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
Applicant’s claim amendments and remarks filed January , 29, 2026 are entered and have been fully considered. Applicant has amended claim 12 to overcome the objection, therefore it is withdrawn.
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.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karunakaran, R. et al (2007), “Synthesis, Characterization, and Crosslinking of Methacrylate-Telechelic PDMAAm-b-PDMS-b-PDMAAm Copolymers,” J. Polym. Sci. A Polym. Chem., 45: 4284-4290. https://doi.org/10.1002/pola.22169.
Regarding claims 1, 3-10, Karunakaren teaches a silicone hydrogel made by the RAFT synthesis method, abstract. On page 2, scheme 1 shows the synthesis steps taken to form the end result of the amphiphilic conetwork APCN. A thiocarbonyl is used as the RAFT agent as seen in steps 1 to 2, then in steps 2 to 3 the copolymer of step 2 is reacted with N,N-dimethyl acrylamide or PDMAAm, which as seen in step 3 is inserted next to the thiocarbonyl end group. The structure of the step 3 polymer is shown on page 5, Figure 1 NMR spectra, labeled as (3), this copolymer matches the structure of applicant’s formula (2) where R2 is a methyl group (reads on claim 9) from the PDMS, Xa and Xb are the organic linking groups between the siloxane and the PDMAAm residue. The PDAAm residue reads on the non-crosslinking group R4b because the repeat unit is -CH2-CH-C(=O)-N(CH3)(CH3), the CH2 reads on the -CHR4c, the CH reads on the -CR4d, and the -C(=O)-N(CH3)(CH3) reads on the R4e where Y3 is a single bond and all of -C(=O)-N(CH3)(CH3) is R4f. The molecular weight of the PDMAAm unit is 2,500 g/mol, stated on page 5 right column, second paragraph. To get the DP, 2,500 is divided by the molecular weight of the unit which is about 99 g/mol, so the DP is about 25, which reads on applicant’s n for the R4b group, and reads on claims 7-8.
Additionally in applicant’s formula (2), Ra is -SRa1 where Ra1 is an alkyl group. The number of siloxane units in the polymer is based on the molecular weight of the starting material (1) which is Mn=5,000 g/mol stated on page 5, left column, under Experimental Implementation of the Strategy and the formula for the PDMS polymer given on page 3, left column, under Materials. Subtracting the organic units that are not part of the PDMS is 5,000-222=4,778 g/mol, then dividing by the molecular weight of the PDMS unit, 74 g/mol, equals about 65 repeat units, which reads on applicant’s m of formula (2) and reads on claim 10.
Furthermore, Karunakaren reacts the copolymer formed in step 3 with hydroxyethylacrylate (HEA) to insert HEA units between the PDMAAm and the thiocarbonyl, see page 2 scheme 1 structure (4). The HEA unit reads on the crosslinking R4a unit and does not contain the CH-C(CH3)(COO)- group which would be derived from hydroxyethyl methacrylate (HEMA), and the crosslinkable group is hydroxyl, which also reads on claims 3-5. The number of HEA units in the copolymer is about 5, see page 5 right column third paragraph, which reads on the n for R4a, and reads on claims 7-8.
Karunakaren teaches the hydroxyethylacrylate is further modified with methacryloyl chloride in polymer (5) to make polymer (6), page 2, which anticipates the embodiment where the crosslinkable group R4a is a carbon-carbon double bond of claim 1 and the methacryloyl group of claim 6.
Regarding claim 2, Karunakaren teaches the polymer of (3) is amphiphilic, the PDMS portion is hydrophobic and the PDMAAm segments are hydrophilic, page 3 left column second paragraph, this reads on the claimed hydrophobic polymer because applicant states that to be considered hydrophobic it has to at least be 5% soluble in a non-aqueous solvent. Both polymers in (3) and (4) are dispersed in solvents for the reactions, see page 2 scheme 1, (3) is in t-butanol for the reaction with HEA and then (4) is in THF for the next reaction.
Regarding claim 11, the claim is directed to a surface treating agent which is an intended use of the polymer and the polymers of Karunakaren are capable of serving in this capacity because they are for the application of contact lenses, membranes, abstract and page 1.
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.
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.
Claims 1-11, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Scales et al, US20130317131.
Regarding claims 1, 3-10 Scales teaches a block copolymer of the formula A-B-Q, abstract. The polymer is formed by RAFT polymerization methods with a RAFT agent of a thiocarbonyl, ¶¶[0046, 0059]. Scales shows an example of a copolymer in formula XIII, ¶[0087], which reads on applicant’s formula (1). The DP for the polysiloxane chain is from 6 to 1000, ¶[0072], which overlaps with applicant’s m of claims 1 and 10, and the alkyl group connected to the siloxane chain reads on applicant’s R1. The groups on the polysiloxane chain are selected as H or C1-4 alkyl groups, ¶[0071], which reads on the R2 group of claims 1 and 9. The linking group B in formula XIII reads on the divalent organic groups of Xa and Xb. The hydrophilic segment Q, reads on the R4 group where the DP is from 10-10,000 ¶[0073], which overlaps with applicant’s n, and also reads on claims 7-8. These ranges overlap with the claimed ranges; therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be prima facie obvious. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
The Q segment is comprised of different hydrophilic groups, shown in Formula XIII ¶[0087], is one derived from N,N-dimethyl acrylamide and one that is acryloyl functional which is next to the thiocarbonyl group. The dimethyl acrylamide residue reads on the R4b non-crosslinking group because the repeat unit is -CH2-CH-C(=O)-N(CH3)(CH3), the CH2 reads on the -CHR4c, the CH reads on the CR4d, and the -C(=O)-N(CH3)(CH3) reads on the R4e where Y3 is a single bond and all of -C(=O)-N(CH3)(CH3) is R4f. The group with acryloyl functionality reads on the R4a crosslinking group of claims 1, and 3-6. The trithiocarbonyl group has an end group of hexyl, which reads on applicant’s Ra of formula (1) where Ra is -SRa1 where Ra1 is alkyl.
