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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 6/3/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 6/3/2026. In particular, claim 1 has been amended to limit the molecular wight of the block copolymer and to increase the lower limit value of n and m. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-5 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kricheldorf (Kricheldorf, et al., Makromol. Chem. 186, 955-976 (1985)).
With respect to claims 1-5, Kricheldorf discloses copolymers of glycolide with β-propiolactone (abstract) which reads on claimed Formula 1 when R1, R2, and L are direct bonds and R1 and R2 are hydrogen (also claimed Formula 1-1). In Table 3 on page 962, block copolymers of glycolide with β-propiolactone are exemplified and prepared with different initiators. Example 14 includes a copolymer having a glycolide block with average block length of > 30 (claimed n is at least 30) and a β-propiolactone block with average block length of > 20 (claimed m is at least 20). Block length is the number of monomers in a given block.
Kricheldorf exemplifies a copolymer having a glycolide block with average block length of > 30 and a β-propiolactone block with average block length of > 20. Molecular weight calculated from these block lengths gives a molecular weight of about 3180 g/mol which does not overlap with claimed 10,000-500,000 g/mol.
Even so, the block length is given as “greater than” 30 and “greater than” 20 which suggests far greater average blocks lengths. Also, Kricheldorf teaches that the highest yields were obtained at the longest reaction times (page 965, lines 4-5 of the second paragraph) which is guidance on how to reach longer block lengths, i.e., higher molecular weights.
Therefore, it would have been obvious to one of ordinary skill in the art to utilize higher block lengths and therefore higher molecular weights that would overlap with the claimed weight average molecular weight—absent a showing of unexpected or surprising results.
With respect to claim 11-14, the block copolymer is a resin that is used in articles such as surgical sutures (i.e., a fiber) (page 955, lines 5-6 of Introduction).
Response to Arguments
Applicant's arguments filed 6/3/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that the copolymer of Kricheldorf dos not read on claimed copolymer because when the glycolide/propiolactone is increased there is an increase in insoluble fraction.
The instant claims do not require a specific comonomer ratio. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant also argues that Kricheldor does not fairly disclose or suggest a weight-average molecular weight of at least 10,000 g/mol.
Kricheldorf exemplifies a copolymer having a glycolide block with average block length of > 30 and a β-propiolactone block with average block length of > 20. Molecular weight calculated from these block lengths gives a molecular weight of about 3180 g/mol which does not overlap with claimed 10,000-500,000 g/mol. Nevertheless, Kricheldorf discloses that the block length is “greater than” 30 and “greater than” 20 which suggests far greater average blocks lengths. Therefore, it would have been obvious to one of ordinary skill in the art to utilize higher block lengths and therefore higher molecular weights that would overlap with the claimed weight average molecular weight—absent a showing of unexpected or surprising results.
Applicant argues that Kricheldorf’s longer reaction times are not directly related to an increase in weight-average molecular weight.
To the contrary in the second paragraph on page 965, Kricheldorf teaches longer reaction times but also that there is a maximum advantageous reaction time that is readily measured by one of ordinary skill in the art. Therefore obtaining a block copolymer having a weight-average molecular weight of at least 10,000 g/mol is prima facie obvious over Kricheldorf.
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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