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 .
This Office action is in response to the amendment filed 7/7/2026. Claims 1-20 are currently pending in the application.
Election/Restrictions
Applicant’s election without traverse of group I, drawn to claims 1-15, with a species election of -C(=O)-N(X,Y)- in the reply filed on 7/7/2026 is acknowledged.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/7/2026.
Claim Objections
Claims 2-3 and 14 are objected to because of the following informalities:
Claims 2 (lines 4-6) and 3 (lines 1-3) recite “wherein a structural unit constituting a main chain in a repeating unit in a main chain of the polymer” (lines 4-6), and “wherein the structural unit constituting the main chain in the repeating unit in the main chain of the polymer” (lines 2-3), respectively. For clarity, to remove redundant recitation, and proper antecedent basis, applicant is advised to rephrase it as “wherein a structural unit constituting a repeating unit in a main chain of the polymer”.
Claim 14 recites “wherein the core contains oxygen”. For clarity and given that core comprises a fluorocarbon in independent claim 1 on which this claim is dependent, applicant is advised to rephrase it as “wherein the core further contains oxygen”.
Appropriate correction and/or clarification are 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 3 and 6 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 3 recites the limitation "the structural unit", “the main chain”, and “the repeating unit” in lines 1-2, line 2 and line 2, respectively. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites “silicone polymer or a fluorine-containing polymer and the fluorine content of the polymer is 20 wt% or more” (lines 2-3). It is not clear if the fluorine content of 20 wt% or more is associated with silicone polymer as well as fluorine polymer or just the fluoropolymer. In light of the specification of present application (see paragraph 0023), Examiner interprets fluorine content to be associated only with the fluorine containing polymer and not the silicone polymer. Applicant is advised to recite it as “silicone polymer, or a fluorine-containing polymer having a fluorine content of 20 wt% or more”.
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.
Claims 1-5, 7, 10, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bussat et al (US 2008/0008657 A1).
Regarding claim 1, Bussat et al disclose a composition comprising gas-filled microvesicles (abstract) which reads on the core-shell microparticle in present claim 1. Gas-filled microvesicles can be any kind known in the art such as microcapsules (paragraph 0040). Gas filled microcapsules are those having a stabilizing envelope comprising a polymer (paragraph 0077). Non-biodegradable polymer can be selected from polyolefins, polyacrylates (paragraph 0080) which reads on fluorine-free vinyl polymers in present claim 1. Any biocompatible gas may be employed to fill the above microvesicles (paragraph 0092). Fluorinated gases such as perfluorinated hydrocarbons are preferred (paragraph 0094) which reads on core comprising fluorocarbon in present claim 1.
Regarding claims 2-3, in addition to 10a above, Bussat et al teach that examples of polymers of the injectable microcapsules include polaymides (paragraph 0079) which reads on shell polymer comprising a repeat unit -C(=O)-N(X,Y)- wherein X = hydrogen atom and Y = substituted alkylene in present claims 2 and 3.
Regarding claims 4 and 5, given that gas-filled microvesicle, of Bussat et al, comprises fluorocarbon and is encapsulated in fluorine-free vinyl polymer as in present claims, it is the Office’s position that the microvesicle, of Bussat et al, would inherently have a shape-change ratio after application of an acidic condition of 50% or less as in present claim 4, and a shape-change ratio after application of an alkaline condition of 50% or less as in present claim 5. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 7, examples of preferred fluorocarbons, in Bussat et al, include perfluorinated ethers such as perfluorodiethyl ether (paragraph 0094). It is noted that perfluorodiethyl ether has a molecular formula C4F10O and has a fluorine content of about 75% by mass.
Regarding claim 10, examples of preferred fluorocarbons, in Bussat et al, include perfluorinated ethers such as perfluorodiethyl ether (paragraph 0094) which reads on fluorocarbon containing perfluoroalkyl group in present claim 10. It is noted that perfluorodiethyl ether has a molecular formula C4F10O and has a molecular weight of about 254 g/mole.
Regarding claim 12, see Figure 1, wherein the diameter in less than 500 microns (i.e., reads on volume average particle diameter in present claim 12).
Regarding claim 13, Bussat teaches that thickness is dependent upon material forming the envelope and said thickness is at least 50 nm (paragraph 0077).
Regarding claim 14, examples of gases, in Bussat et al, include oxygen (paragraph 0093) which reads on core comprises oxygen in present claim 14.
Claims 1, 4-7, 10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshioka et al (US 6,337,089).
Regarding claims 1 and 6, Yoshioka et al disclose a microcapsule containing core material and a capsule wall (i.e., reads on core-shell microparticle in present claim 1. The capsule wall comprises organopolysiloxane (abstract). See example 8, wherein the microcapsule comprises core material of liquid perfluoroether (i.e., reads on fluorocarbon in present claim 1) having a capsule wall made of organopolysiloxane (bridging paragraph col. 41-42) which reads on the silicone polymer in present claims 1 and 6. Liquid perfluoorether used in example 8, includes Fomblin HC/R CF3[(OCF(CF3)CF2)n(OCF2)m]OCF3 wherein n/m = 20/40 (col. 42, lines 22-26) which reads on fluorocarbon in present claim 1.
