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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
This application is a 371 of PCT/EP2022/054401 filed 02/22/2022.
This application also claims foreign priority to EPO EP21315027.9 filed 02/24/2021.
However, the subject matter of “the proportion of activated groups compared to the number of monomer units in the backbone is at least 0.05 mol/mol of monomer unit” in claim 7 as it pertains to the broad range of “at least 0.05 mol/mol,” is not supported in PCT application of PCT/EP2022/054401 or foreign application of EPO EP21315027.9. Thus, claim 7 will not receive priority filing date benefits of PCT application of PCT/EP2022/054401 and foreign application of EPO EP21315027.9.
Accordingly, claims 1-3, 6, 8-19 and 21-23 are afforded the effective filing date of 02/24/2021; and claim 7 is afforded the effective filing date of 08/11/2023 (actual filing date).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/11/2023 has been considered by the examiner and initialed copies of the IDS are included with the mailing of this office action.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-3, 6-12, 18-19, and 21-22, in the reply filed on 01/06/2026 is acknowledged. Applicant further elected the species of the pre-polymer of Formula (III) of claim 11. The elected species reads on claims 1-3, 6-9, 11-12, and 18-19. Claims 10, 21, and 22 do not read on the elected species of the pre-polymer of Formula (III) because claims 10 and 21 are drawn to triacid such as citric acid and claim 22 is dependent from claim 10. The pre-polymer of Formula (III) does not contain a triacid but rather a diacid.
The traversal is on the ground(s) that the Office has not articulated how or why this reference provides any evidence that the claims of Group I or II, as a whole, do not make a contribution over the prior art (Remarks filed 01/06/2026, page 1).
This is not found persuasive because the lack of unity invention analysis was adequately provided on pages 4-5 of the Restriction Requirement dated 11/06/2025, in which Huang taught the common technical feature between Groups I-II and therefore, said common technical feature is not special.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10, 13-17, and 21-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group/invention or species, respectively, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/06/2026.
Status of the Claims
This action is in response to preliminary papers filed 03/19/2024 in which claims 4-5 and 20 were canceled; claims 2, 3, and 6-19 were amended; and claims 21-23 were newly added. All the amendments have been thoroughly reviewed and entered.
Claims 1-3, 6-19, and 21-23 are pending in this instant application, of which claims 10, 13-17, and 21-23 are withdrawn at this time being as being drawn to a nonelected species and group/invention, respectively.
Applicant elected the pre-polymer of Formula (III) from claim 11:
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, wherein p is an integer between 1 and 20, wherein n, m, and o are integers equal to or greater than 1, and wherein Ra, Rb, Rc are independently selected from H, alkyl, alkenyl and aryl, as the species of prepolymer.
Claims 1-3, 6-9, 11-12, and 18-19 are examined herein on the merits for patentability.
Claim Interpretation
Claim 19 is structured as a product-by-process. Thus, claim 19 will be interpreted and examined for objection and art rejections (103 rejections) purposes as product-by-process type claims. MPEP 2113 (I) states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Thus, while the structure implied by the process steps should be consider when assessing patentability of product-by-process claims over the prior art; however, burden of proof is placed upon Applicant to show that the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). Also see MPEP § 2113.
Claim Objections
Claim 2 is objected to because of the following informalities: the recitation of “chosen from phosphate, sulphate, and carboxylate groups” is an improper Markush language. When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: please add a “to” after “equal” in the third to last line of claim 11. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: the recitation of “Ra, Rb and Rc are independently selected from H, alkyl, alkenyl and aryl” is an improper Markush language. When materials recited in a claim are so related as to constitute a proper Markush groups, they may be recited in the conventional manner, or alternatively. For example, if “wherein R is a material selected from the group consisting of A, B, C and D” is a proper limitation, then “wherein R is A, B, C or D” shall also be considered proper. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: claim 19 is a cured composition obtainable by the method of withdrawn method claim 16, yet does not describe the structure(s) of the composition and is referencing back/dependent (directly) to/from claim 16 and thereby, is improper because claim 16 is a withdrawn method claim. It is improper for a claim to be referencing back/dependent to/from a withdrawn claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112 – NEW MATTER
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 7 introduces new matter as the claim recites the limitation: “at least 0.05 mol/mol of monomer unit” for the proportion of activated groups compared to the number of monomers units in the backbone. There is no support in the specification for the broadly claimed range of “at least 0.05 mol/mol of monomer unit” for the proportion of activated groups compared to the number of monomers units in the backbone. While the specification at page 8 and original claim 7 discloses the proportion of activated groups compared to the number of monomer units in the backbone is from 0.05 to 0.4 mol/mol of polyacid or polyol, preferably from 0.09 to 0.25 mol/mol of monomer unit, this disclosure is not support for the claimed broad range of “at least 0.05 mol/mol of monomer unit,” as this broad range encompassed from 0.05 mol/mol of monomer unit to an infinite mol/mol of monomer unit including for example, 5 mol/mol or 10 mol/mol of monomer units, which is not supported by the instant specification or original claims.
