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 § 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.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over CN-107286313 to Jing et al.
As to claim 7, Jing discloses a method for preparing a polymer of the following formula:
PNG
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138
640
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Greyscale
PNG
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258
502
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Greyscale
by reacting polyethylene glycol with a molecular weight of 600 or 1,000 (0081, 0093) and polycaprolactone diol with a molecular weight of 2,276 (0079-0081) with hexamethylene diisocyanate, and 1,4-butanediol in a ratio of PEG:PCL of 2:8-8:2 (0012-0021) to obtain a polyurethane with a molecular weight of 80,000-120,000 (0021).
The content of PEG and PCL overlap the claimed range. It is well settled that where prior art describes components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05. In light of the cited patent case law, it would therefore have been obvious that in this particular instance to use more PEG that falls within the claimed range based on prior art presented that disclosed wherein the content of hydrophilic polyol (PEG) to biodegradable polyol (PCL) is selected to provide polyurethanes with a desired balance of properties relating to water absorption, degradation, porosity, and elasticity (0027).
Claims 1-4, 6-7, 13, 20-23, and 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2016/0015865 to Dolatkhani et al.
As to claims 1-4, 6-7, 13, 20-23, and 26-29, Dolatkhani discloses polymer compositions for application to ophthalmic injectors to provide slippery surfaces to the surface tip of the injectors (0012, 0019, 0034, 0074-0076) comprising hydrophilic and hydrophobic portions wherein the content of hydrophilic portion ranges from 60 to 99% by mass (0065) comprising the reaction of 400 grams of polyethylene glycol diol (M.W. of 6,000), 100 grams of polycaprolactone diol (M.W. of 1,250), and dicyclohexylmethane diisocyanate (Example 3). Dolatkhani discloses molar masses of the polymer of greater than 10,000 g/mol to 100,000 g/mol (0062). The polymer has a melting temperature range from 40 to 53°C (Example 3). The molar mass of the polyurethane overlaps the claimed range. At the time of filing it would have been obvious to maintain the molecular weight within the claimed range to limit their solubilization in the aqueous phase and to withstand the conditions of processing by injection moldings without chemical or structural degradation (0063).
Allowable Subject Matter
Claims 8-12, 17-19, and 24-25 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.
Conclusion
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763