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 of Group I, claims 1-14 in the reply filed on 9/10/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). It is noted that applicant requests that the claims be rejoined if Group I is found allowable.
Claims 15-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/10/26.
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.
Claim 8-9 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.
As to claims 8 and 9, the content of the monomer is recited, however it is unclear whether the content is molar%, weight%, volume% or some other measurement.
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) 1-7 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,968,754 (herein Wong-2)
As to claims 1-7, Wong-2 discloses ABA triblock copolymers of blocks of hard A of styrene and vinylbenzocyclobutene (VBC) reading on the claimed formula wherein R1=R2=R3=hydrogen and blocks of butadiene with the remained the monomers of the A block (e.g. styrene) which are anionically polymerized. See col. 3, lines 29-65 and examples. Note that the B blocks are tapered, meaning that they comprise some styrene and VBC. See col. 3, lines 55-68. The block copolymers are elastomeric (col. 1, lines 55-68) that are crosslinkable (by heat). See examples. The copolymers are hydrogenated (thus are saturated). See col. 5, line 4 through col. 6, line 6.
Wong-2 teaches similar block copolymers. See examples. Wong-2 teaches that the B block may be tapered with 85% conjugated diene monomers and the remainder being monomers of the A block (e.g. vinyl aromatic hydrocarbons such as styrene and thermally crosslinking monomers such as vinylbenzobutene). See col. 3, lines 55-58. In other words, tapered blocks of B are interchangeable with the blocks of Wong.
As to the preamble “for forming elastic material used as foldable intraocular lens” is treated as a recitation of intended use, which the polymer is capable of performing since it is the same polymer. MPEP 2111.02 states that "if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction". Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the identical polymer would be capable of being used as a lens, since it is the same polymer.
As to claim 13, the number average molecular weight for the vpolymer are exemplified within the claimed range.
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) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,968,754 (herein Wong-2).
The discussion with respect to Wong-2 set-forth above is incorporated herein by reference.
As to claims 8-9, Wong-2 teaches that the tapered block comprises 85 mole% of conjugated diene (e.g. butadiene) with the remainder being monoalkenyl aromatic compound of block A (styrene, which would also include some thermally crosslinkable monomer vinylbenzocyclobutenesince it is present in block A). See col. 3, lines 45-65 of Wong-2. The vinylbenzocyclobutene is present in 0.1 to 10 mole% of block A. See col. 3, lines 1-25 of Wong-2. Therefore, the amounts of the monomers would be 85 mole% or more conjugated diene, about 15 mole% or less vinyl aromatic monomer and the remained (1.5 mole% or less) thermally crosslinking monomer. These amounts It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
Claim(s) 1-9 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 227124 (herein Wong) in view of US 4,968,754 (herein Wong-2).
As to claims 1-7, Wong discloses a polymer capable of forming an elastic material (see page 9 and examples) capable of thermal crosslinking (pages 2-3 and examples). The polymers are synthesized by anionic polymerization (page 7 and examples). The polymer is hydrogenated to be oxidative stable (see page 9 and examples) in order to remove the residual double bonds of the conjugated diene and to produce a saturated polymer.
The polymers are block copolymers of the structure below that read on the claimed structures (see page 10):
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149
478
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Note that Y=claimed formula symbol X, which is a residual of a coupling agent. See page 10.
The polymer A block is a monoalkenyl arene monomer unit block (e.g. styrene, thus reading on a hard block A) and a polymer block B is a conjugated diene block (e.g. butadiene, thus reading on soft block B). See page 9 and examples.
The A block comprises a thermally crosslinking monomer, specifically vinylbenzocyclobutene (VBC) of structure II shown below (see page 9) and reading on claimed formula, wherein R1=R2=R3=hydrogen.
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58
126
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Specific attention is drawn to the examples, such as example 9, which is a styrene butadiene styrene triblock copolymer have the structure A-B-A, wherein A comprises styrene units and VBC units and B comprises butadiene units. Wherein the triblock copolymer is hydrogenated. This reads on the claimed structure, wherein m=n=f=i=j=k=1.
Wong is silent on the B block being a copolymer of conjugated diene with vinyl aromatic hydrocarbon and thermally crosslinking monomer.
Wong-2 teaches similar block copolymers. See examples. Wong-2 teaches that the B block may be tapered with 85% conjugated diene monomers and the remainder being monomers of the A block (e.g. vinyl aromatic hydrocarbons such as styrene and thermally crosslinking monomers such as vinylbenzocyclobutene). See col. 3, lines 55-58. In other words, tapered blocks of B are interchangeable with the blocks of Wong.
