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 .
Status of Claims
The examiner acknowledges the amendments to claims 1, 3, and 9-11. Claims 1-11 are pending.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18/288849, filed on 10/30/2023.
Claim Interpretation
Claim 3 is interpreted as a product-by-process claim, as the claim language is directed towards a compound but requires a method of making. As such, the patentability of the claim is determined solely on the basis of the product regardless of the method of making. See MPEP 2113.I.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 and 9-11 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 and 5,
Sookraj teaches a polymer composed of β-propiolactone monomers and a polyol (Abstract). As β-propiolactone is derived from 3-hydroxypropionic acid, it meets the requirements of the instant claim. Sookraj also teaches that the polyol can be a sugar alcohol such as sorbitol, xylitol (Paragraph 45), which would result in a structure where R is a sugar, A is a direct bond, and where k is more than 4, 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,
Claim 3 is being interpreted as a product-by-process claim as noted above. Sookraj teaches that polymer can be prepared by condensation polymerization of the corresponding lactone (Paragraph 45). While Sookraj utilizes β-propiolactone in the polymerization, the resulting polymer would be identical in structure to one in which 3-hydroxypropionic acid is used, the polymer of Sookraj meets the requirements of the instant claim.
Regarding Claim 4,
Sookraj is silent on the amount of polyol used. However, the ordinarily skilled artisan would recognize that the amount of polyol present would affect the amount of branching as well as the molecular weight of the resulting polymer. As a result, the amount of polyol would be a result-effective variable, as the amount of its inclusion would be determined on the basis of the desired molecular weight as well as the desired amount of branching in the polymer. It would therefore have been obvious prior to the effective filing date of the instant application to have used any amount of the polyol in the polymerization to have afforded the desired molecular weight and amount of branching in the final polymer.
Regarding Claims 6-7 and 9,
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 7. 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.
Regarding Claims 10-11,
Sookraj is silent on the value of the equation 1 for the polymer. However, as the polymer of Sookraj is comprised of the same components as those of the instant claims in an overlapping range of molecular weights and polydispersities, it would logically follow that these polymers would meet the requirements of the instant claims. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sookraj (US 20180155490) as applied to claim1-7 and 9-11 above, and as further evidenced by Odian (Principles of Polymerization Chapter 2).
Regarding Claim 8,
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 1-3 and 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/288849 (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. While the reference application requires that the number of reactive sites on the polyol be 3 or greater, this includes the range of the instant application of 4 or more and overlaps with the use of sugar alcohol polyols 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.
Claims 1-3, 5, and 6-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-7 and 9 of copending Application No. 18/866294 (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. While the reference application requires that the number of reactive sites on the polyol be 3 or greater, this includes the range of the instant application of 4 or more and overlaps with the use of sugar alcohol polyols 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 overlapping ranges of polydispersity indices. 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.
Response to Arguments
Applicant's arguments filed 8/3/2026 have been fully considered but they are not persuasive for the following reasons.
In regard to the applicant’s request that the provisional nonstatutory double patenting rejection(s) be held in abeyance, the examiner points out that this rejection cannot be held in abeyance and that only amending or canceling the conflicting claims or a terminal disclaimer can be used to remove this rejection. See MPEP 804.02.II.
On pages 5 and 6, the applicant argues that Sookraj does not teach a polymer that results from a 3-hydroxypropionic acid monomer and a multifunctional monomer. The examiner disagrees. Firstly, the language of claim 1 requires that the monomer be derived from 3-hydoxypropionic acid, which applies to β-propiolactone as it is simply a dehydration product of 3-hydroxypropionic acid and thus meets the claim limitation. Further, a polymerization of β-propiolactone and the multifunctional monomer would result in a polymer of identical structure to that of the instant invention. As such, the polymer taught by Sookraj would read upon the compound of claim 3.
On page 6, the applicant argues about the superior properties of the copolymer. The examiner notes that these properties would be directly tied to the polymer composition itself and that any polymer meeting the limitations of the claims would logically also possess these properties as well. Because of this, Sookraj would not be required to disclose them as they would logically follow the polymer.
In summary, the applicant argues that Sookraj does not teach the polymer of the instant claims simply because Sookraj employs β-propiolactone instead of 3-hydroxypropionic acid as the starting monomer. However, because these monomers are derivatives of one another, differing only in that β-propiolactone is a dehydrated form of 3-hydroxypropionic acid, the polymerization product (which is notably a dehydration reaction) of the two would by necessity be identical. Because the claims are directed toward the polymer itself, only the polymer can be used to determine the patentability and because an identical polymer would result regardless of which of the two forms was utilized, the applicant has not demonstrated that Sookraj does not teach the instant invention. As a result, the rejection is maintained.
Conclusion
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.
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.
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 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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/A.J.B./Examiner, Art Unit 1765
/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
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