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 .
DETAILED ACTION
Claims 1-20 are pending in the application. Claims 1-5, 9-13, 16, 17 and 20 are rejected. Claims 6-8, 14, 15, 18 and 19 are withdrawn from further consideration.
Election/Restrictions
Applicant’s election without traverse of the species where R1 is polypropylene oxide and R2 is derived from MBCHA to prosecute the invention of Group I, claims 1-13, 16, 17 and 20, in the reply filed on June 18th, 2026 is acknowledged.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species appears allowable. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markush-type claim will be extended. If the examination is extended and a non-elected species found not allowable, the Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration. The examination of the Markush-type claims has been extended to include species found to be obvious under 35 USC 102 and 103 below.
As a non-elected species has been found not allowable, the Markush-type claims have been rejected and claims to the nonelected invention held withdrawn from further consideration. Claims 1-5, 9-13, 16, 17 and 20 embrace the elected species and are therefore under examination. Claims 1-5, 9-13, 16, 17 and 20 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since the nonelected species has been found not allowable, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Additional issues under 35 USC 112 not necessarily applicable to the elected species or expanded species were discovered incidental to the examination of the elected species and expanded species and are presented below in the interest of compact prosecution.
Claims 6-8, 14, 15, 18 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species or invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 18th, 2026.
Priority
This application is a 35 U.S.C. 371 National Stage Filing of International Application No. PCT/EP2022/054854, filed February 25th, 2022, which claims priority under 35 U.S.C. 119(a-d) to EP21159597.0, filed February 26th, 2021.
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement(s) filed on July 14th, 2023.
Claim Objections
In line 2 of claim 1, there appears to be an unnecessary “1” after the first instance of (PHU).
The phrase “than R1 is not” in claim 1 should be amended to recited “then R1 is not”.
The structures in claims 1 and 4 being provisioned should be amended to contain truncated bonds, e.g. a wavy line intersection the bond of attachment, to indicate the point of attachment to the remainders of the structure.
The term “polycylocarbonate” in claim 5 is missing a letter “c” after “y”.
The phrase “wherein X” in claim 9 should be amended to contain a lowercase “x”.
Claim Rejections - 35 USC § 112(b)
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 1-3, 9-13, 16, 17 and 20 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 1 is rejected as indefinite based on the limitation “C1-6-alkoxy alkyl having 1 to 6 carbon atoms” for R3 and R4 in claim 1. An alkoxy alkyl group would appear to require a minimum of two carbon atoms since a carbon atom must be the point of attachment and a carbon atom must be present in the alkoxy portion. It is unclear if the range is incorrect or if the term was only meant to refer to alkoxy groups. Dependent claims 2-3, 9-13, 16, 17 and 20 are rejected as indefinite for the same reason since they do not obviate the issue.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2 and 3 recite mixtures of the variable R1, which are not provided in claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 recites that R1 can be a bond between a cyclic carbonate that when applied to formula (1) would appear to require that R1 be a direct bond, which is outside the scope of claim 1. Furthermore, the structure of formula (2) provides for “x” to be an integer between 1 and 4 where only “x” being 1 would result in the 1,2-oxygen pattern required in the backbones of formula (1). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 recites a range of “m” without an upper limit; however, claim 4 recites that the hydrocarbon chain can only have up to 40 carbon atoms. The highest value of “m” within the scope of claim 4 would appear to be 19. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 recites that R1 can be a bond between a cyclic carbonate that when applied to formula (9) would appear to require that R1 be a direct bond, which is outside the scope of claim 1. Furthermore, the structure of formula (2) provides for “x” to be an integer between 1 and 4 where only “x” being 1 would result in the 1,2-oxygen pattern required in the backbones of formula (9). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 recites that formula (16) contains thiol groups directly bound to R8 whereas the backbone in claim 1 provides for intervening -CH2- groups. For instance, the scope where R8 is aryl or heteroaryl in claim 9 would not correspond to a backbone of claim 1 since the sulfur groups would not be directly bound to the ring. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 recites mixtures of the variable R1, which are not provided in parent claim 9. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 recites a thiol having -CH2- groups between each thiol and R8. Parent claim 9, however, recites that the thiols are directly bound to R8. Parent claim 9 therefore does not encompass thiols where R8 is aryl or heteroaryl linked to thiols via -CH2- or where a hydrocarbon chain between thiols is 61 or 52 carbon atoms. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 12 recites a range of “t” without an upper limit; however, claim 11 recites that the hydrocarbon chain can only have up to 60 carbon atoms. The highest value of “t” that falls within the scope of claim 11 would appear to be 29. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 recites a dithiol having -CH2- groups between each thiol and R8. Parent claim 9, however, recites that the thiols are directly bound to R8. Parent claim 9 therefore does not encompass thiols where R8 is aryl or heteroaryl linked to thiols via -CH2- or where a hydrocarbon chain between thiols is 61 or 52 carbon atoms. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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, 9-12 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gennen et al. European Polymer Journal 2016, 84, 849-862.
