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 .
The previous prior art rejection under Torii (US 2006/0006368), Sookraj et al (US 201800155490) and Kamada et al (US 20160280849) maintained and therefore it is proper to make this rejection FINAL.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Torii (US 2006/0006368), cited in previous Office Action.
Claims 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sookraj et al (US
201800155490), cited in IDS.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kamada et al (US
20160280849), cited in IDS
Amendment to claim 1 is noted.
The added limitation represents product-by-process. Since Torii's, Kamada, Sookraj and Application’s polymers are identical, the process of Application’s polymer making is unpatentable (see MPEP 2113). The process of claim 1 does not convey any patentable distinct features to the product.
"Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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" In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See Also In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974), In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect the same properties from Torii's, Kamada, Sookraj and Application’s polymers unless unexpected results are demonstrated.
The rejection can be found in the NON-FINAL office action mailed 5/19/2026 and is herein incorporated by reference
Response to Arguments
Applicant's arguments filed 8/3/2026 have been fully considered but they are not persuasive.
Applicant submits that neither Torii nor Sookraj teaches lactide ring opening polymerization.
However, as discussed in the rejection above, independent claim 1 and dependent claims 2-7 drawn to a composition, while the limitation regarding ROP related to a process of making a polymer.
Applicant submits that in contrary to prior art patents sited by Examiner, the inventive polymer has excellent mechanical properties and good processability.
Examiner recommends that direct comparison of Applicant’s and cited prior references polymer properties can be provided in form of Declaration in order to demonstrate unexpected results.
Applicant submits that Kamada does not teach a claimed copolymer with structures including a branched poly(3-hydroxypropionic acid) and a poly(lactic acid).
However, Kamada discloses ring opening polymerization of variety monomers, which include both lactide and propiolactone (see Table 1-1-1 at 0308).
A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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