DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 06/05/2026.
3. Claims 1-2, 4-22 are pending. Claims 1-2, 4-8, 22 are under examination on the merits. Claims 1, 4-5, 7 are amended. Claim 22 is newly added. Claims 3 is previously cancelled. Claims 9-21 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1-2, 4-8, 22 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Double Patenting
6. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
7 A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
8. Claims 1, 4-5, 7-8, 22 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 10, 12-14 of US Patent Application No. 11,802,211 B2 (reference application, herein after “‘211”). ‘211 discloses a polymeric dye comprising: one or more rhodamine fluorophores selected from the group consisting of
,
PNG
media_image1.png
200
400
media_image1.png
Greyscale
,
PNG
media_image2.png
200
400
media_image2.png
Greyscale
,
PNG
media_image3.png
200
400
media_image3.png
Greyscale
,
PNG
media_image4.png
200
400
media_image4.png
Greyscale
,
PNG
media_image5.png
200
400
media_image5.png
Greyscale
, and
PNG
media_image6.png
200
400
media_image6.png
Greyscale
; and covalently bonded to the one or more rhodamine fluorophores, a polymer, wherein the polymer is a polysiloxane composed of monomers A and B, optionally of monomer D, and two termini selected from the group consisting of -OR4 and R4, wherein: A has the structure -Si(R1)(R2)O-, B has the structure -Si(R3)(L)O-, and D has the structure -Si(R15)(R16)O-; R1, R2, R3, and R15 are each independently selected from the group consisting of C1-6 alkyl and C6-10 aryl; L is a linker selected from the group consisting of -(CH2)mNHC(=O)-, -(CH2)mNHC(=O)NH-, -(CH2)mNHC(=S)NH-, -(CH2)mNHS(O2)-, -(CH2)mNHC(=O)O-, -(CH2)mOC(=O)-, -(CH2)mNHC(=O)(CH2)nNHC(=O)-, -(CH2)mNHC(=O)(CH2)nNHC(=O)NH-, -(CH2)mNHC(=O)(CH2)nNHC(=S)NH-, -(CH2)mNHC(=O)(CH2)nNHS(O2)-, -(CH2)mNHC(=O)(CH2)nNHC(=O)O-, -(CH2)mNHC(=O)(CH2)nC(=O)O- -(CH2)mC(=O)NH(CH2)nNHC(=O)-, -(CH2)mC(=O)NH(CH2)nNHC(=O)NH-, -(CH2)mC(=O)NH(CH2)nNHC(=S)NH-, -(CH2)mC(=O)NH(CH2)nNHS(O2)-, -(CH2)mC(=O)NH(CH2)nNHC(=O)O-, -(CH2)mC(=O)NH(CH2)nC(=O)O-, -(CH2)mOC(=O)(CH2)nNHC(=O)-, -(CH2)mOC(=O)(CH2)nNHC(=O)NH-, -(CH2)mOC(=O)(CH2)nNHC(=S)NH-, -(CH2)mOC(=O)(CH2)nNHS(O2)-, -(CH2)mOC(=O)(CH2)nNHC(=O)O-, -(CH2)mOC(=O)(CH2)nC(=O)O-, -(CH2)mC(=O)O(CH2)nNHC(=O)-, -(CH2)mC(=O)O(CH2)nNHC(=O)NH-, -(CH2)mC(=O)O(CH2)nNHC(=S)NH-, -(CH2)mC(=O)O(CH2)nNHS(O2)-, -(CH2)mC(=O)O(CH2)nNHC(=O)O-, -(CH2)mC(=O)O(CH2)nC(=O)O-, -(CH2)mNHC(=O)O(CH2)nNHC(=O)-, -(CH2)mNHC(=O)O(CH2)nNHC(=O)NH-, -(CH2)mNHC(=O)O(CH2)nNHC(=S)NH-, -(CH2)mNHC(=O)O(CH2)nNHS(O2)-, -(CH2)mNHC(=O)O(CH2)nNHC(=O)O-, -(CH2)mNHC(=O)O(CH2)nC(=O)O-, -(CH2)mOC(=O)NH(CH2)nNHC(=O)-, -(CH2)mOC(=O)NH(CH2)nNHC(=O)NH-, -(CH2)mOC(=O)NH(CH2)nNHC(=S)NH-, -(CH2)mOC(=O)NH(CH2)nNHS(O2)-, -(CH2)mOC(=O)NH(CH2)nNHC(=O)O-, -(CH2)mOC(=O)NH(CH2)nC(=O)O-, -(CH2)mS(CH2)nNHC(=O)-, -(CH2)mS(CH2)nNHC(=O)NH-, -(CH2)mS(CH2)nNHC(=S)NH-, -(CH2)mS(CH2)nNHS(O2)-,
PNG
media_image7.png
200
400
media_image7.png
Greyscale
,
PNG
media_image8.png
200
400
media_image8.png
Greyscale
, and
PNG
media_image9.png
200
400
media_image9.png
Greyscale
,
wherein m and n are each independently an integer from 1 to 5, and wherein L provides a covalent linkage to the one or more fluorophores; each R4 is independently selected from the group consisting of H, -SH, halo, C6-10 aryl, C1-6 alkenyl,
PNG
media_image10.png
