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 Status
The Amendment filed on 24 July 2026 has been entered; claims 2-26 remain pending, of which claims 6-21 were previously withdrawn.
Response to Arguments
Applicant’s arguments, see Pages 12-15 of the Remarks with respect to the rejections of claims 2-5 under 35 USC 102(a)(1) over Vinu or Yin have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 25 and 26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. With respect to claim 25, the limitations that appear to lack support in Applicant’s Specification is “comprises polymerized residues of one or two additional monomers selected from the group consisting of….dimethylaminoethyl acrylate” (emphasis added). Applicant’s disclosure appears to only support one additional monomer (see original claim 2).
Regarding Claim 26, it is rejected for being dependent from claim 25.
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.
Claim 26 is 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.
With respect to claim 26, all polymers listed which contain only two monomers appear to be inconsistent with claim 25, which requires an additional monomer to the requirement of two monomers now recited in claim 2. Clarification is respectfully requested. For the purposes of examination, the Examiner will examine the claim as recited.
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.
Claims 2-5 and 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over Iftime et al. (U.S. Patent Publication # 2015/0126661), hereinafter “Iftime”.
With respect to claims 2-4 and 22, Iftime teaches a copolymer comprising N-isopropylacrylamide at 30 to 100% of the repeating units of the copolymer and a comonomer embodied as styrene, ethylmethacrylate, methylmethacrylate (MMA), butylmethacrylate (BMA), N,N-diethylaminoethyl methacrylate (DEAEMA), N-ethylacrylamide (NEAM), N-methylacrylamide (NMAM), N-n-propylacrylamide (NNPAM), N-t-butylacrylamide (NtBA), or N,N-dimethylacrylamide (DMAM) (Paragraph [0029]).
The above methacrylate comonomers meet the limitations of Formulas II and III when A or B = C=O; X2 or X3 = O; R11 = unsubstituted C1 alkyl, and R8 or R9 = unsubstituted aryl in the case of styrene; unsubstituted C2 alkyl in the case of ethylmethacrylate, unsubstituted C1 alkyl in the case of methylmethacrylate, unsubstituted C4 alkyl in the case of butylmethacrylate, substituted 2-amino ethyl in the case of N,N-diethylaminoethyl methacrylate.
The above (meth)acrylamide comonomers meet the limitations of Formulas II and III when A or B = C=O; X2 or X3= NH; R11 = unsubstituted C1 alkyl for methacrylamide monomers and H for acrylamide monomers, and R8 or R9 = unsubstituted C2 alkyl in the case of N-ethylacrylamide, unsubstituted C1 alkyl in the case of N-methylacrylamide, unsubstituted C3 alkyl in the case of N-n-propylacrylamide, unsubstituted C4 alkyl in the case of N-t-butylacrylamide, and N,N-dimethylacrylamide meets Formulas II or III when A or B = C=O; X2 or X3= NR15; R11 = H, and R8 or R9 and R15 = unsubstituted C1 alkyl.
Iftime teaches that the copolymer comprises N-isopropylacrylamide at from 30 to 100% of the repeating units of the copolymer (weight percentage), which overlaps “from about 50 wt% to about 99.8 wt%” as recited in claim 1 and “from about 60 wt% to about 95 wt%” as recited in claim 22.
Iftime and the claims differ in that Iftime does not teach the exact same proportions for the N-isopropylacrylamide monomer as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in weight percentage for the N-isopropylacrylamide monomer taught by Iftime overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Iftime, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
With respect to claim 5, since Iftime renders obvious a copolymer according to claim 2, it is submitted that the lower critical solution temperature range of "about 0°C to about 100°C" is met as an inherent property, especially in view of Paragraph [0065] of Iftime. Where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied upon. In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971).
With respect to claims 23 and 24, Iftime teaches that the copolymer comprises from greater than 0 wt% up to 70 wt% (see Paragraph [0029]) of the comonomers of Formulas II and III as discussed above, which overlaps “about 1 wt% to about 45wt%”, “about 5 wt% to about 40wt%”, and “about 10 wt% to about 30wt%”.
Iftime and the claims differ in that Iftime does not teach the exact same proportions for the comonomers as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in weight percentage for the comonomers taught by Iftime overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Iftime, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
With respect to claim 25, Iftime teaches that the other comonomer could also be (i.e., an “additional monomer”) a fluorinated alkyl acrylate or fluorinated alkyl methacrylate, such as hexafluoroisopropylmethacrylate (HFIPMA) or 2,2,3,3,4,4-hexafluorobutylmethacrylate (HFBMA), which fluorinated alkyl acrylate is genus to the species “dodecafluoroheptyl acrylate” and 2,2,2-trifluoroethyl acrylate (Paragraph [0029]), which is considered to render these limitations obvious due to chemical structure similarities. See In re Payne (A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.”) 606 F.2d 303, 203 USPQ 245 (CCPA 1979); In re Dillon (discussed below and in MPEP § 2144 for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds), 919 F.2 d 688, 16 USPQ2d 1897 (Fed. Circ. 1991). See MPEP § 2144.08. Case law holds that homologues (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).
With respect to claim 26, Iftime renders obvious the recited species “N-isopropylacrylamide (NIPAAm), 2,2,2-trifuoroethyl acrylate, and N,N-diethylaminoethyl methacrylate, which differs from dimethylaminoethyl acrylate by a methyl group. Case law holds that homologues (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).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bob Ramdhanie can be reached at (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 24 September 2026