Regarding claims 4-5, given that microcapsule, of Yoshioka et al, comprises fluorocarbon and is encapsulated in silicone polymer as in present claims, it is the Office’s position that the microcapsule, of Yoshioka et al, would inherently have a shape-change ratio after application of an acidic condition of 50% or less as in present claim 4, and a shape-change ratio after application of an alkaline condition of 50% or less as in present claim 5. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 7, it is noted that Fomblin HC/R represented by formula: CF3[(OCF(CF3)CF2)n(OCF2)m]OCF3 wherein n/m = 20/40, has a fluorine content of about 64% by mass (i.e., reads on fluorocarbon in the core has a fluorine content of 10 mass% or more in present claim 7).
Regarding claim 10, see example 8, of Yoshioka et al, wherein Fomblin HC/R represented by formula: CF3[(OCF(CF3)CF2)n(OCF2)m]OCF3 wherein n/m = 20/40 has a molecular weight of 6250 (col. 42, lines 22-27) which reads on fluorocarbon contains a perfluoroalkyl group and a fluoropolyether and has a weight average molecular weight of 50,000 or less in present claim 10.
Regarding claim 12, see example 8, wherein the capsule has a diameter from 5 to 10 microns (col. 42, lines 55-56) which reads on volume average particle diameter of 500 microns or less in present claim 12.
Claims 1, 4-5, 12 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roessling et al (US 2003/0157023).
Regarding claim 1, Roessling et al teach a gas-filled microcapsule that consist of functionalized polyalkylcyanoacrylates (abstract) which reads on the fluorine-free vinyl polymer in present claim 1. The microcapsules have a nucleus-shell structure (paragraph 0097) which reads on the core-shell microparticle in present claim 1. Gases that can be included in microcapsule by way of examples include perfluorohydrocarbons (paragraph 0120) which reads on fluorocarbon in present claim 1.
Regarding claims 4-5, given that microcapsule, of Roessling et al, comprises fluorocarbon and is encapsulated in fluorine-free vinyl polymer as in present claims, it is the Office’s position that the microcapsule, of Roessling et al, would inherently have a shape-change ratio after application of an acidic condition of 50% or less as in present claim 4, and a shape-change ratio after application of an alkaline condition of 50% or less as in present claim 5. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 12, see Table 1, wherein the microcapsule has a size of 1.25 microns (paragraph 0171) which reads on volume average particle diameter of 500 microns or less in present claim 12.
Regarding claim 14, Roessling et al teach that gases which can be included in microcapsule by way of examples include oxygen (paragraph 0120).
Regarding claim 15, Roessling et al teaches that the modulus of elasticity of the shell material is 1 to 2 * 106 N/m2 (paragraph 0173) which is equivalent to 1 to 2 MPa and reads on shell has an elastic modulus of 500 MPa or less of present claim 15.
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.
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 8-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshioka et al US 6,337,089) in view of tech data for Fomblin® (downloaded on 8/5/2026 - hereafter Fomblin® data).
Prior to setting forth the rejection, it is noted that date of publication for Fomblin® data is not available. However, Fomblin® data is only an evidence reference for boiling point and oxygen solubility. Case law holds that in certain circumstances, references cited to show a universal fact need not be available as prior art before applicant's filing date. See In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism (See MPEP §2124).
The discussion with respect to Yoshioka et al in paragraph 11 above is incorporated here by reference. Additionally, examples of fluorocarbon-like substances, in Yoshioka et al, include Fomblin HC/04, Fomblim HC/25 and Fomblin HC/R which are liquid perfluoro ethers (col. 16, lines 29-33).
Yoshioka are silent with respect to boiling point of fluorocarbon and oxygen solubility.
However, Fomblin® data states that Fomblins have high solubility of respiratory gases such as oxygen (page 2, last 2 lines). HC/04, HC/25 and HC/R have a very low vapor pressure of 10-3, 10-5 and 10-7 mm/Hg (Table in page 3). It is noted that vapor pressure and boiling points have an inverse relationship. Therefore, given that Fomblins, taught in Yoshioka et al, have high solubility of oxygen and exhibit low vapor pressure, one skilled in art prior to the filing of present application would have a reasonable basis to expect the fluorocarbons, of Yoshika et al, such as Fomblins, to exhibit a boiling point of 90 0C or more as in present claim 8 and boiling point of 150 0C or greater as in present claim 10, and oxygen solubility of 30 vol/vol% or more as in present claim 9, absent evidence to the contrary. Since, PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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