DETAILED ACTION
Claims 21, 24-36 and 38-40 are pending. Claims 21, 24-30, 36 and 38 are currently under examination.
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 .
Examiner’s Note
Applicant's amendments and arguments filed 03/05/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 03/06/2026, it is noted that claims 21, 24, 36 and 38 have been amended and no new matter or claims have been added.
Modified Rejections:
The following rejections are modified based on Applicant’s claim amendments.
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 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.
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.
Claim(s) 21, 24-25, 26-27, 29-30 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0108509 (previously applied) in view of Lee (previously applied) and Santoro (previously applied).
Regarding claims 21 and 36, the limitation of a composition comprising a first particle comprising chitosan derivatized with a multifunctional aldehyde and a second particle comprising a covalent crosslinking agent; wherein the composition is in the form of a powder is met by the ‘509 publication teaches a granular mixture of chitosan and polysaccharide particles (abstract, [0034]), thus meeting powder. The ‘509 publication teaches oxidized polysaccharides include chitosan (thus allowing chitosan to be crosslinked using its oxidized counterpart). Polysaccharide is taught to include dialdehyde content [0043]. Both chitosan and oxidized polysaccharide are obtained in dry particulate form [0044]. In addition to the ability to react with amide groups in the chitosan, aldehyde groups in the oxidized polysaccharide may also enhance mucoadhesion [0045]. Thus oxidized polysaccharide is taught as having dialdehyde groups thereon and is taught to react (crosslink) with chitosan.
The limitation of wherein the multifunctional aldehyde comprises a pendent aldehyde group is met by the ‘509 publication teaching dialdehyde content on the oxidized polysaccharide wherein the aldehyde group is available for reaction ([0043], [0045]).
Regarding claim 30, the limitation of wherein the first particles have a size ranging from 100 um to 500 um is met by the ‘509 publication teaching both chitosan and oxidized polysaccharide are obtained in dry particulate form, for example as free flowing granules such as less than about 1mm, less than about 100 um, about 1 to about 80 um [0044].
The ’509 publication does not specifically recite two or more functional groups (claim 27) in polymeric form (claim 26), comprising amine groups (claim 29, 36).
The ‘509 publication does not specifically teach the multifunctional aldehyde having a pendant aldehyde-terminated hydrophilic polymer group (claim 21) wherein the hydrophilic polymer comprises poly(ethylene glycol) (claim 24, claim 37) specifically poly(ethylene glycol) dialdehyde (claim 25).
Lee teaches the structure of chitosan polymer comprising multiple amine groups in polymer form (Figure 1).
Santoro teaches gelatin parameters, such as crosslinking density and isoelectric point, have been tuned in order to optimize gelatin degradation and drug delivery kinetics (abstract). Natural polymers are taught to include chitosan (page 1, first paragraph). Modification of gelatin is taught (page 3, second paragraph). The modification of gelatin with PEG, termed PEGylation is taught wherein PEG-dialdehyde is taught as a stie specific modification at primary amine groups of gelatins (page 3, third paragraph).
It must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of disclosed ingredients (for example, chitosan and dialdehyde oxidized polysaccharide such as chitosan) from within the prior art disclosure of the ‘509 publication, to arrive at the instantly claimed first and second particle composition “yielding no more than one would have expected from such an arrangement”.
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention the chitosan contains multiple amide groups as the ‘509 publication teaches chitosan polymer and Lee discloses the specific structure of chitosan which comprises multiple amine groups.
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use PEG-dialdehyde for chitosan modification as the ‘509 publication teaches dialdehyde modification of chitosan and Santoro teaches specifically PEG-dialdehyde. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use PEG-dialdehyde as taught by Santoro as the dialdehyde taught by the ‘509 publication because Santoro teaches a specific dialdehyde known to react with amine functional groups on natural polymers and the ‘509 publication teaches chitosan, a natural polymer, which as amine groups as taught by Lee.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0108509 in view of Lee and Santoro as applied to claims 21, 24-27, 29-30 and 36 above, and further in view of Perdih (previously applied).
