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
All the references cited in the International Search Report have been considered. None is anticipatory or meet the amended claims. The most pertinent of these references have been applied below.
A telephone call was made to Kisuk Lee on 6/20/25 to request an oral election to the below restriction . Group I was elected without indicating traverse.
Election/Restrictions
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
I. Claims 1-3,a shaped memory polymer, C08G81/027
II. Claims 4-9, a device comprising Group I, B33Y70/00
III. Claim 10-15, a method of using Group I, B33Y70/00
IV. Claims 16, porosity providing step + Group III, B33Y70/00
The inventions listed in all groups do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: the common technical feature in all groups is the moiety of the polymer of claim 1. This element cannot be a special technical feature under PCT Rule 13.2 because the element is shown in the prior art. See below rejections.
Affirmation of this election must be made by applicant in replying to this office action. Applicant is advised that the reply to this requirement to be complete must include an election of the invention to be examined even through the requirement be traversed (37 CFR 1.143).
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(s) 1-3 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Tuominen et al. (US 20050080223) in view of Sung et al. (Wo 2018186575, US 20210102023 as English equivalent, listed on IDS and ISR).
As to claims 1-3, Tuominen (abs., claims, examples, 10, 24. 31, 33-35, 45-51) discloses a star polyester that can be crosslinked via light, irradiation, or UV curing, wherein the star polyester can be produced via condensation of e-caprolactone with pentaerythriol core as an initiator:
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Tuominen is silent on the claimed comonomer moiety of glycidyl methacrylate.
Solving the same problem of crosslinking a polyester via photo-curing, Sung (abs., fig.3, 1, 27, 61-64, scheme 1, Ex.1) discloses a shape memory copolyester of e-caprolactone (90 mol%) and glycidyl methacrylate (10 mol%) that enables photo-curing:
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Therefore, as to claims 1-3, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Tuominen and replaced the added glycidyl methacrylate comonomer (GMA: caprolactone=1:9, the same ratio of instant examples) in view of Sung, because the resultant process would yield improved photo crosslinking owning to the glycidyl methacrylate. The resultant star copolymer would inherently yield the claimed formula and repeating units, because Tuominen and Sung obviously satisfy all of the material and chemical limitations (core initiator, comonomers, and molar ratio) of the instant invention-see MPEP 2112.01.
The references are silent on the claimed property of “share memory”. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. “share memory”, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Claim(s) 1-3 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Sung et al. (Wo 2018186575, US 20210102023 as English equivalent, listed on IDS and ISR) in view of Becker et al. (US 20220041804) and Tuominen et al. (US 20050080223).
As to claims 1-3, Sung (abs., fig.3, 1, 27, 61-64, scheme 1, Ex.1) discloses a linear shape memory copolyester of e-caprolactone (90 mol%) and glycidyl methacrylate (10 mol%, the same ratio of instant examples) for medical applications:
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Sung is silent on the claimed pentaerythriol core.
In the same area of endeavor of producing polyesters for medical applications, Becker (abs., 4-5, 12) discloses star polyester copolymers show lower viscosities than their linear analogs.
Disclosure of Tuominen is adequately set forth in ¶1 and is incorporated herein by reference.
Therefore, as to claims 1-3, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Sung and replaced the hexanediol initiator with pentaerythriol in view of Becker and Tuominen, because the resultant process would yield a star copolyester with reduced viscosity. The resultant star copolymer would inherently yield the claimed formula and repeating units, because Tuominen and Sung obviously satisfy all of the material and chemical limitations (core initiator, comonomers, and molar ratio) of the instant invention-see MPEP 2112.01.
The references are silent on the claimed property of “share memory”. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. “share memory”, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766