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 .
Election/Restriction
Claims 1, 3, 5, 7-20, are directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claims 21-36, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 10/21/2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Response to Amendment
The previous rejection of Claim 6 and 37 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1, 3, 4, 7-19, and 38, under 35 U.S.C. 102(a)(1) as being anticipated by Saleh et al., “Preparation of Polyester-Based Metal-Cross Linked Polymeric Composites as Novel Materials Resistant to Bacterial Adhesion and Biofilm Formation,” Molecules, vol. 16, pp. 933-950 (2011). (hereinafter Saleh) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1-5, 7, 8, and 10-18, under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al., “Silver-coordination polymer network combining antibacterial action and shape memory capabilities,” RSC Advances, vol. 4, pp. 32276-32282 (2014). (hereinafter Wang) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1-5, 7, 8, and 10-20, under 35 U.S.C. 102(a)(1) as being anticipated by CN 109134836 A to Tu et al. (hereinafter Tu) is/are withdrawn in light of the Applicant’s amendments.
Claim Rejections - 35 USC § 112
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.
Claims 39-43 are 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 39 recites “an aliphatic polyester backbone comprising one or more ester group(s), wherein each ester group comprises a C3 to C20 alkyl group, and one or more aliphatic group(s), wherein each aliphatic group comprises a C4 to C12 alkyl group(s)…” It is unclear whether the “ester group” and the “aliphatic group” are the same or two different limitations since they are both directed to alkyl groups.
From the Applicant’s specification, it appears that the “alkyl groups” of the “ester groups” and “aliphatic groups” are the same thing because the specification states that the ester groups is/are “aliphatic ester groups” comprising C3 to C20 alkyl groups.
Furthermore, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 39 recites the broad recitation “C3 to C20 alkyl group,” and the claim also recites “C4 to C12 alkyl group(s),” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 40-43 are dependent claims which fail to alleviate the issues above.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 39-43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saleh et al., “Preparation of Polyester-Based Metal-Cross Linked Polymeric Composites as Novel Materials Resistant to Bacterial Adhesion and Biofilm Formation,” Molecules, vol. 16, pp. 933-950 (2011). (hereinafter Saleh).
Regarding claims 39-43, Saleh teaches a polymer composite prepared from 2,6-pyridinedicarboxylate-based polyesters (See abstract). Specifically, the polyesters are obtained as shown in Scheme 1.
PNG
media_image1.png
683
779
media_image1.png
Greyscale
(page 935) with a Tg of 8.3 deg C (Table 1, page 936), and Saleh teaches the diethyl pyridine-2,6-dicarboxylate monomer is crystalline (page 946). (i.e. amorphous+crystalline = semicrystalline). The above reacts 10 mmol of diol with 10 mmol of diethyl pyridine-2,6-dicarboxylate (page 936), which meets the claimed 50 mol% of chelation crosslinking group of claim 40, aromatic heterocycle group of claim 41, and aliphatic ester group with C4 to C6 alkyl groups of claims 39 and 43. Saleh teaches the above polymers are used to form bacterial biofilms (page 947) and can undergo copper complexation in Scheme 2,
PNG
media_image2.png
332
767
media_image2.png
Greyscale
(page 939), and crosslinking due to the metal complexation. (page 940 and 941). The polymers show about 4 mg of copper complexation per 1 g of polymer composite (Table 3, page 938), which correlates to about 4 wt% of copper cation in the polymer film and meets claim 42.
Claim(s) 39-43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al., “Silver-coordination polymer network combining antibacterial action and shape memory capabilities,” RSC Advances, vol. 4, pp. 32276-32282 (2014). (hereinafter Wang).
Regarding claims 39-43, Wang teaches a multifunctional polymer network obtained from an isonicotinate-functionalized polyester, wherein pendant pyrazinamide groups on the polyester side chains are coordinated with silver (Ag) ions to form a physically crosslinked network. (See abstract). Specifically, the isonicotinate-functionalized polyester (PIE) is formed in Scheme 1.
PNG
media_image3.png
498
429
media_image3.png
Greyscale
by reacting 10 mmol of BIN with 10 mmol of sebacic acid (i.e. 50 mol% of chelation groups), (page 32277), with a molecular weight of 45,200 and a polydispersity of 1.467 (page 32277), and the PIE is poured into a mold to from a PIE film, wherein the PIE film is then soaked in an AgNO3 solution and dried to form an Ag-PIE film (page 32277), the polymer network has about 3.11% Ag ions (page 32279), a glass transition temperature range of 20-55 deg C (page 32279), has excellent shape memory function (page 32280) and is used in the biomaterial fields because it is antibacterial and has good cytocompatibility. (page 32281).
