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 .
Claim Objections
Claim 23 is objected to because of the following informalities:
Claim 23 recites “wherein said bioresorbable and functionalizable thiol-yne elastomer intermediate the formula…” This appears to be a grammatical error and should read “has the formula…” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-28, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitations "the residue of" in line 3, d "the residue of" in line 3, “the double bonds” in line 4, and “the residue of a zwitterionic thiol.” The claim should be corrected to recite “a residue…” and “double bonds of the zwitterionic bioresorbable thiol-yne elastomer are in cis configuration…” There is insufficient antecedent basis for the limitations in the claim.
Claim 1 also recites a “residue of an alkyne-functionalized bis or tris-propiolate…” However, claim 1 also recites a “residue of a C4 to C14 dicarboxylic acid-based bis-propiolate…” A “propiolate” group already contains an alkyne group and it is unclear if the “alkyne-functionalized” limitation is an additional alkyne functionalization or the same alkyne already in the priopiolate group. Furthermore, it is unclear if the “residue of an alkyne-functionalized bis-propiolate…” may be the same “C4 to C14 dicarboxylic acid-based bis-propiolate” or is an additional different bis-propiolate since they both are already alkyne-functionalized.
From the specification, it appears that the claim should read “a bis- or tris-propiolate containing an additional alkyne functional group.
Claim 6 recites the limitations "the thiol-yne step-growth reaction product…” in line 1-2. There is insufficient antecedent basis for the limitations in the claim.
Claim 11 recites the limitation "the residue of" in line 2. The claim should be corrected to recite “a residue…” There is insufficient antecedent basis for the limitations in the claim.
Claim 12 recites the limitation "the residue of" in line 2. The claim should be corrected to recite “a residue…” There is insufficient antecedent basis for the limitations in the claim.
Claim 13 recites the limitation "the residue of" in line 2. The claim should be corrected to recite “a residue…” There is insufficient antecedent basis for the limitations in the claim.
Claim 21 and 22 recites the limitation "the group consisting of…” in line 1-2. The claim should be corrected to recite “a group consisting of…” There is insufficient antecedent basis for the limitations in the claim.
Claim 28 recites the limitations "the residue of" in line 7, and "the residue of" in line 7, and “the double bonds” in line 9. The claim should be corrected to recite “a residue…” and “double bonds of the zwitterionic bioresorbable thiol-yne elastomer are in cis configuration…” There is insufficient antecedent basis for the limitations in the claim.
Claims 2-5, 7-10, 14-20, and 23-27, are dependent claims which fail to alleviate the issues above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 15-23, are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites “The zwitterionic bioresorbable thiol-yne elastomer composition of claim 17, wherein the alkyne functionalized bis or tris-propiolate monomer is 2-(prop-2-yn-1-yloxy)propane-1,3-diyl dipropiolate.” However, claim 15 already recites a 2-(prop-2-yn-1-yloxy)propane-1,3-diyl dipropiolate in step A). Thus, the claim fails to further limit the claim.
Claim 15 recites “a linear C4 to C20 dicarboxylic acid-based bis-propiolate…” in step A) and step C). However, claim 1 recites a “C4 to C14 dicarboxylic acid-based bis-propiolate… The claim appears to broaden the range from C14 to C20 and thus, fails to further limit.
Claim 18 recites “a linear C4 to C20 dicarboxylic acid-based bis-propiolate…” However, claim 1 recites a “C4 to C14 dicarboxylic acid-based bis-propiolate… The claim appears to broaden the range from C14 to C20 and thus, fails to further limit.
Claims 4, 16, 17, 19-23, are dependent claims which fail to alleviate the issues above.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1-28, would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The first closest prior art is US 2018/0244821 A1 to Becker et al. (hereinafter Becker). Becker teaches the polymer composition scheme 7
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(para 141-142).
Becker does not teach the zwitterionic side chain.
The second closest prior art is Kuroda et al., “A Novel Polyaddition of Bifunctional Acetylenes Containing Electron-Withdrawing Groups. 2. Synthesis of Polymers Having β-Alkylmercaptoenoate Moieties by the Reaction with Dithiols,” Macromolecules, vol 28, pp. 6020-6025 (1995). (hereinafter Kuroda). Kuroda teaches Scheme 1-2:
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. (page 6020).
Kuroda does not teach the zwitterionic side chain.
Conclusion
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/HA S NGUYEN/Primary Examiner, Art Unit 1766