200
400
media_image10.png
Greyscale
,
PNG
media_image11.png
200
400
media_image11.png
Greyscale
, and C1-6 alkyl optionally substituted with one or more R5, -OC(=O)R6, -NR7R8, -NR9C(=O)R10, and -NR11C(=O)NR12R13, wherein q is an integer from 1 to 5; R5 is -OH or -SH; R6, R7, R8, R9, R10, R11, R12, and R13 are each independently hydrogen or each independently selected from the group consisting of C1-6 alkyl, phenyl, and C1-6 alkenyl, each optionally substituted with -OH, halo, -CN, C1-6 alkoxy, and -NH2; and
R16 is
PNG
media_image12.png
200
400
media_image12.png
Greyscale
or
PNG
media_image13.png
200
400
media_image13.png
Greyscale
, wherein s is an integer from 1 to 5.
‘211 discloses the polymeric dye, wherein the polymeric dye contains monomer D having the structure -Si(R15)(R16)O-, wherein B is present in about 0.5 to 5 mol% in the polymeric dye, and the number average molar mass of the polymeric dye at least about 500 Dalton.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 1, 6 are rejected under 35 U.S.C. 103 as being unpatentable over Huber et al. (US Pub. No. 2005/0124727 A1, hereinafter “’727”).
Regarding claims 1,6: ‘727 teaches polymeric colored dispersant having the structure A--(B--X)n, where A is an organic chromophore, B is a covalently bonded linking moiety, X is a branched or linear polymeric covalently linked hydrocarbon (Page 2, [0012]; Page 2, [0015]). ‘727 teaches as for the organic chromophore (A), suitable organic chromophores include, but are not limited to rhodamine dyes and pigments (Page 2, [0013]), and as for polymeric covalently linked hydrocarbons (C), suitable polymeric covalently linked hydrocarbons are selected from but not limited to either branched or linear hydrocarbons (i.e., read on hexatriacontane C36H74; Page 2, [0015]). The polymeric hydrocarbon may be a C50-C200 hydrocarbon (i.e., read on the number average molar of the polymeric dye is at least about 500 Dalton), preferably a C100-C150 hydrocarbon (Page 1, [0005]) with benefit of providing a need for a dispersant which lowers the viscosity of a pigment dispersion yet permits a higher pigment loading resulting in highly pigmented concentrations capable of being satisfactorily handled and dispersed in lithographic printing inks. Moreover, there exists a need to improve the stability of pigment dispersions used to pigment hydrocarbon compositions. There also exists a need for a dispersant that lowers the viscosity of highly concentrated non-polar pigment dispersions. At a high pigment load offering good lithographic and gravure printing performance while reducing the tendency towards scumming, feedback and over-emulsification (Page 1, [0004]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing an appropriate a polymeric covalently linked hydrocarbons of a known material based on its suitability for its intended use is within the level ordinary skill in the art, and supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)
10. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Huber et al. (US Pub. No. 2005/0124727 A1, hereinafter “’727”) as applied to claim 1 above, and further in view of Lockwood et al. (US Pub. No. 2013/0261566 A1, hereinafter “’566”).
Regarding claim 2: The disclosure of ‘727 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘727 does not expressly teach the one or more rhodamine fluorophore is selected from the group as set forth.