Regarding claim 2, Scales teaches the copolymer is amphiphilic comprising hydrophobic and hydrophilic units, and that it solubilizes in solvents ¶[0158].
Regarding claim 11, Scales teaches the copolymer is crosslinked to form a nanogel that is used to treat a contact lens medical device to reduce the uptake of lipids and proteins, ¶[0303].
Regarding claims 14-15, Scales teaches an article comprising a substrate of a contact lens, and a layer of the block copolymer is deposited on the substrate, ¶¶[0152-0154]. The article of a surface treated contact lens reads on the claimed optical member.
Claims 12-13 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Karunakaran, R. et al (2007), “Synthesis, Characterization, and Crosslinking of Methacrylate-Telechelic PDMAAm-b-PDMS-b-PDMAAm Copolymers,” J. Polym. Sci. A Polym. Chem., 45: 4284-4290. https://doi.org/10.1002/pola.22169 in view of Erdodi et al, “Amphiphilic Conetworks: Definition, Synthesis, Applications,” Progress in Polymer Science, Volume 31, Issue 1, 2006, Pages 1-18, https://doi.org/10.1016/j.progpolymsci.2005.11.001.
Regarding claim 12, Karunakaren teaches the invention according to claims 1 and 11 as explained above. Karunakaren uses AIBN to crosslink the block copolymer to form the APCN and does not teach crosslinking with an epoxy functional compound or a compound with a carbon-carbon double bond as a matrix forming composition.
Erdodi, which is cited by Karunakaren in the background section, reviews the field of APCN (amphiphilic conetoworks), their synthesis and applications, abstract. Erdodi discloses the use of APCNs for contact lenses, page 4 right column, and discloses the different synthetic strategies for forming the crosslinked APCNs, page 6 right column, and in table 2 page 9 shows different monomers of interest. The macromonomers are, like the macromers disclosed by Karunakaren, siloxane-based and the monomers include acrylate functional monomers such as HEA and acrylic acid. These monomers have a carbon-carbon double bond and read on the matrix forming composition of claim 12.
Karunakaren and Erdodi are analogous to the claimed invention because both are in the field of methacrylate functional polysiloxanes and the uses thereof. Moreover, that the latter is cited by the former in their preliminary discussion of the technology is strong evidence of them being analogous to one another.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have practiced the invention of Karunakaren but copolymerized with the acrylic functional monomers of Erdodi in the presence ofAIBN with a reasonable expectation of success with the motivation to produce another permutation of an APCN for use in contact lenses.
Regarding claim 13, Karunakaren teaches the APCNs are for forming membranes, abstract, which are thick films. Additionally, Erdodi discloses APCNs are used for antimicrobial thin film coatings, page 9 right column second paragraph.
Regarding claim 17, Erdodi discloses articles comprising a substrate and a thin film coating of the crosslinked APCN, page 9 right column second paragraph, and that APCNs have application in surface coatings to protect hulls of marine vessels, page 5 right column, second paragraph.
Allowable Subject Matter
Claims 16, 18-19 are objected to as being dependent upon a rejected base claim, but 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: The cited prior art fails to teach, suggest, or disclose the article of claim 16, 18-19.
The articles taught by Scales and Karunakaren are for the medical industry, therefore it would not be obvious to combine the surface treatment of Scales with optical members such as LiDAR covers, and the polymers of Karunakaren and Erdodi are for contact lenses and other industrial uses, but does not suggest the articles of claims 16 and 19. Erdodi discloses the use of APCNs as thin film coatings (surface treatments) for marine vessels and as anti-microbial coatings for medical devices, but does not suggest using the APCNs as a coating for the contact lenses, rather the contact lenses are made from the APCNs, not additionally coated with them.
Response to Arguments
Applicant’s arguments, see pages 2-5 filed 1/29/2026, with respect to the §102 rejection over Yuan, the §102 rejection over Li and the §102 rejection over Lindhardt have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration and search, new ground(s) of rejection are formulated over Karunakaren and Scales.
The rejections over Yuan and Li are withdrawn because they contain the CH-C(CH3)(COO)- group that claim 1 states is not to be a part of the R4a group. Examiner misinterpreted applicant’s meaning of “backbone” because generally the term backbone refers to the portion that is a part of the main polymer chain, not the pendant chain. Examiner recommends removing the word “backbone” and replacing with “moiety” or clarifying exactly where the CH-C(CH3)(COO)- group would be.
The rejection over Lindhardt is withdrawn due to the amendment of claim 1 further limiting the non-crosslinking group R4b, which Lindhardt does not teach.
Upon further consideration, a new ground of rejection is made under §102 over Karunakaren and additionally over Scales.
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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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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