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 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 6 and 13 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. Regarding claims 6 and 13, the inclusion of a trademark renders the claim indefinite because the relationship between a trademark and the product it identifies is sometimes indefinite, uncertain, and arbitrary. The formula or characteristics of the product may change from time to time and yet it may continue to be sold under the same trademark. In patent specifications, every element or ingredient of the product should be set forth in positive, exact, intelligible language, so that there will be no uncertainty as to what is meant. Arbitrary trademarks that are liable to mean different things at the pleasure of manufacturers do not constitute such language. Ex Parte Kattwinkle, 12 USPQ 11 (Bd. App. 1931).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 4-7, 9, and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ashman et al. (WO 2007/081396).
Regarding claims 1, 4-7, and 9; Ashman et al. teaches, in a preferred embodiment, 125 mg (~12 wt%) of dimethacrylated anhydride of sebacic acid (MSA), dimethacrylated anhydride of 1,3-bis(p-carboxyphenoxy)propane (CPPDM, reactive diluent), poly(1,3-bis(p-carboxyphenoxy)propane:sebacic acid (80:20), and 1 mg (~0.1 wt%) Irgacure® 651 (photoinitiator) [Ex2].
PNG
media_image1.png
280
598
media_image1.png
Greyscale
Regarding claim 10; Ashman et al. teaches the compositions are suitable for producing implants (three dimensional articles) or graft materials. The Examiner makes note that “wherein the composition has been cured by…” is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113.
Claim(s) 11, 13-17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ashman et al. (WO 2007/081396).
Regarding claims 11, 15-17, and 20; Ashman et al. teaches, in a preferred embodiment, photopolymerization of compositions (e.g. 90 wt% LC (LC = 90 wt% CPPDM (reactive diluent) and 10 wt% MSA): 10 wt% HTR, with 0.5 wt% of an initiating system of ethyl 4-dimethylaminobenzoate and camphorquinone (photoinitiator), packed into a mold and irradiated at 450 nm visible light [Ex9; 00210-00211; Sample (7)]. It is noted that MSA is employed in an amount of about 9 wt% of the total composition.
PNG
media_image1.png
280
598
media_image1.png
Greyscale
Regarding claims 13-14; Ashman et al. teaches camphorquinone may be substituted by Irgacure® 651 [00076].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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(s) 2-3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ashman et al. (WO 2007/081396), as applied to claim 1 above.
Ashman et al. teaches the basic claimed photocurable composition, as set forth above with respect to claim 1.
Regarding claim 2; Ashman et al. teaches methacrylated sebacic acid (C8 alkane group), however fails to teach a compound having a C4, C5, C6, C9 or C10 alkane group. It is well settled that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601(CCPA 1978) (stereoisomers prima facie obvious); see MPEP §2144.09. At the time of filing, a person of ordinary skill in the art, would have the presumed expectation that the compound having a C8 alkane group would necessarily possess substantially similar properties as a compound having a C9 alkane group because the compound are sufficiently close in structural similarity.
Regarding claim 3; Ashman et al. teaches the composition may further comprise hydroquinone (functions as an optical absorber) [00115], however fails to teach a preferred amount. The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of hydroquinone absorber, and would have been motivated to do so in order to achieve optimal prolonged shelf life of the individual components before curing the polymer system, as suggested by Ashman et al. [00115]. It is noted that the instant specification fails to disclose any specific optical absorbers, thus it is the Examiner’s position that hydroquinone (although labeled as an inhibitor in the invention of Ashman et al.), possesses the ability to function as an optical absorber.
Regarding claim 8; Ashman et al. teaches the composition may further comprise inhibitors [00115].
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ashman et al. (WO 2007/081396), as applied to claim 11 above.
Ashman et al. teaches the basic claimed photocurable composition, as set forth above with respect to claim 11.
Regarding claim 12; Ashman et al. teaches methacrylated sebacic acid (C8 alkane group), however fails to teach a compound having a C4, C5, C6, C9 or C10 alkane group. It is well settled that compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601(CCPA 1978) (stereoisomers prima facie obvious); see MPEP §2144.09. At the time of filing, a person of ordinary skill in the art, would have the presumed expectation that the compound having a C8 alkane group would necessarily possess substantially similar properties as a compound having a C9 alkane group because the compound are sufficiently close in structural similarity.
Regarding claims 18 and 19; the Examiner makes note that “forming is by..” is a product by process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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, Mark Eashoo can be reached at 571-272-1197. 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.
/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767