However, ‘566 teaches a medical device comprising a coating, the coating a polymeric matrix comprising a hydrophilic polymer, an ultraviolet light-activated photo group providing covalent bonding in the coating, and a visualization moiety entrained in the polymeric matrix, wherein the visualization moiety is in particulate form, molecular form, or combinations thereof, wherein the hydrophilic polymer is covalently crosslinked to a coating material, covalently bonded to a surface of the medical article, or both, and wherein the visualization moiety is selected from water-insoluble pigments, dyes, or fluorophores that provide color under visible light, or can be induced to provide color (Page 1, [0006]; Page 22, Claim 1). ‘566 teaches the visualization moiety is selected from pigments, dyes, or fluorophores that provide color under visible light, or can be induced to provide color such as rhodamine (Page 14, [0122], Table 3; Page 23, Claim 6) with benefit of providing hydrophilic polymeric coatings for medical devices, the coatings being visualizable in that they appear colored (e.g., blue, green, violet, red, etc.) under ambient or applied light. Since the visualizable coatings are colored, or can be induced to be colored (e.g., by fluorescence), they can be useful for a number of purposes, including assessing the quality or location of the coating during manufacture, or during a medical procedure. For example, the coating can be monitored during manufacturing or prior to use to provide information relating to coating properties such as uniformity and thickness. In some embodiments, monitoring of the coatings can be provided by an unaided human eye, a machine, or combinations thereof. For example, a coating can be visualized prior to insertion and manipulation of the medical device within the patient so the coating's location on the device is understood. The coating with the hydrophilic polymer can provide a lubricious surface which facilitates movement of the device in the body (Page 1, [0006]).
PNG
media_image14.png
242
580
media_image14.png
Greyscale
In an analogous art of the polymeric dye comprising rhodamine fluorophore and covalently bonded to a polymer, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the polymeric dye by ‘727, so as to include the specific rhodamine fluorophore structure as taught by ‘566, and would have been motivated to do so with reasonable expectation that this would result in providing the polymeric dye coatings for medical devices, the coatings being visualizable in that they appear colored (e.g., blue, green, violet, red, etc.) under ambient or applied light. Since the visualizable coatings are colored, or can be induced to be colored (e.g., by fluorescence), they can be useful for a number of purposes, including assessing the quality or location of the coating during manufacture, or during a medical procedure. For example, the coating can be monitored during manufacturing or prior to use to provide information relating to coating properties such as uniformity and thickness. In some embodiments, monitoring of the coatings can be provided by an unaided human eye, a machine, or combinations thereof. For example, a coating can be visualized prior to insertion and manipulation of the medical device within the patient so the coating's location on the device is understood. The coating with the hydrophilic polymer can provide a lubricious surface which facilitates movement of the device in the body as suggested by ‘566 (Page 1, [0006]).
11. Claims 1, 6 are rejected under 35 U.S.C. 103 as being unpatentable over Huber et al. (US Pub. No. 2005/0124727 A1, hereinafter “’727”) as applied to claim 1 above, and further in view of Li et al. (US Pub. No. 2014/033 0100 A1, hereinafter “’100”).
Regarding claims 1,6: The disclosure of ‘727 is adequately set forth in paragraph 9 above and is incorporated herein by reference. This rejection is applied in the interest of advancing prosecution in the event it can be shown that ‘727 does not expressly teach hexatriacontane.
However, ‘100 teaches a carbon nanostructure comprising: (a) a substrate having one or more carbon nanotubes situated on a surface of said substrate, (b) a first protective layer covering portions of said carbon nanotubes and said substrate, and (c) a functional second layer over said first protective layer, wherein the second layer comprises a bipolar molecule with functional groups or functional moieties (Page 2, [0002]; Page 3, [0036], Fig. 1; Page 21, Claim 15), wherein the carbon nanostructure is selected from the group consisting of a sensing element, a voltammetric pH sensor, a potentiometric pH sensor, an electrode, an amperometric pH sensor, a biometric sensor, a biometric electrode, an intracorporeal sensor, and an intracorporeal electrode (Page 21, Claim 16), wherein the first protective layer comprises an alkyl protective moiety (Page 21, Claim 17), and wherein the alkyl protective moiety is selected from the group consisting of linear alkanes, branched alkanes, alkenes, alkenes containing 10 to 50 carbon atoms, alkenes substituted with one or more halogen atoms, n-octadecane, n-dodecane, eicosane and hexatriacontane, and combinations thereof (Page 21, Claim 18) with benefit of providing the alkyl protective moiety (Page 4, [0036]).
