DETAILED ACTION
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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-10) in the reply filed on 22 December 2025 is acknowledged. The traversal is on the ground(s) that there is no search burden shown. This is not found persuasive because search burden is not a requirement for restriction under 35 USC 121 and 372, as the standard is with respect to whether the inventions form a single inventive concept under PCT Rule 13.1. The requirement is still deemed proper and is therefore made FINAL. Claims 11-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yoo et al. (US Patent Application Publication 2018/0327554) in view of Gagnon et al. (US Patent Application Publication 2005/0101632).
Yoo et al. teaches preparing nanoparticles by irradiation of an aqueous solution of a polysaccharide and a polyethylene glycol (abstract). The result is inter- or intra-molecular crosslinking of these ingredients (id.). The nanoparticles can further comprise a drug (id.). Yoo et al. further clarifies that the term nanoparticle includes nanohydrogels, as the nanoparticles have hydrogel characteristics (paragraph [23 and 29]). And the polysaccharide can be hyaluronic acid (paragraph [31] & example 2).
Yoo further teaches that the nanoparticle can further have a drug encapsulated therein (paragraph [80]), and these can include anti-inflammatory agents (paragraph [81]).
Yoo et al. does not teach the inclusion of a silicone in the nanoparticles. However, this deficiency is remedied by Gagnon et al. Gagnon et al. discloses the use dimethicone as an agent to treat inflammation (abstract).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have included dimethicone (as taught by Gagnon et al.) as the anti-inflammatory agent in the composition disclosed by Yoo et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07.
Instant claims 2-4 and 9 further limit the steps for forming the crosslinking. Yoo et al. suggests using an electron beam irradiation at a dose of 5-250 kGy (claim 7), which also is embodied (example 1). These claims also recite a limitation to when the silicone is incorporated. The references do not expressly state this step. However, the agents are taught as included in the hydrogel nanoparticles, and the claims include the silicone in the hydrogel. Thus, structurally there does not appear to be a difference between the claimed product and the taught product. And the patent-ability of a product does not depend on its method of production, and if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
Instant claim 10 also recites a limitation to the process of preparing the product. And while the energy intensity is not taught by Yoo et al., the result (irradiation with an electron beam in order to crosslink) is the same as instantly recited.
Instant claims 5, 6, and 10 limit the process steps for preparing the hydrogel (such as the concentration. These claims are also drawn to the product itself, and thus the product suggested by the prior art has the same structural features and components as required by the instant claims. And the patent-ability of a product does not depend on its method of production, and if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
Instant claim 7 recites a limitation to the silicone, and the dimethicone reads upon the limitation.
Conclusion
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/Brian Gulledge/Primary Examiner, Art Unit 1699
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