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 .
This Office action is in response to the amendment filed 4/20/2026. Claims 1, 3, 8-10 are amended; claims 12-20 are withdrawn from consideration as being drawn to non-elected invention; claims 21-23 are cancelled; and claims 24-25 are added. Accordingly, claims 1-20 and 24-25 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner acknowledges applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection as set forth in paragraphs 9-13, of office action mailed 1/20/2026. However, the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1): “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Double Patenting
Claims 1-5, 7-8, 10-11 and 24-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No.11,744,925 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, U.S. Patent No. 11,744,925 B2 comprises a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and a second monomer 4-hydroxybutyl acrylate including a functional group such as hydroxyl. The coating formulation is coated on a medical device which is a thermoplastic. It is the Office’s position that base coat, of U.S. Patent No. 11,744,925 B2, comprising the copolymer is inherently capable of reacting with a plasma treated plastic including a medical device such as trocar or cannula. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, claims 1-5, 7-8, 10-11 and 24-25 are fully anticipated over the claims in U.S. Patent No. 11,744,925 B2.
Additionally, claims in U.S. Patent No. 11,744,925 B2 are silent with respect to the species of monomer “b” of dependent claims.
However, Applicant’s attention is drawn to MPEP § 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of U.S. Patent No.11,744,925 B2 wherein it teaches that the base coat includes a polymer that is a polymer of tetrahydrofurfuryl acrylate monomer and at least one other monomer including amine groups such as N-(3-aminopropyl) methacrylamide (col. 2, lines 34-51). Therefore, in light of the teachings in general disclosure of U.S. Patent No. 11,744,925 B2, it would have been obvious to one skilled in art to prepare a copolymer of tetrahydrofurfuryl acrylate and N-(3-aminopropyl) methacrylamide, absent evidence to the contrary.
Claims 1-5, 7-8, 10-11 and 24-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,883,564 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, U.S. Patent No. 11,883,564 B2 comprises a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate and monomer of formula II), second monomer 4-hydroxybutyl acrylate (including a functional group such as the hydroxyl) and N-(3-aminopropyl) methacrylamide. It is the Office’s position that base coat comprising the copolymer is inherently capable of reacting with a plasma treated plastic including a medical device such as trocar or cannula. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, claims 1-5, 7-8, 10-11 and 24-25 are fully anticipated over claims in U.S. Patent No. 11, 883,564 B2.
Claims 1-9, 11, and 24-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,257,370 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, U.S. Patent No. 12,257,370 B2 comprises a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and 4-hydroxybutyl acrylate (includes a functional group such as the hydroxyl); top coat comprising a copolymer of methoxyethyl acrylate (i.e., alkyloxyalkyl acrylate) and a second component comprising N-(3-aminopropyl) methacrylamide and hydroxybutyl acrylate. It is the Office’s position that base coat and top coat comprising the copolymers is inherently capable of reacting with a plasma treated plastic including a medical device such as trocar or cannula. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, claims 1-9, 11, and 24-25 are fully anticipated over claims in U.S. Patent No. 12,257,370 B2.
Claims 1-5, 7-8, 10-11, and 24-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,514,960 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, U.S. Patent No. 12,514,960 B2 comprises a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and a second monomer 4-hydroxybutyl acrylate (including a functional group such as the hydroxyl) and N-(3-aminopropyl) methacrylamide (i.e., including an amine functional group). It is the Office’s position that base coat comprising the copolymer is inherently capable of reacting with a plasma treated plastic including a medical device such as trocar or cannula. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, claims 1-5, 7-8, 10-11 and 24-25 are fully anticipated over claims in U.S. Patent No. 12.514,960 B2.
Claims 1-5, 7-8, 10-11, and 24-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, and 19-27 of copending Application No. 18/866,363. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, Application No. 18/866,363 comprises applying a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and a second monomer 4-hydroxybutyl acrylate (including a functional group such as the hydroxyl) and N-(3-aminopropyl) methacrylamide (i.e., including an amine functional group). It is the Office’s position that base coat comprising the copolymer is inherently capable of reacting with a plasma treated plastic including a medical device such as trocar or cannula. Therefore, claims 1-5, 7-8, 10-11, and 24-25 are fully anticipated over claims in Application No. 18/866,363. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 7-8, 10-11, and 24-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,558,462 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, U.S. Patent No. 12,558,462 B2 comprises a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and a second monomer, and the base coat is applied to a plasma treated substrate.
Claims in U.S. Patent No. 12,558,462 B2 are silent with respect to the species of second monomer, and configured to react with the plasma treated with the substrate.
