DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5, 7-9, in the reply filed on 5/11/2026 is acknowledged.
Applicant’s election without traverse of Species modified norbornene functionalized polyethylene glycol macromer having an amide group, in the reply filed on 5/11/2026 is acknowledged.
Claims 11-14, 16-20, 22, 24-26, 33-35, 38, 40-41 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/11/2026.
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 5, 8-9 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.
Claim 5 states that there is a Formula 1 however the actual structure does not appear in the claims filed on 5/11/2026. Therefore, claim 5 is indefinite. For the purpose of this Office Action, the Formula 1 present in the claims filed on 8/7/2023 is presumed to be the correct formula that should have been present.
Claims 8-9 are indefinite because it depends from claim 6 which is cancelled.
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, 5, 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Travert-Branger, Langmuir 2008, 24, 3016-3019.
Travert-Branger teaches a process where norbornene dicarboxylic anhydride (nadic anhydride) is reacted with polyethylene glycol methyl ether in the presence of triethylamine (pg. 3016) to give a PEG-norbornene carboxylic acid
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(Scheme 2) followed by the reaction with dipalmitoyl-glycero-phosphoethanolamine (pg. 3016 and Scheme 2). This is a PEG functionalized with a norbornene where the carboxyl group on the norbornene has been conjugated with an amine containing molecule. Triethylamine meets the limitation of a nucleophilic catalyst. The PEG functionalized with a norbornene where the carboxyl group of Travert-Branger meets the formula 1 of claim 5. Travert-Branger teaches after amidation, the structure is
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(Scheme 2) which meets Formula 2 of claim 8.
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) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Travert-Branger, Langmuir 2008, 24, 3016-3019 in view of Lin (US 2014/0112960).
The discussion with respect to Travert-Branger above is hereby incorporated by reference.
Travert-Branger does not explicitly recite the PEG is a multiarm PEG.
Lin teaches norbornene modified PEG where the PEG is a 4 arm PEG (Fig. 13, ¶ 102-104, 179). It would have been obvious to one of ordinary skill in the art to use a multi-arm PEG because it allows for a highly tunable composition and a high elastic modulus (¶ 165).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Travert-Branger, Langmuir 2008, 24, 3016-3019 in view of Tew (US 2009/0082524).
The discussion with respect to Travert-Branger above is hereby incorporated by reference.
Travert-Branger does not explicitly recite the catalyst is dimethylaminopyridine.
However, Tew teaches functionalizing norbornene anhydride with PEG (Fig. 1) using dimethylaminopyridine as a catalyst (¶ 150). It would have been obvious to one of ordinary skill in the art to use dimethylaminopyridine as a catalyst in order to improve the yield to 90% (¶ 150).
Allowable Subject Matter
Claims 7 and 9 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 and to overcome any indefinite issues.
Claim 7 recites the amine containing molecule is dihydroxyphenethylamine, tyramine, isopropylamine or combinations thereof. Claim 9 recites that X (in Formula 2) is selected from the group of Formula 3-7.
Travert-Branger teaches an amine containing a phosphorous atom which is not in the scope of claims 7 and 9. Travert-Branger does not provide any motivation for using a different amine.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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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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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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