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
Election/Restrictions
The applicant has elected Species Ia (claims 1-2, 4-5, and 8-10) with indicating traverse, and no argument has been submitted. Applicant’s election in the reply is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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(s) 1-2, 4-5, and 8-10 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by KIM HYUNG MO et al. (KR1020210147332, listed on IDS).
As to claims 1-2, 4-5, and 8-10, KIM HYUNG MO (claims, abs., Ex.1) discloses a composition comprising a biodegradable polyester having a Mn of 50k that meets the range of instant pgpub [0263] and a monomer ratio of 1,4-butanediol// adipic acid/ dimethylterephthalate (1.4//0.5/0.5) meets the range of instant pgpub [0063] and the monomers of instant pgpub [0052-60] and [0081-83].
KIM HYUNG MO is silent on the claimed properties of hydrolysis degree, weight swelling rates measured in ethanol, water contact angle, and polarity of instant claims 1-2, 4-5, and 8-10. The polyester would inherently exhibit the aforementioned properties, because in view of the substantially identical composition (in this case, the disclosed polymer/monomer structures, monomer molar ratio, biodegradability, and Mn), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Claim(s) 1-2, 4-5, and 8-10 is(are) rejected under 35 U.S.C. 102(a)(2) as being anticipated by KIM HYUNG MO et al. (US 20210380757, listed on IDS).
As to claims 1-2, 4-5, and 8-10, KIM HYUNG MO (claims, abs., Ex.1) discloses a composition comprising a biodegradable polyester having a Mn of 50k that meets the range of instant pgpub [0263] and a monomer ratio of 1,4-butanediol// adipic acid/ dimethylterephthalate (1.4//0.5/0.5) meets the range of instant pgpub [0063] and the monomers of instant pgpub [0052-60] and [0081-83].
KIM HYUNG MO is silent on the claimed properties of hydrolysis degree, weight swelling rates measured in ethanol, water contact angle, and polarity of instant claims 1-2, 4-5, and 8-10. The claimed properties are met by the same rationale of above ¶1.
Claim(s) 1-2, 4-5, and 8-10 is(are) rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ryu et al. (US 20220389154, listed on IDS).
As to claims 1-2, 4-5, and 8-10, Ryu (claims, abs., Ex.1) discloses a composition comprising a biodegradable polyester having a Mn of 50k that meets the range of instant pgpub [0263] and a monomer ratio of 1,4-butanediol//adipic acid/ terephthalic acid (1//0.48/0.52) meets the range of instant pgpub [0063] and the monomers of instant pgpub [0052-60] and [0081-83].
Ryu is silent on the claimed properties of hydrolysis degree, weight swelling rates measured in ethanol, water contact angle, and polarity of instant claims 1-2, 4-5, and 8-10. The claimed properties are met by the same rationale of above ¶1.
Claim(s) 1-2, 4-5, and 8-10 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kang et al. (US20150183927, listed on IDS).
As to claims 1-2, 4-5, and 8-10, Kang (claims, abs., 90, Ex.1) discloses a composition comprising a biodegradable polyester having an intrinsic viscosity of 120-200 cm3/g (1.2-2 dl/g, an index of Mn or Mw) that meets the range of instant pgpub [0188] and a monomer ratio of 1,4-butanediol// adipic acid/ terephthalic acid (1.3//0.52/0.48) meets the range instant pgpub [0063] and the monomers of instant pgpub [0052-60] and [0081-83].
Kang is silent on the claimed properties of hydrolysis degree, weight swelling rates measured in ethanol, water contact angle, and polarity of instant claims 1-2, 4-5, and 8-10. The claimed properties are met by the same rationale of above ¶1.
Claim(s) 1-2, 4-5, and 8-10 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuan et al. (CN102311618, listed on IDS).
As to claims 1-2, 4-5, and 8-10, Yuan (claims, abs., Ex.2) discloses a composition comprising a biodegradable polyester having a Mn of 54390 that meets the range of instant pgpub [0263] and a monomer ratio of 1,4-butanediol// adipic acid/ dimethylterephthalate (320kg//175kg/130kg=1.42//0.58/0.42 in mols by calculation) meets the range instant pgpub [0063] and the monomers of instant pgpub [0052-60] and [0081-83].
Yuan is silent on the claimed properties of hydrolysis degree, weight swelling rates measured in ethanol, water contact angle, and polarity of instant claims 1-2, 4-5, and 8-10. The claimed properties are met by the same rationale of above ¶1.
Claim(s) 1-2, 4-5, and 8-10 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu et al. (Chinese Journal of Chemistry, 2007, 25, 1581-1583).
As to claims 1-2, 4-5, and 8-10, Zhu (abs., Preparation of copolyesters, Table 1) discloses a composition comprising a polyester having a Mn of 3.57-4.68k that meets the range of instant pgpub [0263] and a monomer ratio of 1,4-butanediol// adipic acid/ dimethylterephthalate (1.04/04/0.4=1.3//0.5/0.5) meets the range instant pgpub [0063] and the monomers of instant pgpub [0052-60] and [0081-83].
Zhu is silent on the claimed properties of biodegradability, hydrolysis degree, weight swelling rates measured in ethanol, water contact angle, and polarity of instant claims 1-2, 4-5, and 8-10. The claimed properties are met by the same rationale of above ¶1.
Claim(s) 1-2, 4-5, and 8-10 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alidedeoglu et al. (US 20130018130).
As to claims 1-2, 4-5, and 8-10, Alidedeoglu (claims, abs., Table 1-2, Ex.1) discloses a composition comprising a biodegradable polyester having a Mn of 3.2k that meets the range of instant pgpub [0263] and a monomer ratio of 1,4-butanediol// adipic acid/ terephtahtlic acid (58g//36.5g/36.5g=1.28//0.5/0.5 in mols by calculation) meets the range instant pgpub [0063] and the monomers of instant pgpub [0052-60] and [0081-83].
Alidedeoglu is silent on the claimed properties of hydrolysis degree, weight swelling rates measured in ethanol, water contact angle, and polarity of instant claims 1-2, 4-5, and 8-10. The claimed properties are met by the same rationale of above ¶1.
Claim Rejections - 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim(s) 1-2, 4-5, and 8-10 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 12 of copending Application No. 18/320220. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
‘220 (claims 1 and 12) meets instant claims 1-2, 4-5, and 8-10 in an anticipatory manner, because it discloses a composition comprising a biodegradable polyester having the claimed degree of hydrolysis:
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using the claimed method. The polyester:
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meets the polyesters of instant pgpub [0081-83] and [0052-63]. ‘220 is silent on the claimed weight swelling rates measured in ethanol, water contact angle, and polarity of instant claims 1-2, 4-5, and 9-10. However, one ordinary skill in the art would have expected the polyester of ‘220 to feature the same aforementioned properties, because ‘220obviously satisfy all of the material and chemical limitations (polymer/monomer structures, monomer molar ratio, biodegradability, and hydrolysis degree) of the instant invention-see MPEP 2112.01
Claim(s) 1-2, 4-5, and 8-10 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of US 12098242.
‘242 (claim 1) meets instant claims 1-2, 4-5, and 8-10 in an anticipatory manner, because it discloses a composition comprising a biodegradable polyester:
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The disclosed Mn and monomer ratio of 1,4-butanediol// adipic acid/ terephtahtlic acid or dimethyl terephthalate meet those of instant [0263], [0063] , [0052-60], and [0081-83].
The claimed properties are met by the same rationale of above ¶8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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