Gennen et al. teach (title) polyhydroxyurethane hydrogels that are (abstract) “promising (bio-) materials because of their biocompatibility,
biodegradation and excellent mechanical properties.” The authors further teach the following general field on page 849: “Hydrogels are three dimensional cross-linked hydrophilic polymer networks that absorb and retain from ten up to thousands of times their dry weight in water [1]. These characteristics make them very useful for cushioning (shock absorption, disposable diapers, plants watering, wastewater treatment, etc.) [2–5], medical devices (soft lenses, wound dressing, scaffolds for cell culture) [6–9] or therapeutic applications (stimuli responsive drug delivery systems) [10].” Regarding preparation, the prior art teaches the following procedure on page 855:
Chemically cross-linked PHUs were synthesized by solvent-free step-growth polymerization of the hydrophilic PEGdiCC with a diamine in the presence of tris(2-aminoethyl)amine (TAEA) as a cross-linker at 60 °C for 24 h. Precisely, 1 M equivalent PEGdiCC were mixed with 0.7 equivalents diamine and 0.2 equivalents TEAE in order to respect the stoichiometric ratio. mXDA was first chosen as a diamine because it was completely molten at this temperature and the presence of the aromatic structure was expected to lead to cross-linked PHUs with good mechanical properties.
The prior art further teaches preparation of gels in section 2.2.2 on page 851. The prior art teaches the following structure for PEGdiCC on page 854:
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212
402
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.
The compound above corresponds to formula (2) of instant claim 4 where y is 2, x is 1, R1 is a linear hydrocarbon chain having hydrocarbon groups replaced by heteroatoms. The structural definition of R1 is embraced by instant claims 1, 2, 3 (where R1 is polyethylene oxide), 4, 9-12 and 17 (where claims 9-12 and 17 only limit properties of formula (9) but do not require the PHU to actually be formula (9)). The prior art further teaches the following structure for amines used to prepare the polyhydroxyurethanes:
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160
440
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The two amines at right above correspond to instant formula (3) where z is 2, R2 is a linear hydrocarbon chain per se (for ODA) or having hydrocarbon groups replaced by heteroatoms (for EDDA), z is 2 and R5 and R6 are hydrogen. Furthermore, the presence of tris(2-aminoethyl)amine corresponds to another polyamine of formula (3) where z is 3, R2 is branched hydrocarbon chain having a hydrocarbon group replaced with a heteroatom and R5 and R6 are hydrogen. At least one of these structural definitions of R2 is embraced by instant claims 1-4, 9-12 and 17 (where claims 9-12 and 17 only limit properties of formula (9) but do not require the PHU to actually be formula (9)).
The prior art does not teach the explicit structure of the final products (corresponding to instant formula (1)) and does not explicitly refer to an “implantable medical device” thereof.
Regarding the structure of the polymers, the prior art teaches an analogous manner of preparation as recited in instant claim 4 using thermal polyaddition of a polycyclocarbonate and polyamine. Applicant is directed to MPEP 2112.01, which states: “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).” In this situation, the prior art teaches generation of a polyhydroxyurethane using reactants recited in the instant product-by-process claims. The structural depiction of claim 1 only appears to represent a structure where an amine adds to different carbon atoms of the cyclic carbonates for a single instance of polycyclocarbonate. There does not appear to be any requirement in claim 1 that each instance of a polymer backbone be identical.
