues.” The use of Dalsin’s adhesives for wound closure and surgery and the crosslinking thereof taught by Dalsin, as discussed in the above rejection, would necessarily require and give water insoluble adhesives. There is no probative evidence to the contrary.
The examiner sees no unexpected result stemming from any difference between the instantly claimed structure 2 and the above noted polymers of Kontra which is demonstrated in a manner commensurate in scope with the instant claims and which compares to the closest prior art. See MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012].
The applicant’s arguments have been fully considered but are not persuasive for the reasons stated above. The above rejection is therefore maintained as stated above.
Conclusion
20. 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.
21. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number (571)272-1121. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/PATRICK D NILAND/ Primary Examiner, Art Unit 1762