In an analogous art of the polymeric dye comprising organic chromophore and covalently bonded to a polymer, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the polymeric dye by ‘727, so as to include hexatriacontane as taught by ‘100, and would have been motivated to do so with reasonable expectation that this would result in providing the alkyl protective moiety (Page 4, [0036]).
12. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Huber et al. (US Pub. No. 2005/0124727 A1, hereinafter “’727”) in view of Li et al. (US Pub. No. 2014/033 0100 A1, hereinafter “’100”) as applied to claim 1 above, and further in view of Lockwood et al. (US Pub. No. 2013/0261566 A1, hereinafter “’566”).
Regarding claim 2: The disclosure of ‘727 in view of ‘100 is adequately set forth in paragraph 11 above and is incorporated herein by reference. ‘727 in view of ‘100 does not expressly teach the one or more rhodamine fluorophore is selected from the group as set forth.
However, ‘566 teaches a medical device comprising a coating, the coating a polymeric matrix comprising a hydrophilic polymer, an ultraviolet light-activated photo group providing covalent bonding in the coating, and a visualization moiety entrained in the polymeric matrix, wherein the visualization moiety is in particulate form, molecular form, or combinations thereof, wherein the hydrophilic polymer is covalently crosslinked to a coating material, covalently bonded to a surface of the medical article, or both, and wherein the visualization moiety is selected from water-insoluble pigments, dyes, or fluorophores that provide color under visible light, or can be induced to provide color (Page 1, [0006]; Page 22, Claim 1). ‘566 teaches the visualization moiety is selected from pigments, dyes, or fluorophores that provide color under visible light, or can be induced to provide color such as rhodamine (Page 14, [0122], Table 3; Page 23, Claim 6) with benefit of providing hydrophilic polymeric coatings for medical devices, the coatings being visualizable in that they appear colored (e.g., blue, green, violet, red, etc.) under ambient or applied light. Since the visualizable coatings are colored, or can be induced to be colored (e.g., by fluorescence), they can be useful for a number of purposes, including assessing the quality or location of the coating during manufacture, or during a medical procedure. For example, the coating can be monitored during manufacturing or prior to use to provide information relating to coating properties such as uniformity and thickness. In some embodiments, monitoring of the coatings can be provided by an unaided human eye, a machine, or combinations thereof. For example, a coating can be visualized prior to insertion and manipulation of the medical device within the patient so the coating's location on the device is understood. The coating with the hydrophilic polymer can provide a lubricious surface which facilitates movement of the device in the body (Page 1, [0006]).
PNG
media_image14.png
242
580
media_image14.png
Greyscale
In an analogous art of the polymeric dye comprising rhodamine fluorophore and covalently bonded to a polymer, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the polymeric dye by ‘727, so as to include the specific rhodamine fluorophore structure as taught by ‘566, and would have been motivated to do so with reasonable expectation that this would result in providing the polymeric dye coatings for medical devices, the coatings being visualizable in that they appear colored (e.g., blue, green, violet, red, etc.) under ambient or applied light. Since the visualizable coatings are colored, or can be induced to be colored (e.g., by fluorescence), they can be useful for a number of purposes, including assessing the quality or location of the coating during manufacture, or during a medical procedure. For example, the coating can be monitored during manufacturing or prior to use to provide information relating to coating properties such as uniformity and thickness. In some embodiments, monitoring of the coatings can be provided by an unaided human eye, a machine, or combinations thereof. For example, a coating can be visualized prior to insertion and manipulation of the medical device within the patient so the coating's location on the device is understood. The coating with the hydrophilic polymer can provide a lubricious surface which facilitates movement of the device in the body as suggested by ‘566 (Page 1, [0006]).
Response to Arguments
13. Applicant’s arguments with respect to claims 1-2, 4-8, 22 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
14. 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 extension fee 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 date of this final action.
Examiner Information
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
06/22/2026
bijan.ahvazi@uspto.gov
Prosecution Insights