It would have been obvious at the time of the invention to have modified the polymer of Wong with a tapered B block as suggested by Wong-2 to include monomer units of vinyl aromatic hydrocarbons (styrene) and thermally crosslinking monomers (vinylbenzocyclobutene) as suggested by Wong-2 because Wong-2 teaches that such blocks are suitable and interchangeable for the blocks. See col. 3, lines 55-58 of Wong-2.
As to the preamble “for forming elastic material used as foldable intraocular lens” is treated as a recitation of intended use, which the polymer is capable of performing since it is the same polymer. MPEP 2111.02 states that "if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction". Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the identical polymer would be capable of being used as a lens, since it is the same polymer.
As to claims 8-9, Wong-2 teaches that the tapered block comprises 85 mole% of conjugated diene (e.g. butadiene) with the remainder being monoalkenyl aromatic compound of block A (styrene, which would also include some thermally crosslinkable monomer vinylbenzocyclobutenesince it is present in block A). See col. 3, lines 45-65 of Wong-2. The vinylbenzocyclobutene is present in 0.1 to 10 mole% of block A. See col. 3, lines 1-25 of Wong-2. Also note that Wong discloses the same amounts of monomers. See page 10 of Wong. Therefore, the amounts of the monomers would be 85 mole% or more conjugated diene, about 15 mole% or less vinyl aromatic monomer and the remained (1.5 mole% or less) thermally crosslinking monomer. These amounts It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
As to claim 13, the number average molecular weight is taught to be about 57,000 g/mol (7500+42,000+7500). See examples in table 8. Also see the table on page 11 which gives a number average molecular weight of the blocks which fall within the claimed range for the molecular weight.
As to claim 14, the tensile strength (referred to as stress at break) is taught as above 10 MPa (e.g. 20.24 MPa) and the breaking elongation (% Elong at break) is taught as above 300% (e.g. 905%). See examples in table 8.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 227124 (herein Wong) in view of US 4,968,754 (herein Wong-2) and US 2003/0176582 (herein Bening).
The discussion with respect to Wong set-forth above is incorporated herein by reference.
As to claims 10-12, Wong is silent on the Tg of the B block.
Bening teaches similar block copolymers having A B A block structures. See abstract and examples. Bening teaches that the Tg of block B should be between -40 and 30 ° C in order to balance elasticity, strength, processing and flow characteristics. See paragraph 80 of Bening.
It would have been obvious at the time of the invention to have modified the polymer of Wong with a B block having a Tg between -40 and 30 ° C including a Tg within the claimed range as suggested by Bening because one would want to balance elasticity, strength, processing and flow characteristics of the polymers. See paragraph 80 of Bening.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,968,754 (herein Wong-2) in view of US 2003/0176582 (herein Bening).
The discussion with respect to Wong-2 set-forth above is incorporated herein by reference.
As to claims 10-12, Wong-2 is silent on the Tg of the B block.
Bening teaches similar block copolymers having A B A block structures. See abstract and examples. Bening teaches that the Tg of block B should be between -40 and 30 ° C in order to balance elasticity, strength, processing and flow characteristics. See paragraph 80 of Bening.
It would have been obvious at the time of the invention to have modified the polymer of Wong-2 with a B block having a Tg between -40 and 30 ° C including a Tg within the claimed range as suggested by Bening because one would want to balance elasticity, strength, processing and flow characteristics of the polymers. See paragraph 80 of Bening.
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 1-9 and 13-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-11 and 17 of copending Application No. 18/479,537 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 1-4, copending claim 1 anticipates the claim except for is silent on the preamble. As to the preamble “for forming elastic material used as foldable intraocular lens” is treated as a recitation of intended use, which the polymer is capable of performing since it is the same polymer. MPEP 2111.02 states that "if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction". Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the identical polymer would be capable of being used as a lens, since it is the same polymer.
As to claims 5-7, see copending claims 9-10.
As to claims 8-9, see copending claim 11.
As to claims 13-14, see copending claim 17.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/479,537 (reference application) in view of US 2003/0176582 (herein Bening). Although the claims at issue are not identical, they are not patentably distinct from each other. The discussion with respect to copending claim 1 set-forth above is incorporated herein by reference.
As to claims 10-12, the copending claims are silent on the Tg of the B block.
Bening teaches similar block copolymers having A B A block structures. See abstract and examples. Bening teaches that the Tg of block B should be between -40 and 30 ° C in order to balance elasticity, strength, processing and flow characteristics. See paragraph 80 of Bening.
It would have been obvious at the time of the invention to have modified the polymer of the copending claim 1 with a B block having a Tg between -40 and 30 ° C including a Tg within the claimed range as suggested by Bening because one would want to balance elasticity, strength, processing and flow characteristics of the polymers. See paragraph 80 of Bening.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