However, Applicant’s attention is drawn to MPEP § 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of U.S. Patent No. 12,558,462 B2 wherein it teaches that the base coat includes a polymer with functional groups that are capable of further chemical reaction such as hydroxyl, amine, and carboxylic acid groups. The at least other monomer includes hydroxybutyl acrylate and N(3-aminopropyl) methacrylamide (col. 2, lines 35-52). Therefore, in light of the teachings in general disclosure of U.S. Patent No. 12,558,462 B2, it would have been obvious to one skilled in art to prepare a copolymer of tetrahydrofurfuryl acrylate and N-(3-aminopropyl) methacrylamide, and would have a reasonable basis to expect the functional groups in the monomer of copolymer of U.S. Patent No. 12,558,462 B2, to react with plasma treated substrate including medical device such as trocar or cannula, absent evidence to the contrary.
Claims 1-5, 7-8, 10-11, and 24-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/418,119. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, claims in copending Application No. 19/418,119 comprises a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and a second monomer hydroxybutyl acrylate (including a functional group such as the hydroxyl) and N-(3-aminopropyl) methacrylamide (i.e., including an amine functional group); and a medical device coated with the composition. It is the Office’s position that base coat comprising the copolymer is inherently capable of reacting with a plasma treated plastic including a medical device such as trocar or cannula. Therefore, claims 1-5, 7-8, 10-11 and 24-25 are fully anticipated over claims in U.S. Patent No. 11, 883,564 B2. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-11 and 24-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al (US 2018/0325649 A1).
Regarding claim 1, Wu et al disclose, in example 5, a copolymer formed from a monomer mixture comprising 2-methoxyethylacrylate (i.e., reads on alkyloxyalkyl acrylate in present claim 1) and (3-aminopropyl) methacrylamide hydrochloride (paragraph 0055) which reads on monomer containing a salt of amine in present claim 1. See example 6, wherein the copolymer is formed from monomer mixture comprising tetrahydrofurfuryl acrylate and (3-aminopropyl)methacrylamide hydrochloride (paragraph 0056) which reads on monomer containing a salt of amine in present claim 1. It is noted that tetrahydrofurfuryl acrylate is represented by formula:
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72
144
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(i.e., reads on heterocycloalkyl acrylate in present claim 1). Case law holds that material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Hence, it is the Office’s position that the copolymers, of Wu et al, are capable of being configured to react with a plasma treated plastic. Additionally, monomers contain functional groups such as hydroxyl, amine and salt thereof and are inherently capable of reacting with a plasma treated plastic.
Regarding claim 2-6, 8 and 9, see example 5, wherein polymer is formed from monomer mixture comprising 2-methoxyethylacrylate and (3-aminopropyl) methacrylamide hydrochloride (paragraph 0055) which reads on monomer containing salt of an amine in present claim 2, 3, 4, and 5, and salt of (3-aminopropyl) methacrylamide in present claims 8, 9 and 10. It is noted that 2-methoxyethylacrylate is represented by formula:
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126
454
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(i.e., reads on monomer of formula I in present claims 2 wherein R1 = H, R2 = C2 alkylene and R3 = C1 alkyl; monomer of formula I in present claims 3,4,5, 6, 8 and 9).
Regarding claims 2-5, 7-8 and 10-11, See example 6, wherein the copolymer is formed from monomer mixture comprising tetrahydrofurfuryl acrylate. It is noted that tetrahydrofurfuryl acrylate is represented by formula:
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74
140
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(i.e., reads on monomer of formula II in present claims 2 wherein R4 = H, R5 = C1 alkylene, x = 1, R6 = C3 alkylene, and y = 0; monomer of formula II in present claims 3, 4, 5, 7, 8, 10 and 11) and (3-aminopropyl) methacrylamide hydrochloride (paragraph 0056) which reads on monomer containing salt of an amine in present claims 2, 3, 4, 5, and salt of (3-aminopropyl)methacrylamide in present claims 8, 9 and 10. Examples of second monomer include hydroxybutyl acrylate (paragraph 0014) which is open to the hydroxyl group in any position including as in 4-hydroxybutyl acrylate of present claim 11.
Regarding claims 14-15, it is the Office’s position that it is intended use of the copolymer, of Wu et al, and it is capable of being configured to react with any plasma treated plastic including a medical device such as trocar or cannula.
Response to Arguments
The rejections under 35 U.S.C. 112(b), 102 and 103 as set forth in paragraphs 15, 18, and 21, of Office action mailed 1/20/2026, are withdrawn in view of applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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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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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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