As mentioned in the above 103(a) rejection, all of the limitations of claims 21, 24-27, 29-30 and 36 are taught by the combination of the ‘509 publication, Lee and Santoro.
The combination of references does not specifically teach the covalent crosslinking agent is a biocompatible hydrophilic polymer having terminal carboxylic acid groups (claim 28).
Perdih teaches chitosan graft poly(L-glutamate) copolymer having different lengths of poly (L-glutamate) grafts. The chitosan graft poly(L-glutamate) is used to form nanoparticle with a diameter of 200-300 nm (abstract). The structure of chitosan graft poly(L-glutamate) is:
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308
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(Figure 1).
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the chitosan graft poly(L-glutamate) copolymer taught by Perdih for the chitosan taught by the ‘509 publication because the ‘509 publication teaches the use of chitosan glutamate and Perdih teaches the specific formation and structure of a chitosan containing glutamate. One of ordinary skill in the art before the filing date of the claimed invention would have a reasonable expectation of success as the ‘509 publication and Perdih are both directed to chitosan glutamate. One of ordinary skill in the art before the filing date of the claimed invention would have a reasonable expectation of success as the ‘509 publication teaches embodiments of chitosan glutamate and desires carboxyl functional groups and Perdih teaches specific structure of chitosan glutamate containing COOH functional groups.
Claim(s) 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0108509 in view of Lee and Santoro as applied to claims 21, 24-27, 29-30 and 36 above, and further in view of US 2008/0095810.
As mentioned in the above 103(a) rejection, all of the limitations of claims 21-22, 26-27, 29-30 and 36 are taught by the combination of the ‘509 publication, Lee and Santoro.
The combination of references does not specifically teach wherein the aldehyde terminated hydrophilic polymer is approximately 2 monomers to 250 monomers in length (claim 38).
The ‘558 publication teaches monomer units comprising the chitosan used in obtaining the chitosan-PEG conjugates is between 30 and 3000 monomers, preferably 60 and 600 [0046] and the PEG polymerization degree is in the range of 50 to 500 [0048].
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use known chain lengths of PEG to be attached to chitosan as taught by the ‘558 publication because the ‘509 publication teaches chitosan and Santoro teaches dialdehyde PEG to be used for polymer modification. It would have been prima facie obvious to one of ordinary skill in the art to use known chain lengths of PEG to modify chitosan for the modified Chitosan dialdehyde PEG taught by the combination of the ‘509 publication and Santoro as the ‘558 publication teaches known chain lengths of PEG to be used to modify chitosan and teaches a range and thus an optimizable parameter. As MPEP 2144.05 recites “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine optimization”.
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 21, 24-27, 29 and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,786,596 in view of Santoro. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘596 patent and the instant application are both directed to powder compositions comprising chitosan modified with multifunctional aldehyde and a second particle comprising a crosslinking agents of an epoxy derivatized polymer. The instant claims differ in that they require the multifunctional aldehyde having pendant aldehyde-terminated hydrophilic polymer groups. Santoro teaches gelatin parameters, such as crosslinking density and isoelectric point, have been tuned in order to optimize gelatin degradation and drug delivery kinetics (abstract). Natural polymers are taught to include chitosan (page 1, first paragraph). Modification of gelatin is taught (page 3, second paragraph). The modification of gelatin with PEG, termed PEGylation is taught wherein PEG-dialdehyde is taught as a stie specific modification at primary amine groups of gelatins (page 3, third paragraph). It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the PEG-dialdehyde as taught by Santoro for the multifunctional aldehyde taught by the ‘596 patent as the Santoro teaches PEG-dialdehydes is taught as a specific modification of natural polymers such as gelatin and chitosan and the ‘596 publication teaches multifunctional modification of chitosan.
