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 .
DETAILED ACTION
Claims 20-43 are pending in the application. Claims 26 and 33 are rejected. Claim 20-25, 27-32, 34, 35, 40, 41 and 43 are allowed. Claims 36-39 and 42 are withdrawn from further consideration.
Response to Amendment / Argument
On page 22 of the response filed February 6th, 2026, Applicant traverses the prior art rejection under 35 USC 103 and refers to the amendment to claim 33. This is not found persuasive since claim 33 recites an open-ended product-by-process resulting in the particle size of claim 20 not being required by the particles of claim 33.
The double patenting rejection has been withdrawn in view of the terminal disclaimer filed February 6th, 2026.
All other objections and rejections made in the previous Office Action that do not appear below have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
Election/Restrictions
Since claim 20 is allowable, previously withdrawn claims that depend from or otherwise require all the limitations of claim 20 have been rejoined, which are claims 25, 26 and 28-30.
Claim Rejections - 35 USC § 112(b)
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.
Claim 26 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.
Claim 26 is rejected as indefinite since the claim recites the AZ1-comound is selected from formulae A1a and A1b but where the claim states “as each of these Formulae A1A-A1d is described below…”. It is unclear whether formulae A1c and A1d are permissible options or not.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 33 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 33 recites a product-by-process, which is open-ended and previously recited steps whereby the properties required by claim 20 could be eliminated. For instance, claim 20 recites a particular particle size and the steps of claim 33 are open-ended to steps that can change the particle size. Applicant’s amendment to delete a step from a group “comprising” a set of steps does not narrow the claim since the product-by-process is still open-ended to additional unrecited steps (including the previously recited step). The fee worksheet dated February 6th, 2026 indicates that only one independent claim is present where the only claim that does not refer to another claim is claim 20. Therefore, claim 33 has been interpreted as a dependent claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent PGPub No. 2007/0298006 A1 by Tomalia et al.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Tomalia et al. teach dendritic polymers of the following formula (page 44):
PNG
media_image1.png
142
538
media_image1.png
Greyscale
.
As an example of the genus, the prior art teaches the following compound on page 156:
PNG
media_image2.png
205
578
media_image2.png
Greyscale
.
Within the generic structure, the prior art teaches the following corresponding variables:
PNG
media_image3.png
51
566
media_image3.png
Greyscale
.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art compound above has a molecular weight of 588.78 Da whereas instant claim 33 is directed to a material produced by a process involving the particles of claim 20 that are required to have a molecular weight of at least 600 Da.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
The prior art teaches the following simple cores on page 10:
PNG
media_image4.png
221
591
media_image4.png
Greyscale
At least since the prior art teaches PETGE among a list of alternatives, a person having ordinary skill in the art in seeking to optimize the polymers would have been motivated to screen the alternative cores with the exemplary terminal groups. The prior art teaches the following precursor on page 37 (corresponding to TPEGE):
PNG
media_image5.png
384
356
media_image5.png
Greyscale
.
The structure above has a molecular weight of 622.70 Da where the addition of four analogous aziridine rings would result in a structure having a molecular weight of 851.06 Da.
Regarding the limitation of claim 33 of “[p]articles” in the preamble, the prior art teaches that the corresponding piperidine adduct of TPEGE was obtained as a solid in paragraph [0502] such that a person having ordinary skill in the art would expect to obtain a solid for the corresponding aziridine-containing structure. At least since claim 33 recites an open-ended product-by-process step (v) that would include obtain particles of any size, the prior art is deemed to render claim 33 obvious.
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 MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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, Renee Claytor can be reached at 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
Prosecution Insights