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 .
Election/Restrictions
Applicant’s election without traverse of Group I, collagen, methacrylic acid, refractive index 1.5, not hydrated, hydroxyethyl methacrylate, 2-(2’-methacryloxy-5’methylphenyl)benzotriazole, ethyeneglycol dimethacrylate in the reply filed on 12/12/25 is acknowledged.
Claims 7-9, 15-17, 19-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/12/25.
Priority
The claims have an effective date of the provisional application filed 10/22/21
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.
Claim(s) 1-6, 10-14 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Phopase (EP 6043835).
Phopase discloses transparent hydrogel compositions (title). Reference Example 2 [0061-0063] discloses methacrylation of collagen wherein collagen [meeting the bioactive agent of claim 1] is reacted with methacrylic anhydride [meeting the moiety of claim 1] to form MA-collagen [meeting the bioactive monomer of claim 1]. Reference Example 3 [0066] discloses mixing the MA-collagen with monomers such as the elected hydroxyethyl methacrylate [meeting the other monomers of claim 1] and reacting via exposure to UV to form a polymer gel [meeting the performing a copolymerization, and, the manufacturing of a bioactive polymer]. Elements above meet claim 1. Elements above also meet claim 2 since this polymer is an acrylate (a type of an acrylic polymer). Collagen meets claims 3-5 and hydroxyethyl methacrylate, as above, meets claim 6. The methacrylic anhydride is an alkenyl moiety, thus elements above meet claim 10. Elements above further meet claims 11-14.
Claim(s) 1-3, 6, 10-14 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Sanyal (US 2019/0321479).
Sanyal discloses cleavable polymer drug composites (title). Said composites are exemplified, see Example 2 wherein docetaxel [meeting a bioactive agent] is conjugated to a methacrylate moiety [meeting the moiety] to produce a docetaxel-MA monomer [meeting the bioactive monomer]. Example 3 copolymerizes the docetaxel-MA with polyethylene glycol methyl ether methacrylate PEGMEMA [meeting the other monomer lacking a bioactive agent], the copolymer thereof meets the bioactive polymer of claim 1. The end copolymer is an acrylic polymer, as required by claim 2, and docetaxel is a therapeutic agent, as required by claim 3. Alternatively, proteins may be attached to the monomer [0051]. Choosing one element from a list is still deemed anticipated, thus alternatively anticipating claim 3. The PEGMEMA is a methacrylate compound, as required by claim 6. The methacrylate portion of the Docetaxel-MA of Ex 2 meets the first alkenyl moiety of claim 10, the other elements thereof already discussed above. Elements above further meet claims 11-12. The PEGMEMA is an acrylate ester, as required by claim 13 and is also a methacrylate compound as required by claim 14.
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 18 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Phopase.
Phopase includes elements as set forth above. Phospase exemplifies and embraces the same monomers as instantly claimed (hydroxyethyl methacrylate and MA-collagen), thus the refractive index of the claims is expected to be met or embraced by the reference.
If there is any difference between the product of the reference and the product of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102." See MPEP 2112(III) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Claim(s) 18 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sanyal.
Sanyal includes elements as set forth above. Sanyal exemplifies and embraces monomers of the same genus of that as instantly claimed (various acrylates), thus the refractive index of the claims is expected to be met or embraced by the reference.
If there is any difference between the product of the reference and the product of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102." See MPEP 2112(III) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759