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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-11) in the reply filed on August 21, 2026 is acknowledged. The traversal is on the ground(s) that both the plasticizer of Invention I and Invention III have the same structure represented by Formula (I). This is not found persuasive because most notably, the plasticizer of Invention I does not have to be branched whereas the plasticizer of Invention III has a branched structure. As presently claimed, the two inventions require different search strategies. Claims 12-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 1-3 and 6-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klasson et al (WO 2019/172835).
Regarding claim 1, Klasson teaches the following structure:
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96
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(page 60, structure I-34a)
Which reads on the claimed Formula (1) where Xc and Yc are both 6.
While Klasson does not explicitly teach that the compound is a plasticizer, it is noted that it is the exact same compound as presently recited and would inherently have the recited plasticizing and biodegradability characteristics.
Regarding claims 2-3, Klasson teaches that the side chain structures are saturated and branched hydrocarbon chain structure.
Regarding claim 6, the structure as taught by Klasson has a molecular weight of 301 g/mol.
Regarding claims 7-10, given that the structure as taught by Klasson is the same composition as recited in the applicant’s Table 3A, it is noted that it would have the same properties as that composition. Therefore, the Pt is of the Klasson composition is 200 C, Dr14 is 12.06, Dr35 is 43.38 and Dr180 is 93.16 which satisfies the recited claims.
Regarding claim 11, given that the structure as taught by Klasson is the same composition as recited in the applicant’s Table 3A, it is noted that it would have the same properties as that composition. Therefore, the cell viability is 81.90% at 0.3mM concentration which satisfies the recited claims.
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.
Claim(s) 1 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (EP 3 825 354).
Regarding claims 1 and 4-5, Chen teaches a plasticizer which is biodegradable (Abstract) which can have at its central moiety an aspartate amino acid ([0021]) and have side chains from 1 to 20 carbon atoms ([0027]). There can be two side chains and they can be different as evidenced by the examples. The side can have a polar group such as a hydroxyl group ([0033]).
Chen fails to specifically exemplify the recited compound. However, it discloses each of the components of the compound and teaches that they are all suitable for use in the plasticizer. It is within the ordinary level of skill in the art to make any of the plasticizers as suggested by a reference, including selecting materials from a list in a reference. Therefore, a person of ordinary skill would have been motivated to prepare any of the compounds suggested by Chen, including the claimed plasticizer. In view of this, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to use the teachings of Chen to arrive at the presently claimed invention. It would have been nothing more than using known compounds in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. 418, 82 USPQ2d 1385 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
