DETAILED ACTION
Pending Claims
Claims 9-21 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Objections
Claims 11-18 and 21 are objected to because of the following informalities:
For improved clarity, claims 11 and 21 should state: wherein a combination of the constituent unit based on the hydrophilic monomer "a" represented by the formula (1), the constituent unit based on the silicone monomer "b" represented by the formula (2) or the formula (3), and the constituent unit based on the thermally reactive monomer or photoreactive monomer "c" is any one selected from the following. This is because all of the combinations listed include “a”, “b”, and “c” monomers.
For improved clarity, claims 12-18 should state: wherein a combination of the constituent unit based on the hydrophilic monomer "a" represented by the formula (1), the constituent unit based on the silicone monomer "b" represented by the formula (2) or the formula (3), and the constituent unit based on the thermally reactive monomer or photoreactive monomer "c" is . This is because the single combination includes “a”, “b”, and “c” monomers.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
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, 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 9 and 19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yoshioka et al. (JP 2011-052055 A).
Regarding claims 9 and 19, Yoshioka et al. disclose: (9) a method of treating a surface of a silicone hydrogel, including a step of treating the surface of the silicone hydrogel with a copolymer (Abstract; paragraphs 0013 & 0027-0029); and (19) a method of producing a surface-treated silicone hydrogel, including a step of applying a copolymer to a surface of a silicone hydrogel (Abstract; paragraphs 0013 & 0027-0029). Yoshioka et al. disclose the following copolymer of structure (4):
PNG
media_image1.png
182
596
media_image1.png
Greyscale
(see paragraphs 0025-0026), which satisfies monomers “a”, “b”, and “c”. Yoshioka et al. fail to explicitly disclose that: (9 & 19) the copolymer is capable of dissolving at 0.5% (w/v) in hot water at 60°C, and incapable of dissolving at 1% (w/v) in water at 20°C. However, the skilled artisan would have expected the copolymer of Yoshioka et al. to satisfy this property because the teachings of Yoshioka et al. satisfy all of the material/chemical limitations of the claimed copolymer. At the very least, the skilled artisan would have expected the teachings of Yoshioka et al. to obviously embrace embodiments capable of satisfying this property because the teachings of Yoshioka et al. satisfy all of the material/chemical limitations of the claimed copolymer.
Therefore if not anticipated by Yoshioka et al., the skilled artisan would have expected the teachings of Yoshioka et al. to obviously embrace embodiments capable of satisfying the instantly claimed property because the teachings of Yoshioka et al. satisfy all of the material/chemical limitations of the claimed copolymer.
Claim Rejections - 35 USC § 103
Claims 9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Iso et al. (US 2018/0244911 A1).
Regarding claims 9 and 19, Iso et al. disclose: (9) a method of treating a surface of a silicone hydrogel, including a step of treating the surface of the silicone hydrogel with a copolymer (paragraphs 0121-0124); and (19) a method of producing a surface-treated silicone hydrogel, including a step of applying a copolymer to a surface of a silicone hydrogel (Abstract; paragraphs 0121-0124). Iso et al. disclose an exemplary copolymer derived from a “MPC” A-unit and a “TRIS” B-unit (see “synthesis example 6” in Table 1; see also paragraphs 0135 & 0138), which satisfies monomers “a” and “b”. This copolymer does not contain a constituent unit based on a thermally reactive monomer or a photoreactive monomer "c". However, the general teachings of Iso et al. contemplate the use of multiple A-units (see paragraphs 0033-0034). These include a “MPC” unit represented by formula (A2) and reactive monomers (A3)-(A6) (see paragraphs 0034-0057).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the copolymer of Iso et al. with an additional thermally reactive monomer or a photoreactive monomer "c" because: (a) synthesis example 6 of Iso et al. is derived from a “MPC” A-unit and a “TRIS” B-unit; (b) the general teachings of Iso et al. contemplate the use of multiple A-units; and (c) the multiple A-units of Iso et al. include a “MPC” unit represented by formula (A2) and reactive monomers (A3)-(A6).
Lastly, Iso et al. fail to explicitly disclose that: (9 & 19) the copolymer is capable of dissolving at 0.5% (w/v) in hot water at 60°C, and incapable of dissolving at 1% (w/v) in water at 20°C. However, the skilled artisan would have expected the teachings of Iso et al. to obviously embrace embodiments capable of satisfying this property because the teachings of Iso et al. obviously satisfy all of the material/chemical limitations of the claimed copolymer.
Therefore, the skilled artisan would have expected the teachings of Iso et al. to obviously embrace embodiments capable of satisfying the instantly claimed property because the teachings of Iso et al. obviously satisfy all of the material/chemical limitations of the claimed copolymer.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 16 of copending Application No. 18/039,442 (US 2024/0117094 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The method of claims 9 and 19 is obviously embraced by the silicone hydrogel modifying composition of copending claims 15 and 16.
The method of claims 10-18, 20, and 21 is obviously embraced by the silicone hydrogel modifying composition of copending claim 16.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Aside from the ODP rejection, claims 10-18, 20, and 21 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Yoshioka et al. (JP 2011-052055 A) and Iso et al. (US 2018/0244911 A1) fail to teach or suggest the instantly claimed modifier/copolymer, wherein the monomer "c" is methacryloyloxybenzophenone, 4-(4-azidobenzoyloxymethyl)vinylbenzene, or glycidyl methacrylate.
International Search Report
The international search report cited five X-references and one P,X-reference. These references have been considered, and one X-reference has been applied as prior art.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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.
/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
January 10, 2026