DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 6-30, 34-63 and 71 have been canceled.
Claims 1-5, 31-33, 64-70, and 72-76 are currently pending.
Election/Restrictions
Applicant’s election with traverse of Group I, Claims 1-5 and 31-33, and of species alginate and acid, in the reply filed on 10/1/2025 is acknowledged. The traversal is on the ground(s) that all groups are linked by a special technical feature. This is not found persuasive because as indicated by the rejections below, the groups do not share the special technical feature which contributes over the prior art at the time the invention was made.
The requirement is still deemed proper and is therefore made FINAL.
Claims 32, 64-70 and 72-76 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions and species, there being no allowable generic or linking claims.
Claims 1-5, 31 and 33 are being examined in this application, insofar as they read on the elected species of alginate and acid.
Claim Rejections - 35 USC § 112
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 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], 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 5 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 5 depends from claim 1. Claim 1 d) recites “stirring the mixture until gelation is complete”, and claim 5 recites “wherein the stirring in step d) is carried out until the viscosity of the mixture does not further increase.”, which generally signifies that gelation is complete. Since claim 5 includes the same step as recited in claim 1, claim 5 fails to further limit the subject matter of claim 1.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 102 / 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 of this title, 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.
Claims 1-2, 4-5, 31 and 33 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Speaker et al (US 2018/0078648 A1; 3/22/2018.).
The instant claims recite a method of forming a shear-thinning fluid gel composition comprising 0.5 to 20% w/v of a microgel particle-forming polymer dispersed in an aqueous medium, the method comprising the steps of: a) providing a microgel particle-forming polymer, wherein the polymer comprises a plurality of cross-linkable functional groups; b) dissolving the microgel-forming polymer provided in step a) in an aqueous medium at a concentration of 0.5 to 20% w/v to form a polymer solution; c) mixing the polymer solution formed in step b) with an agent capable of cross-linking the cross-linkable functional groups of the polymer; and d) stirring the mixture until gelation is complete; wherein the cross-linking agent in step c) is not a metal ion salt; and wherein the viscosity and the elastic modulus of the shear-thinning fluid gel composition reversibly reduce when the gel is exposed to shear.
Speaker teaches a shear-thinning composition obtained by a method comprising providing an aqueous solution comprises 20 mL of 1.0% wt. sodium alginate, adding trace citric acid, and stirring at 700 rpm for a while to form a gel-like fluid. Despite this gel-like consistency, the fluid was readily sprayed using a common dip-tube finger-pump cosmetic atomizer or trigger sprayer, and the spray pattern was very similar to that of water alone, the spray pattern reflected extreme viscosity loss while under shear conditions (Example 1). Speaker does not explicitly teach stirring the mixture until gelation is complete. However, Speaker does teach the mixture is stirred at 700 rpm for a while to form a gel-like fluid, which read on stirring the mixture until gelation is complete. Even if not anticipated, the mixture is stirred at 700 rpm for a while implying that the mixture is well mixed and continues to react, and a gel-like fluid is formed at the end, which is at least prima facie obvious.
Thus, the claimed invention as a whole was at least prima facie obvious, if not anticipated by, the reference, especially in the absence of evidence to the contrary.
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 of this title, 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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Speaker et al (US 2018/0078648 A1; 3/22/2018.) as applied to claims 1-2, 4-5, 31 and 33 above.
Speaker does not teach the microgel particle-forming polymer is dissolved in the aqueous medium at a concentration of 2 to 8% w/v (claim 3).
However, Speaker does teach the aqueous solution comprises 20 mL of 1.0% wt. sodium alginate, a concentration that is close to the claimed concentration.
Thus, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to optimize the concentration as a matter of routine experimentation. Generally, differences in concentration will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05 II) Moreover, before the effective filing date of the claimed invention, one of ordinary skill in the art would have been motivated by the cited reference and routine practice to optimize the concentration with a reasonable expectation for successfully obtaining a shear-thinning fluid gel composition.
Double Patenting
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5, 31 and 33 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2, 10 and 15 of co-pending Application No. 18/009,485 (referred to as the ‘485 application) in view of Speaker et al (US 2018/0078648 A1; 3/22/2018.).
Claims 1-2, 10 and 15 of the ‘485 application recite a method of forming a shear-thinning fluid gel composition comprising 0.5 to 20% w/v of a microgel particle-forming polymer dispersed in an aqueous medium, the method comprising the steps of: a) providing a microgel particle-forming polymer, wherein the polymer comprises a plurality of cross-linkable functional groups; b) dissolving the microgel-forming polymer provided in step a) in an aqueous medium at a concentration of 0.5 to 20% w/v to form a polymer solution; c) mixing the polymer solution formed in step b) with a radical initiator; and d) stirring the mixture until gelation is complete; wherein the viscosity and the elastic modulus of the shear-thinning fluid gel composition reversibly reduce when the gel is exposed to shear. The microgel particle-forming polymer is a biopolymer. The microgel particle-forming polymer is dissolved in the aqueous medium at a concentration of 2 to 8% w/v. The stirring in step d) is carried out by constant stirring at 100 to 1000 rpm.
‘485 application does not teach the microgel particle-forming polymer is alginate and the agent is an acid (claims 31 & 33).
Speaker teaches a shear-thinning composition obtained by a method comprising providing an aqueous solution comprises 20 mL of 1.0% wt. sodium alginate, adding trace citric acid, and stirring at 700 rpm for a while to form a gel-like fluid (Example 1).
Thus, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to incorporate alginate as a microgel particle-forming polymer and an acid as an agent to form a shear-thinning fluid gel composition, since ‘485 application and Speaker both disclose a method of forming a shear-thinning fluid gel composition, and Speaker discloses that alginate and an acid are used to form the shear-thinning fluid gel composition. Moreover, before the effective filing date of the claimed invention, one of ordinary skill in the art would have been motivated by the cited reference and routine practice to incorporate alginate as a microgel particle-forming polymer and an acid as an agent, with a reasonable expectation for successfully forming a shear-thinning fluid gel composition.
This is a provisional obviousness-type double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNN Y FAN whose telephone number is (571)270-3541. The examiner can normally be reached on M-F 7am-4pm.
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/Lynn Y Fan/
Primary Examiner, Art Unit 1759