DETAILED CORRESPONDENCE
This Office action is in response to the amendment received June 17, 2026.
Claims 13-23 objected to because they depended from canceled claims is now withdrawn in view of the amendment canceling claims 12-23.
Any bolded text is new language to the Office action.
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 1, and 6-11 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.
The amendment to claim 1 now recites a number average molecular weight of the silicone chain within a range of 2,000 to 10,000, however this limitation is indefinite with respect to formula (1) wherein the variable n is within a range of 10 to 250. At the lower values of n=10, the silicone chain would not meet the new amendment for the number-average molecular weight.
Claim 1 is further indefinite for the variables L11 and L12 which are now defined as “are each”
Correction to the claim is necessary for a consistent and indefinite scope and for defined groups for L11 and L12 .
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1, and 6-11 are rejected under 35 U.S.C. I02 (a) (1) as being anticipated by McCABE et al (9,958,577).
The claimed invention now recites the following:
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568
690
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696
688
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McCABE et al report a polymer for contact lenses wherein the polymer is hydrogel of the components listed Table 7, Examples 44-47 and Table 8, Examples 48 and 51, see below:
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332
368
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556
394
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acPDMS is listed in col. 22, line 55 shown below:
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34
366
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With the following structure from col. 7/8, lines 18-29 shown here:
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158
610
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The Examples lack a n-value which would place the silicon chain in the claimed number average molecular weight now claimed within 2,000 to 10,000.
The Examples disclose reaction mixtures made using the formulation of the components listed in the Tables.
The reaction product would give a compound/polymer having a polymer block from the presence the monomer listed as acPDMS above.
Claims 5-23 are met by the polymer above wherein the preambles to the compound, leveling agent, coating composition, article, and resist composition are not seen to have patent weight wherein the polymer in McCABE et al meets those claims for the compound/polymers having a polymer block of formula (1) with any of (2-1), (2-2) or (2-3).
None of the claims are allowed.
The amendment and arguments have been carefully considered; however, the rejection is repeated based on the indefiniteness of claim 1 under 35 U.S.C. 112 (b) as state above. The recited number average molecular weight fails to match with the range of variable “n” recited.
Claim(s) 1, and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over MCCABE et al (9,958,577).
The claimed invention has been recited above and is included by reference.
MCCABE et al has been discussed for the anticipatory nature of their disclosure, however, they lack a working example which would disclose a silicon chain in the claimed number average molecular range of 2,000 to 10,000.
Applicants are directed to column 6, lines 13-30 wherein the variable “n” is between 3 and 35. This silicone chain would fall within the claimed range for the claimed number average molecular weight, see the disclosure below:
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708
369
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Applicants are further directed to Table 4 in column 26, lines 16-34 wherein n=20 on the acPDMS monomer, which also would fall within the claimed Mn range see below:
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364
376
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If the skilled artisan selects the use of n=20 from Table 4 above, the following approximate Mn is calculated:
At n=20 the number average molecular weight would be approximately 2230, see below:
C: 12x20=240
H: 1x34=34
Si: 28x1=28
O: 16x28=448
-O-Si-CH3-CH3: (16+28+15+15) x 20= 2590
C + H + Si + O + (repeat unit -O-Si-CH3-CH3 ) x 35=1480,
240+34+28+448+1480=2,230
If the skilled artisan selects the use of n=35 from col. 6, lines 13-30 above, the following approximate MN is calculated:
At n=35 the number average molecular weight would be approximately 3340, see below:
C: 12x20=240
H: 1x34=34
Si: 28x1=28
O: 16x28=448
-O-Si-CH3-CH3: (16+28+15+15) x 35= 2590
C + H + Si + O + (repeat unit -O-Si-CH3-CH3 ) x 35=3340,
240+34+28+448+2590=3340.
Thus, it would have been prima facie obvious to one of ordinary skill in the art of silicone chains disclosed by MCCABE et al to select a range of repeating units such as n=20 or n=35 in the formula for TRS2-HOEOP2 from column 25/26 or Table 4 and arrive at the claimed number average molecular weight between 2,000 and 10,000 with the reasonable expectation of same or similar results for silicone hydrogels with improved wettability.
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 JOHN S. CHU whose telephone number is (571)272-1329. The examiner can normally be reached on M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached at telephone number 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
August 18, 2026
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