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 .
Response to Amendment
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 new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 7/15/2026. In particular, claim 1 has been amended to recite the molar ratio of 20 to 90 : 80 to 10. This presents the claims in a manner with a scope not previously examined. Thus, the following action is properly made FINAL.
Claim Rejections - 35 USC § 102
Claim(s) 1-2, 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dicker (US 5,219,945).
Dicker teaches an example of a block copolymer of dimethylaminoethyl methacrylate-comethyl methacrylate-b-phenylethyl methacrylate-co-methacrylatic acid-b-ethoxytriethylene glycol methacrylate (col. 8, ln. 30-col. 9, ln. 17) where dimethylaminoethyl methacrylate meets claimed formula (1) when R1 is Me, X is ethylene, and U1 and U2 are Me, and ethoxytriethylene glycol methacrylate meets claimed formula (2) when R2 is Me, X2 is ethylene, R3 is ethyl, and n1 is 3. Dicker teaches 30.7 mol% of dimethylaminoethyl methacrylate and 16.3 mol% of ethoxytriethylene glycol methacrylate (col. 9, ln. 10-17) which gives a molar ratio of about 65:35 and meets the range of claim 1. Dicker teaches methanol is added to the polymer during polymerization (col. 9, ln. 1-10) or that water can be added (col. 12, ln. 5-35) which meets the solvent of claims 1 and 2.
Dicker does not explicitly recite the limitation “for forming a film having an ability to suppress adhesion of a protein” of claim 1 or “for forming a base film for a cell culture…” of claims 4-5. However, case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Claim(s) 1-2, 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pearlstine (US 5,969,033).
Pearlstine teaches an example where a block copolymer of 15 benzyl methacrylate, 30 dimethylaminoethyl methacrylate, and 8 ethoxytriethylene glycol methacrylate (col. 6, ln. 1-20) which gives a ratio of dimethylaminoethyl methacrylate and ethoxytriethylene glycol methacrylate of 30:8 which corresponds to about 79:21 and meets the range of claim 1. Dimethylaminoethyl methacrylate meets the structure of claimed formula (1) and ethoxytriethylene glycol methacrylate meets the structure of claimed formula (2). Pearlstine teaches this block copolymer is used in a coating composition with water (col. 7, ln. 1-20, col. 8, ln. 1-18) which is a solvent.
Pearlstine does not explicitly recite the limitation “for forming a film having an ability to suppress adhesion of a protein” of claim 1 or “for forming a base film for a cell culture...” of claims 4-5. However, case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Pearlstine does not explicitly recite the property of “an ability to suppress adhesion of a protein”. However, Pearlstine teaches a coating composition having a block copolymer having the same monomers as claimed. Therefore, it is expected that the composition having the copolymer as taught by Pearlstine would have the same physical properties as the claimed copolymer, including the ability to suppress adhesion of a protein.
Allowable Subject Matter
Claims 7-8 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 7 recites a substrate for cell culture which comprises the coating film of the composition which has a block copolymer of formula (1) and (2) in a molar ratio of 20-29 a: 80-10. Claim 8 depends from claim 7 and contains the same allowable subject matter.
Relevant prior art includes Rubinsztajn (US 2010/0330674), Joseph, Polymer 54 (2013) 4894-4901, Dicker (US 5,219,945), and Pearlstine (US 5,969,033).
Rubinsztajn teaches cell culture support (abstract) which includes a copolymer coating on a substrate which may be a block copolymer such as poly(di(ethylene glycol)methylether methacrylate)-co-poly(diethylaminoethyl acrylate) (¶ 36). Rubinsztajn teaches an example where TRABC and water are combined which then forms a film of the TRABC (¶ 59, 61). Rubinsztajn teaches examples of TRABC include poly(di(ethylene glycol)methylether methacrylate)-co-poly(diethylaminoethyl acrylate). Rubinsztajn fails to teach the claimed molar ratio.
Joseph teaches an example where a block copolymer of poly[(2-dimethylamino)ethylmethacrylate]-block-poly[di(ethyleneglycol) methyl ether methacrylate] (“PDD”) is formed (pg. 4895) followed by dissolving the PDD in water and deposited on a substrate to form a film (pg. 4895-4896). Joseph fails to teach the claimed molar ratio or use as a cell culture substrate.
Dicker and Pearlstine, discussed above, fail to teach the copolymer is used in a substrate for a cell culture.
Response to Arguments
Applicant’s arguments with respect to Joseph and Rubinsztajn have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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