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 .
Objections
1. The specification (including the abstract and claims), and any amendments for applications, except as provided for in 37 CFR 1.821 through 1.825, must have text written plainly and legibly either by a typewriter or machine printer in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6) in portrait orientation and presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition; and only a single column of text.
See 37 CFR 1.52(a) and (b). Note particularly 37 CFR 1.52(b), “(v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.”
The application papers are objected to because the formulas of the instant specification, page 2, formula (1), page 4, formula (1), page 5, formula (1), page 6, formula (1), page 8, formula (1), page 9, formula (4), page 10, formula (5), page 11, formula (7), and page 12, formula (9) are not fully legible. Many of the formulas appear to be pixilated such that they do not meet the requirements of 37 CFR 1.52(b). The noted formulas contain subscripts which are illegible. They therefore do not meet the requirements of 37 CFR 1.52(b).
A legible substitute specification in compliance with 37 CFR 1.52(a) and (b) and 1.125 is required.
Rejections
Claim Rejections - 35 USC § 112
1. 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.
2. Claims 1-5 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.
A. Formula (1) of claim 1 contains subscripts which are illegible. The scope of the formula is therefore not clear. Claims 2-5 depend from claim 1 and therefore contain this lack of clarity.
For examination purposes, any of the claimed variable values are taken as applying to the claimed subscripts which are particularly illegible.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/218220 Takashima et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted, in view of US Pat. Application Publication No. 2013/0172574 Ting et al.
Regarding claims 1-5:
Takashima discloses monomer mixtures containing monomers similar to that of formula (1) of the instant claim 1. See Takashima, paragraphs [0010], noting the monomer compositions containing phosphorylcholine group-containing polysiloxane monomer, and [0012], noting phosphorylcholine group-containing polysiloxane monomer of Chemical formula 1 and its similarity to that of formula (1) of the instant claim 1. Takashima’s phosphorylcholine group-containing polysiloxane monomer does not contain the oxysilane units having subscript c of the instant claim 1, formula (1).
Component (C) of Takashima, paragraph [0011], encompasses the instantly claimed component (B). The SIGMA exemplified by Takashima, paragraph [0072] falls within the scope of the instantly claimed formula (3) of component (B) of the instant claim 1. The amounts of component (C) of Takashima, paragraph [0011], encompasses the instantly claimed amounts of component (B) of the instant claim 1.
Component (E) of Takashima, paragraph [0011], encompasses the instantly claimed component (C). The amounts of component (E) of Takashima, paragraph [0011], encompasses the instantly claimed amounts of component (C) of the instant claim 1.
Component (B) of Takashima, paragraph [0011], encompasses the instantly claimed component (E). The amounts of component (B) of Takashima, paragraph [0011], fall within the scope of the instantly claimed amounts of component (E) of the instant claim 1.
The amounts of the components of Takashima above which fall within the scope of the above noted components of the instant claim 1 and the ratio of components (A) to (G) of Takashima, paragraph [0011] encompass amounts of Takashima’s component (A) which fall within the scope of the amounts of the instantly claimed component (A).
Takashima, paragraph [0023], discloses amounts of their component (A) that fall within the scope of the amounts of the instantly claimed component (A).
Takashima, paragraph [0039] discloses using other monomers, including methacrylic acid (Takashima, page 23, line 5). The amounts of Takashima, page 23, lines 12-15, particularly noting the lower amounts, includes the amounts of the instantly claimed component (D).
Takashima, paragraph [0041], discloses using solvents having a hydroxy group, noting the alcohols therein. Takashima, paragraph [0042], discloses using 30 parts by mass or less of the monomer components, which falls within the scope of the instant claim 2.
Takashima, paragraph [0047], discloses polymerizing their monomer compositions, which falls within the scope of the instant claim 3.
Takashima, paragraph [0059], discloses a contact lens comprising a hydrate of their polymer which falls within the scope of the instant claim 4.
Takashima, paragraph [0062], discloses purifying the polymer using a purification solvent before hydration treatment, which falls within the scope of the washing step of the instant claim 5. Takashima, paragraph [0062], discloses the purification solvents of the instant claim 5, noting the water and alcohols. The immersion step is the instantly claimed washing step. The resulting washed lens is placed in physiological saline, noting Takashima, paragraph [0064], which falls within the scope of the hydrating step of the instant claim 5.
Takashima does not disclose the same component (A) of the instant claims. Takashima does not disclose the instantly claimed component amounts with sufficient specificity to anticipate them.
Any additional monomers of Takashima are encompassed by the open language of the instant claims.
Ting, paragraphs [0015], noting the R1 variables on molecule II, and [0016]-[0026]. It is noted that Ting’s phosphoryl choline moiety of paragraph [0024] differs from that of the instant claims in that it contains the carbonyl group near the attachment point to the siloxane chain.
Ting, claim 11, defines R1 as a C1-C12 alkyl group. It is not stated that R1 must always be the same C1-C12 alkyl group. It is therefore taken that they may be different alkyl groups. Ting therefore encompasses the instantly claimed polysiloxane chain. It is noted that the polysiloxane chain of the instant claims is terminated at each end with a methacrylate group.
MPEP 2144.09 Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers) [R-01.2024], particularly “I. REJECTION BASED ON CLOSE STRUCTURAL SIMILARITY IS FOUNDED ON THE EXPECTATION THAT COMPOUNDS SIMILAR IN STRUCTURE WILL HAVE SIMILAR PROPERTIES
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." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (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. See also MPEP § 2144.08, subsection II.A.4.(c).”
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the instantly claimed component (A), formula (1), as the phosphorylcholine group-containing polysiloxane monomer of Takashima because it is structurally similar to the phosphorylcholine group-containing polysiloxane monomer of Takashima because the phosphorylcholine group-containing polysiloxane monomer of Takashima contains methyl groups rather than the instantly claimed alkyl group having 2 to 18 carbon atoms, structurally similar compounds are expected to have similar properties, particularly when the instantly claimed formula (1) has c=1 and R=ethyl, noting MPEP 2144.09, Ting shows that a polysiloxane backbone which includes the polysiloxane backbone of the instantly claimed formula (1) is useful in similar phosphorylcholine group-containing polysiloxane monomer which is useful in making contact lenses, and the monomer compositions and contact lenses made therewith which contain the phosphorylcholine group-containing polysiloxane monomer of Takashima would have been expected to have similar properties as the contact lenses of Takashima with a slight amount of the properties contributed to the contact lenses of Ting from the polysiloxane backbone of Ting which includes the polysiloxane backbone of the instantly claimed formula (1).
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the instantly claimed amounts of components (A) through (F) in the above discussed monomer mixtures of Takashima in view of Ting because such amounts are encompassed by Takashima and would have been expected to give the properties of the monomer mixtures and contact lenses of Takashima, including those properties explicitly discussed by Takashima and those properties inherent to the monomer mixtures and contact lenses of Takashima.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762