DETAILED ACTION
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15, 17, 18, 20-22, 24-26, 30-36, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over DeSimone et al. (U.S. Pat. 6,107,443).
Regarding claim 1: DeSimone et al. teaches a method for forming a polymer comprising providing a diol/polyol, providing a dialkyl ester of dicarboxylic acid (col. 5 lines 45-67), the monomers are mixed (col. 2 lines 4-6) and a transesterification reaction is conducted to form a polyester (col. 5 lines 45-67). While additional, unclaimed monomers may also be present, before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping monomers of DeSimone et al. as the monomers of the polymer and would have been motivated to do so since DeSimone et al. teaches they are acceptable monomers to achieve the disclosed invention.
Regarding claim 2: DeSimone et al. teaches a diol (col. 5 lines 45-67).
Regarding claims 3, 4, and 5: DeSimone et al. teaches glycerol (example 16).
Regarding claims 6 and 7: DeSimone et al. teaches dimethyl sebacate (example 16), which has 7 carbon atoms in the dicarboxylic acid and is a dialkyl ester of sebacic acid.
Regarding claim 8: DeSimone et al. teaches a polymer made by glycerol and dimethyl sebacate and is therefore a poly(glycerol sebacate) (example 16).
Regarding claims 9-11: DeSimone et al. teaches the diol monomer has a 10 mol% excess to the dialkyl ester of the dicarboxylic acid monomer (col. 5 line 57-col. 6 line 10), which is about a 1:1 molar ratio. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping amount of monomers and would have been motivated to do so since DeSimone et al. teaches it is an acceptable amount to achieve the disclosed invention.
Regarding claim 12: DeSimone et al. teaches the reaction at 150-200 °C (col. 6 line 10). The boiling point of ethylene glycol is 197.3 °C, the boiling point of dimethyl sebacate is 158 °C and the boiling point of glycerol is 290 °C, and therefore there is overlap with liquid monomers.
Regarding claims 13 and 14: DeSimone et al. teaches a polyesterification catalyst such as dialkyltin oxide (col. 5 lines 20-25), which overlaps with dibutyl tin oxide.
Regarding claim 15: DeSimone et al. teaches the transesterification process liberates an alkanol (col. 5 lines 60-65).
Regarding claim 17: DeSimone et al. teaches first preparing a prepolymer and then further polymerizing to achieve a polyester (col. 7 lines 5-10) and is heated (col. 10 lines 50-55).
Regarding claim 18: DeSimone et al. teaches first preparing a prepolymer and then further polymerizing to achieve a polyester (col. 7 lines 5-10) and cured by a crosslinking agent (col. 9 lines 30-40).
Regarding claim 20: DeSimone et al. teaches forming a mixture before the onset of the reaction (col. 10 lines 44-50).
Regarding claim 21: DeSimone et al. teaches a continuous process of mixing reactants during the polymerization (col. 10 lines 30-35) meaning the mixture is formed at least partially simultaneously with the onset of the reaction.
Regarding claim 22: DeSimone et al. teaches the polymer can be formed with elastomeric monomers (example 14).
Regarding claim 24: DeSimone et al. teaches the polymer (example 16).
Regarding claim 25: DeSimone et al. teaches a polymer made by glycerol and dimethyl sebacate and is therefore a poly(glycerol sebacate) (example 16).
Regarding claim 26: DeSimone et al. teaches a polymer/article (example 16).
Regarding claims 30, 31, 36, and 38: DeSimone et al. teaches a copolymer/article with additional monomers such as ethylene glycol (col. 3 lines 35-40).
Regarding claims 32 and 33: DeSimone et al. teaches the amount of a comonomer is 1-7 mol% (example 12), which overlaps the claimed ranges.
Regarding claim 34: DeSimone et al. teaches introducing comonomer into the reaction vessel after the initial polymerization has begun (col. 10 lines 50-60).
Regarding claim 35: DeSimone et al. teaches ethylene glycol (col. 3 lines 35-40).
Claims 16, 23, 27-29, 37, and 39-41 are rejected under 35 U.S.C. 103 as being unpatentable over DeSimone et al. (U.S. Pat. 6,107,443) as applied to claims 1, 26, 36, and 38 as set forth above and in view of Chen et al. (Soft Matter, 2011, vol. 7, p. 6484-6492).
Regarding claim 16: DeSimone et al. teaches the basic claimed method, including monitoring the viscosity as the reaction progresses (col. 6 lines 25-30). DeSimone et al. does not teach monitoring the hydroxyl groups. However, Chen et al. teaches analyzing the hydroxyl group bonding to confirm formation of ester bonds (first column page 6486). DeSimone et al. and Chen et al. are analogous art since they are both concerned with the same field of endeavor, namely polyester copolymers. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to analyze the hydroxyl group bonding as in Chen et al. in the reaction of DeSimone et al. and would have been motivated to do so in order to confirm the formation of the ester bonds in the copolymer.
Regarding claims 23, 27, 28, 29: DeSimone et al. teaches the basic claimed method as set forth above. Not disclosed is if the polymer is biocompatible. However, Chen et al. teaches the polymer as a synthetic surgical sealant/adhesive (abstract), meaning it is biocompatible. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the copolymer as a surgical sealant as in Chen et al. and would have been motivated to do so since Chen et al. teaches it is an acceptable application for the copolymer. Since the mammalian tissue adhesive is disclosed, the particle is optional.
Regarding claim 37: DeSimone et al. teaches the basic claimed copolymer as set forth above. Not disclosed is the lactic acid copolymer. However, Chen et al. taches poly(glycerol sebacate)-co-lactic acid (title). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to add the lactic acid copolymer and would have been motivated to do so since Chen et al. teaches these copolymers can produce tissue adhesive/sealant.
Regarding claims 39, 40, 41: DeSimone et al. teaches the basic claimed method as set forth above. Not disclosed is if the polymer is biocompatible. However, Chen et al. teaches the polymer as a synthetic surgical sealant/adhesive (abstract), meaning it is biocompatible. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the copolymer as a surgical sealant as in Chen et al. and would have been motivated to do so since Chen et al. teaches it is an acceptable application for the copolymer. Since the mammalian tissue adhesive is disclosed, the particle is optional.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over DeSimone et al. (U.S. Pat. 6,107,443) as applied to claim 18 set forth above and in view of Behnken et al. (Macromolecules, 2008, vol. 41, p. 5651-5657).
Regarding claim 19: DeSimone et al. teaches the basic claimed method as set forth above. Not disclosed is the polyisocyanate crosslinking agent. However, Behnken et al. teaches a similar product with hexamethylene diisocyanate as a crosslinking agent (p. 5653, Cross-linking with diisocyanates). DeSimone et al. and Behnken et al. are analogous art since they are both concerned with the same field of endeavor, namely polyester condensation reactions. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the polyisocyanate of Behnken et al. for the crosslinker of DeSimone et al. and would have been motivated to do so to form polyurethane products.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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