DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-8) in the reply filed on 6/17/2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Sookraj (US 20180155490, US Patent Application #1 from IDS dated 12/3/2024).
Regarding Claims 1, 2, 4, and 8,
Sookraj teaches a polymer composed of β-propiolactone monomers and a polyol (Abstract). Sookraj also teaches that the polyol can be glycerol or a sugar alcohol such as sorbitol, xylitol (Paragraph 45), which would result in a structure where R is a sugar or glycerol, A is a direct bond, and where k is 3 or more, meeting the requirements of the instant claims. Sookraj also teaches that the polymer has a number average molecular weight of 500 to 250,000 g/mol (Paragraph 45) but most preferably less than 50,000 (Paragraph 46), which would include values of n of the range of the instant claim. One of ordinary skill in the art would recognize that polymer properties such as strength and toughness would be affected by the molecular weight of the polymer and would select a molecular weight that afforded the desired characteristics. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of the overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 3,
Sookraj teaches that polymer can be prepared by condensation polymerization of the corresponding lactone (Paragraph 45).
Regarding Claims 5 and 6,
Sookraj teaches that the polymer should have a number average molecular weight of 500 to 250,000 g/mol (Paragraph 45), but it is more preferred to be 20,000 or less (Paragraph 46), overlapping with the range requirement of claim 6. Further, while Sookraj is silent on the weight average and absolute molecular weight of the polymer, with a molecular weight value of less than 20,000 g/mol, a wide range of polydispersity values would give weight average molecular weight and absolute molecular weight within the range of the instant claims. One of ordinary skill in the art would select a molecular weight that afforded the desired material properties such as strength and toughness. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portions of the ranges because the selection of the overlapping portion of ranges has been held to be a prima facie case of obviousness.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sookraj (US 20180155490) as applied to claims 1-6 and 8 above, and as further evidenced by Odian (Principles of Polymerization Chapter 2).
Regarding Claim 7,
Sookraj is silent on the polydispersity of the polymer. However, the instant claim cites a very broad range of polydispersity values and the ordinarily skilled artisan would recognize that a step polymerization would trend towards a polydispersity value of 2 as evidenced by Odian (Page 82, Section 2-7b). As such, it would have been obvious prior to the effective filing date of the instant application to have a polymer with a polydispersity value within the range of the instant claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-8 of copending Application No. 18/385,794 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because in both cases, the claims are directed towards a poly(3-hydroxypropionic acid)polymer that is reacted with a polyol to form a branched copolymer. The branched polymer uses a polyol which can be a sugar alcohol such as xylitol, sorbitol, and cyclodextrin as well as others such as cholic acid and tetrahydroxyperylene. Both applications require the same molecular weight ranges and polydispersity indices and number of repeat units. As such, the reference application limitations include those of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sodergard (US 20080221265) teaches a hyperbranched polymer that can be synthesized using polyols such as sugar alcohols and monomers including β-propiolactone.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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