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 .
Continued Examination Under 37 CFR 1.114
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on 12/2/2026.
Amendments to claims are acknowledged. Claims 1, 3, 4, 7-10, 12-18 are pending.
Previous rejections of record were directed at 112 1st paragraph enablement rejections which are currently overcome. However, the amendment necessitated new 112 2ns paragraph rejections which will be issued in this rejection.
With respect to the priority, the instant invention is divisional of 16/959,283 now US Patent 11,884,757, which also claims priority to PCT/US 17/069167 as submitted in the parent application. Since PCT application is filed in English, applicant’s priority date is 12/31/2017.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 4, 7-10, 12-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claims 1, 17 and 18, applicants claim a copolymerization of first comomoner selected from one of dopamine methacrylamide, 3,4-dihydroxyphenylalanin or 3,4-dihydroxystyrene.
The second co-monomer comprising a pendant first functional group, wherein the second monomer is t-butyl acrylate, methacrylic acid or acrylic acid.
The recitation of the monomer is confusing because the monomer comprises first functional group, while being selected from acrylic ester and methacrylic acid. It is not clear what is the actual scope of the functional group of the second co-monomer, especially when option of three monomers is explicitly claims.
The claim further requires first additive which is a diol and having second and third functional groups. It is not clear as to what the second and functional group are on a diol other that hydroxy groups. Consequently the scope of the second and third functional groups is unclear.
It should also be noted that term ”neutral hydrogen bonding” is redundant because all hydrogen bonding is considered neutral.
All dependent claims inherit the deficiency of independent claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7, 8 and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With respect to claim 7, claim 7 comprises two option with respect to the functional group. In the first option where first functional group is carboxylic acid and second and third functional group is independently hydroxyl, urea, thiurea, guanidinium, amide, amine, carboxylic acid, and thiol.
The first additive is a diol. While hydroxy groups are obvious, it is not clear how a diol can include the remaining groups listed in option 1.
In the second option the first functional group is selected from hydroxyl, urea, thiurea, guanidinium, amide, amine, carboxylic acid, and thiol, while second and third functional groups are carboxylic acid.
First functional group as claimed in instant claim 1 belongs to the second comonomer which is selected from acrylic acid and a specific acrylic ester. As such the only functional groups present on co-monomer should be carboxylic acid or ester. Claim 1 also recites first additive which is a diol, wherein the only functional group on a diol is hydroxyl group.
Consequently claim 7 fails to narrow the embodiments of the instant claim 1.
With respect to claim 8, the description of the functional groups also has two options. While first option is consistent with the monomers of independent claim 1, the second option is not. In the second option first functional group is a hydroxyl group, while monomers are carboxylic acids. The second and third functional groups are claimed as carboxylic acids, wherein claim 1 discloses diol. Consequently, claim 8, with respect to the second option, fails to limit independent claim 1.
With respect to claim 14, the first functional group is selected from carboxylate, hydroxyl amide or amine, while independent claim 1 limits the co-monomer to acrylic acid and ester. As such, claim 14 fails to further limit independent claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1, 3, 4, 7-10, 12-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Instant independent claims directed to a method of making an adhesive wherein the method comprises steps of:
polymerization of two monomers wherein first monomers are selected from dopamine methacrylamide, 3,4-dihydroxyphenylaniline or 3,4-dihydroxy styrene and wherein co-monomers are selected from t-butyl acrylate, methacrylic acid or acrylic acid.
The copolymer is dissolved in first solvent
Diol is dissolved in second solvent (claim 18 requires specifically ethylene glycol)
Mixing the two solutions to form hydrogen bonding.
Claims 1 and 17 require further addition of metal ion to covalently interlink the polymer chains via ligan-metal-ligand bond.
The search conducted provided several refences, however they will not affect patentability of the claimed subject matter for following reasons:
First, the disclosures identified during search are applicants own invention, or
Second, the filing date of the prior art falls after the filing date of the applicants invention.
US 11, 130,886 filed by the applicants with effective filing date of 12/31/2017 discloses method of making biomimetic adhesive utilizing instantly claims monomers, however, the reference does not utilize diol as a second solution or metal ions as required by instant invention. The reference also cannot be utilized in the ODP rejection, because disclosed method claims do not include all instantly claimed steps.
US 10,982,121 to Chung was filed after applicant’s filing date. Additionally, the monomers are sulfonated and ethylene glycol is utilized in a form of diacrylate crosslinker.
US 2013/0189313 to Stewart is directed to an adhesive composition based on copolymers comprising acrylate modified with phosphate, acrylamide and wherein additionally polymerization included monomers such as dopamine methacrylamide and 3,4-hydoxyphenylalanine along with PEG-diacrylate [0070-0072]. The crosslinking is achieved by utilizing metal ions (ligand-metal-ligand) [0104]. Metals include Fe, Cu, Zn, Ni [0053]. The reference fails to teach ethylene glycol dissolution in second solvent and mixing the two solutions with each other.
Other references, for example US 2017/0123106 to Chien were not directed to the adhesives, but to ophthalmic lenses and modifying these reference to form an adhesive would constitute improper hindsight.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached 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, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 January 26, 2025