Regarding the limitation of an implantable medical device, the instant specification defines the term as follows:
The term implantable medical device as used herein refers to all implantable foreign material for clinical use in host mammal such as for prosthetic joints, pacemakers, implantable cardioverter-defibrillators, catheters, such as intravascular or urinary catheters, stent including coronary stent, prosthetic heart valves, intraocular lens, dental implants, breast implants, endotracheal tubes, gastrostomy tubes and the like.
The exemplary types of devices are not considered limiting to claim 1 and the claim only appears to require the possibility of being implanted in a mammal, e.g. by requiring some level of form that could be handled such as the prior art gels, and that the material be foreign, where polyhydroxyurethanes are foreign material. At least since the prior art teaches the materials are generally biocompatible, the prior art is deemed to anticipate the instant claims since (at worst) the materials produced in the prior art could be implanted in a test mammal for the purpose of testing their toxicity.
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) 1, 4, 9-13 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eltayeb et al. Journal of Polymers and the Environment 2021, 29, 1880-1893 (published January 2nd, 2021) in view of Hahn et al. Polym. Int. 2012, 61, 1048-1060.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Eltayeb et al. teach polymers of the following general formula:
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582
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78
716
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The first two types of amines correspond to the variables of instant formula (1) where R1 is a substituted hydrocarbon chain where hydrocarbon groups are replaced by heteroatoms and a heteroaryl group, R2 is linear hydrocarbon (for HMDA) or linear hydrocarbon where two hydrocarbon groups are replaced by a cycloalkyl (for MBCHA), and R3 and R4 are hydrogen. These variable definitions are embraced by instant claims 1, 4 (where x is 1, y is 2 and z is 2), 9-12 and 17 (where claims 9-12 and 17 only limit properties of formula (9) but do not require the PHU to actually be formula (9)) The prior art further teaches in the abstract: “The result demonstrates the potential of this environmentally benign strategy to prepare high-performance bio-based NIPUs with interesting properties even for biomedical applications.”
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art teaches utility in biomedical applications but does not teach application specifically in an “implantable medical device”.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2141.02)
A person having ordinary skill in the art seeking to expand the study of Eltayeb et al. would have at least been motivated to test applications that have been previously applied or suggested for polyurethanes. For instance, Hahn et al. teach on page 1049: “In addition polyurethanes are also
widely used in varnishes, coatings and adhesives as well as for biomedical applications such as artificial heart valves and other implants.” Applying the two cited polyurethanes in such applications would result in implantable medical devices embraced by instant claims 1, 4, 9-12 and 13 (for the artificial heart valve taught by Hahn et al.).
Claim(s) 16 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eltayeb et al. Journal of Polymers and the Environment 2021, 29, 1880-1893 (published January 2nd, 2021) in view of Hahn et al. Polym. Int. 2012, 61, 1048-1060, as applied claims 1, 4, 9-13 and 17 above, and in further view of Wendels et al. Bioactive Materials 2021, 6, 1083-1106 (published October 2020).
The rejection under 35 USC 103 does not specifically involve the medical device containing a bioactive molecule or antibacterial agent. Wendels et al. provide a review of (title) “Biobased polyurethanes for biomedical applications”. The authors teach the following motivations for including bioactive compounds on page 1088: “This section is focused on the incorporation of active compounds directly into the PU backbone. With this approach, not only PUs access intrinsic antibacterial, anti-inflammatory [77] and/or antiplatelet adhesion properties [78], but in the case of implants, the bioactive compound can also be released during PU biodegradation, allowing a stable compound release over time [79].” Wendels et al. further teach modification of hydroxyl groups and chain terminators on page 1088: “Quaternary ammonium salts (QAS) are also proven to be bacterial adhesive inhibitors. Many chemical groups containing QAS with mono- or bi-functional end-groups such as hydroxyls [82–84] or amines [85,86] can be used to be further incorporated into the HS of PUs as chain extender or chain terminer [87–89].” Accordingly, a person having ordinary skill in the art seeking to optimize the polyhydroxyurethanes for biomedical applications would have been motivated to include an antibacterial agent, such as a QAS, either by modifying one or more hydroxy groups or through a chain terminator.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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/MATTHEW P COUGHLIN/ Primary Examiner, Art Unit 1626
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