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 .
New prior art rejections are set-forth below utilizing prior art cited in the IDS filed 1/13/23. While the claims are amended, the claims are amended to incorporate a dependent claim and to correct a claims range that was interpreted correctly the previous action. For these reasons, the instant action is made non-final. The delay in compact prosecution is regretted.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claim Rejections - 35 USC § 103
Claims 1-7 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al (WO 2019135582, published on 2019-08-29) cited herein with identical US 2020/0172680) in view of Ramier et al (Microwave-Assisted Synthesis and Characterization of Biodegradable Block Copolyesters Based on Poly(3-hydroxyalkanoate)s and Poly(D,L-lactide), Journal of Polymer Sci., 2012, 50, 1445-145), both cited in IDS filed .
As to claims 1-7 and 9-11, Choi teaches a block copolymer, which includes a first block which is a lactic acid - polymerized repeating unit (PLA) represented by the following Chemical Formula 3 and a second block which is a 3-HP (i.e. polymerized repeating unit represented by the following Formula 4 (see paragraph 0014)):
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243
466
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Greyscale
The weight average molecular weight of the copolymer above is within the range of 10,000 to 350,000 (see paragraph 0022) at the molar ratio of P (3HP) and PLA is 1: 1 to 1:10 (see paragraph 0023 and 0027). The block copolymer has a tensile strength of 40 MPa to 55 MPa (see paragraph 0025), a tensile modulus of 1 GPa to 3.3 GPa (see paragraph 0025) and elongation at break of 1.8 % to 540 % (see paragraph 0025). Note that the film or sheet used for testing can be considered as an article. Therefore, the units m and n are deduced to be from the Mw and molar ratio of the monomers to be from about 11 to 1988 for m and about 102 to 3527 for n. Thus, Choi and Applicant teach a block-copolymers having the same structural elements and possessing the same mechanical properties. These amounts substantially overlap the claimed range. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
However, Choi uses small molecule (for instance diisocyanate or hydroxy ethyl ( meth) acrylate as a linking compound, while Applicant claims a block-copolymer, where PLA and P3HP blocks bonded directly (see printed publication, Example 1 at 0038). Ramier teaches poly(3-hydroxyalkanoate)-b-poly(D,L-lactide) (PHA-b-PLA) diblock copolymers, where PHA block is represented by poly(3-hydroxybutyrate) (PHB) or poly(3-hydroxybutyrate-co-3- hydroxyvalerate) (PHBHV).
Ramier and Applicant use the same catalyst SnOct2 for the polymerization, where PHBHV or PHB blocks act as initiator for ring opening polymerization (ROP) of lactide (see Scheme 1 at page 1447). Ramier discloses that the advantages of the reaction above includes very short reaction times (typically a few min) and comparatively low temperature associated with relatively high conversions (50-85%) (see page 1454, left column).
Therefore, it would have been obvious to a person of ordinary skill in the art to utilize Ramier's direct polymerization method in order to obtain Choi's PLA-P3HP block-copolymer in order to achieve high conversion at very low reaction times.
Double Patenting
Claims 1-7 and 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of US Patent 11,773,223 (reference application) in view of Ramier et al (Microwave-Assisted Synthesis and Characterization of Biodegradable Block Copolyesters Based on Poly(3-hydroxyalkanoate)s and Poly(D,L-lactide), Journal of Polymer Sci., 2012, 50, 1445-145), both cited in IDS filed . Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 1-6 and 9-10, patented claim 9 discloses the block copolymer with the proviso that the claims are silent on the claimed with the structure.
Ramier and Applicant use the same catalyst SnOct2 for the polymerization, where PHBHV or PHB blocks act as initiator for ring opening polymerization (ROP) of lactide (see Scheme 1 at page 1447). Ramier discloses that the advantages of the reaction above includes very short reaction times (typically a few min) and comparatively low temperature associated with relatively high conversions (50-85%) (see page 1454, left column).
Therefore, it would have been obvious to a person of ordinary skill in the art to utilize Ramier's direct polymerization method in order to obtain the patented block copolymer in order to achieve high conversion at very low reaction times.
As to claim 7, see patented claim 8.
As to claim 11, The patented claims are silent on articles. Ramier teaches that the block copolymers are suitable for scaffolds. See page 1445. It would have been obvious at the time of the invention to utilize the block copolymer in a scaffold (article) because Ramier teaches them to be suitable for similar block copolymers.
Claims 1-7 and 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3, 5-6 and 8-10 of copending Application No. 18/020,519 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 1, 6, copending claim 7 has all the limitations with the proviso that it has an extra limitation to the UV transparency. Nevertheless, the claim is anticipated. In the alternative, the range of 100 to 1000 overlaps the claimed range and it would have been obvious to have selected any value within the claimed range including 100.
As to claim 2, see copending claims 1 or 2, which overlap the claimed range as to render it obvious and it would have been obvious to have selected any value within the claimed range.
As to claim 3, see copending claims 1 or 3, which overlap the claimed range as to render it obvious and it would have been obvious to have selected any value within the claimed range.
As to claims 4-5, the ranges of claim 1 yield ratios that substantially overlap the claimed range as to render it obvious and it would have been obvious to have selected any value within the claimed range.
As to claim 7, see copending claim 5.
As to claim 8, see copending claim 8.
As to claims 9-10, see copending claim 9.
As to claim 11, see copending claim 10.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
The rejections over Hori have been withdrawn in light of applicant’s amendments.
Applicant’s arguments with respect to 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.
Applicant's request for abeyance with respect to the ODP rejections is acknowledged to the extent that applicant's lack of response to the cited rejection will not be treated as non-responsive. However, since the rejection is proper it will be maintained until such time as a proper response to it is filed or conditions appropriate for removal of the rejection are present.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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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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/MARK S KAUCHER/Primary Examiner, Art Unit 1764