Claims 21, 24-27, 29 and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,701,448 in view of US 2012/0108509 and Santoro. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘448 patent and the instant application are both directed to powder compositions comprising chitosan modified with aldehyde and a second particle comprising a crosslinking agents of an epoxy derivatized polymer. The ‘448 patent does not specifically teach multifunctional aldehyde. The ‘509 publication teaches dialdehyde modification of chitosan ([0043],[0054]). Santoro teaches gelatin parameters, such as crosslinking density and isoelectric point, have been tuned in order to optimize gelatin degradation and drug delivery kinetics (abstract). Natural polymers are taught to include chitosan (page 1, first paragraph). Modification of gelatin is taught (page 3, second paragraph). The modification of gelatin with PEG, termed PEGylation is taught wherein PEG-dialdehyde is taught as a stie specific modification at primary amine groups of gelatins (page 3, third paragraph). It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use dialdehyde for the chitosan modification taught by the ‘448 patent because the ‘448 patent teaches aldehyde modified chitosan in a tissue treating composition and the ‘509 publication teaches dialdehyde used for a chitosan modification for a tissue treating composition. It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the PEG-dialdehyde as taught by Santoro for the multifunctional aldehyde taught by the ‘448 patent as the Santoro teaches PEG-dialdehydes is taught as a specific modification of natural polymers such as gelatin and chitosan and the ‘596 publication teaches multifunctional modification of chitosan.
Response to Arguments:
Applicant’s arguments have been fully considered and are not deemed to be persuasive.
103: the ‘509 publication (Hissong) in view of Lee, in further view of Perdih or Santoro or the ‘810 publication (Alonso)
Applicant argues oxidation of polysaccharide structure, e.g. oxidation of hydroxyl groups of chitosan, is not equivalent to chitosan derivation with hydrophilic polymers having pendant aldehyde groups. The ‘509 publication teaches oxidation using, for example, sodium periodate, hypochlorite ion in the present of di-tert-alkylnitroxy catalyst, metal etc. These would not add hydrophilic polymer groups. None of the other cited refences remedies the deficiencies of the ‘509 publication.
In response, the ‘509 publication teaches dialdehyde content on the oxidized polysaccharide wherein the aldehyde group is available for reaction ([0043], [0045]). Santoro teaches natural polymers are taught to include chitosan (page 1, first paragraph). Modification of gelatin is taught (page 3, second paragraph). The modification of gelatin with PEG, termed PEGylation is taught wherein PEG-dialdehyde is taught as a stie specific modification at primary amine groups of gelatins (page 3, third paragraph). It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use PEG-dialdehyde for chitosan modification as the ‘509 publication teaches dialdehyde modification of chitosan and Santoro teaches specifically PEG-dialdehyde. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use PEG-dialdehyde as taught by Santoro as the dialdehyde taught by the ‘509 publication because Santoro teaches a specific dialdehyde known to react with amine functional groups on natural polymers and the ‘509 publication teaches chitosan, a natural polymer, which as amine groups as taught by Lee.
Double Patenting:
Applicant argues neither the ‘596 patent nor the ‘448 patent recite first particle comprising chitosan derivatized with a multifunctional aldehyde, the multifunctional aldehyde having pendant aldehyde terminated hydrophilic polymer groups as recited in the present claims.
In response, Applicant is referred to the modified rejections above wherein Santoro teaches PEG-dialdehyde groups for modification. It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the PEG-dialdehyde as taught by Santoro for the multifunctional aldehyde taught by the ‘596 patent as the Santoro teaches PEG-dialdehydes is taught as a specific modification of natural polymers such as gelatin and chitosan and the ‘596 publication teaches multifunctional modification of chitosan.
Conclusion
No claims are allowed.
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.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDSEY MARIE BECKHARDT whose telephone number is (571)270-7676. The examiner can normally be reached Monday-Thursday 9am to 4pm and Friday 9am to 2pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDSEY M BECKHARDT/Examiner, Art Unit 1613
/BRIAN-YONG S KWON/Supervisory Patent Examiner, Art Unit 1613
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