Claim(s) 39-43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 109134836 A to Tu et al. (hereinafter Tu).
Regarding claims 39-43, Tu teaches a polyether ester elastomer for metal ion coordination crosslinking (See abstract). Tu teaches the polyether ester has the formula
PNG
media_image4.png
280
770
media_image4.png
Greyscale
, (See page 3 of pdf translation). The above is coordinated and crosslinked with transition metals (page 3 of pdf translation), and Tu further teaches the polyether ester is a multi-block copolymer (page 4 of pdf translation), with a number average molecular weight of 30,400 g/mol (Example 1) and the ether block may be polyethylene glycol (See example 2).
Allowable Subject Matter
Claims 1, 3, 5, 7-36, are allowed.
The following is an examiner’s statement of reasons for allowance:
The first closest prior art is Saleh et al., “Preparation of Polyester-Based Metal-Cross Linked Polymeric Composites as Novel Materials Resistant to Bacterial Adhesion and Biofilm Formation,” Molecules, vol. 16, pp. 933-950 (2011). (hereinafter Saleh). Saleh teaches a polymer composite prepared from 2,6-pyridinedicarboxylate-based polyesters (See abstract). Specifically, the polyesters are obtained as shown in Scheme 1.
PNG
media_image1.png
683
779
media_image1.png
Greyscale
(page 935) with a Tg of 8.3 deg C (Table 1, page 936), and Saleh teaches the diethyl pyridine-2,6-dicarboxylate monomer is crystalline (page 946). (i.e. amorphous+crystalline = semicrystalline). The above reacts 10 mmol of diol with 10 mmol of diethyl pyridine-2,6-dicarboxylate (page 936). Saleh teaches the above polymers are used to form bacterial biofilms (page 947) and can undergo copper complexation in Scheme 2,
PNG
media_image2.png
332
767
media_image2.png
Greyscale
(page 939), and crosslinking due to the metal complexation. (page 940 and 941). The polymers show about 4 mg of copper complexation per 1 g of polymer composite (Table 3, page 938).
Saleh does not teach the claimed polyester backbone formula of claim 1.
The second closest prior art is Wang et al., “Silver-coordination polymer network combining antibacterial action and shape memory capabilities,” RSC Advances, vol. 4, pp. 32276-32282 (2014). (hereinafter Wang). Wang teaches a multifunctional polymer network obtained from an isonicotinate-functionalized polyester, wherein pendant pyrazinamide groups on the polyester side chains are coordinated with silver (Ag) ions to form a physically crosslinked network. (See abstract). Specifically, the isonicotinate-functionalized polyester (PIE) is formed in Scheme 1.
PNG
media_image3.png
498
429
media_image3.png
Greyscale
by reacting 10 mmol of BIN with 10 mmol of sebacic acid (i.e. 50 mol% of chelation groups), (page 32277), with a molecular weight of 45,200 and a polydispersity of 1.467 (page 32277), and the PIE is poured into a mold to from a PIE film, wherein the PIE film is then soaked in an AgNO3 solution and dried to form an Ag-PIE film (page 32277), the polymer network has about 3.11% Ag ions (page 32279), a glass transition temperature range of 20-55 deg C (page 32279), has excellent shape memory function (page 32280) and is used in the biomaterial fields because it is antibacterial and has good cytocompatibility. (page 32281).
Wang does not teach the claimed polyester backbone formula of claim 1.
The last closest prior art is CN 109134836 A to Tu et al. (hereinafter Tu). Tu teaches a polyether ester elastomer for metal ion coordination crosslinking (See abstract). Tu teaches the polyether ester has the formula
PNG
media_image4.png
280
770
media_image4.png
Greyscale
, (See page 3 of pdf translation). The above is coordinated and crosslinked with transition metals (page 3 of pdf translation), and Tu further teaches the polyether ester is a multi-block copolymer (page 4 of pdf translation), with a number average molecular weight of 30,400 g/mol (Example 1) and the ether block may be polyethylene glycol (See example 2).
Tu does not teach the claimed polyester backbone formula of claim 1.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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, Randy Gulakowski can be reached at (571)272-1302. 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.
/HA S NGUYEN/Primary Examiner, Art Unit 1766
Prosecution Insights