MPEP §2163.06 states: “Applicant should therefore specifically point out the support for any amendments made to the disclosure.” Applicant has not directed the Examiner to the support in the specification for the amendments.
As such, it is the Examiner’s position that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of filing of the instant application.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 6-9, 11-12, and 18- 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Collin et al (WO 2019/180208 A1) in view of Huang et al (Journal of Materials Chemistry B, 2016, 4: 2090-2101; previously cited) and Watson et al (Biomedical Materials, 2014, 9 (025014): 1-10).
The Claim Interpretation for claim 19 applies here.
Elected species: pre-polymer of Formula (III):
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, wherein p is an integer between 1 and 20, wherein n, m, and o are integers equal to or greater than 1, and wherein Ra, Rb, Rc are independently selected from H, alkyl, alkenyl and aryl.
Regarding claims 1, 8, 9, 11 and 19, Collin teaches a resin composition comprising a pre-polymer comprising a polymeric unit of the general formula (-A-B-)n, wherein A represents a substituted or un-substituted ester, B represents a substituted or un-substituted acid ester comprising at least two acid ester functionalities, and n represents an integer greater than 1, and wherein the pre -polymer has the following structure:
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(Abstract; pages 4-17; claims 1-4). Collin teaches that from the general formula, A is unsubstituted glycerol (a polyol, specifically a triol) and B is a diacid such as sebacic acid (pages 7-14). Collin teaches that the pre-polymer from the structure of
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has activated group such as acrylate group (
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) functionalized on one of the hydroxy group of the polyol (glycerol) (pages 7-17). Collin teaches the resin composition is cured (pages 4, 7, 12 and 15-16).
However, Collin does not teach the phosphate group that is functionalized on one of the hydroxy group of the species elected pre-polymer of Formula (III) of claims 1 and 11.
Regarding the phosphate group that is functionalized on one of the hydroxy group of the species elected pre-polymer of Formula (III) of claims 1 and 11, Huang teaches a phosphorylated poly(sebacoyl diglyceride) having the following structure:
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(Abstract; pages 2090-2092, 2094-2097, and 2099-2100; Figs. 1 and 2 and Scheme 1). Huang teaches the phosphate group (POCl3) is used at 0.5 equimolar based on the theoretical amount of hydroxy groups in the phosphorylated poly(sebacoyl diglyceride) (pages 2091-2092), which reads on the claimed “the proportion of negatively-charged functional groups compared to the number of monomer units in the backbone is at least 0.05 mol/mol of monomer unit,” as recited in claim 1. Huang teaches the phosphorylation of poly(sebacoyl diglyceride) provides a biomimetic material that has increased adhesion rate of the poly(sebacoyl diglyceride) to osteoblast cells (Abstract; pages 2090-2091, 2097 and 2099-2100).
It would have been obvious to one ordinary skill in the art to modify the pre-polymer of Collin such that the pre-polymer is phosphorylated by functionalizing using 0.5 equimolar of pendant phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer, and produce the claimed invention. One of ordinary skill in the art would have been motivate to do so because Collin and Huang are both drawn to poly(sebacoyl glyceride), and Huang provided the guidance for phosphorylating by functionalizing a phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer (poly(sebacoyl glyceride)) of Collin so as to provide phosphorylated poly(sebacoyl glyceride) that has increased cell adhesion rate (Huang: Abstract; pages 2090-2091, 2097 and 2099-2100). One of ordinary skill in the art would have reasonable expectation of success modify the pre-polymer of Collin such that the pre-polymer is phosphorylated by functionalizing a phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer because per Watson, phosphorous-containing polymers are useful in regenerative medicine applications, as the phosphorous-containing polymers improve and accelerate the formation of native tissue by mimicking the native role of phosphorous groups in the body and by attachment of other bioactive molecules, thereby beneficial for accelerating tissue regeneration in bone tissue and vascular tissue (Watson: Abstract; Introduction; pages 2-6). An ordinary artisan provided the guidance Huang and Watson would have looked to modifying the pre-polymer of Collin such that the pre-polymer is phosphorylated by functionalizing a pendant phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer so as to provide a phosphorylated polymer that is useful in regenerative medicine applications by accelerating tissue regeneration, which is also desired by Collin, as the pre-polymer of Collin is used for forming a biomaterial that aids in repairing damaged tissue (Collin: pages 4-5), achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claims 2 and 3, as discussed above, Huang provided the guidance for modify the pre-polymer of Collin such that the pre-polymer is phosphorylated by functionalizing a pendant phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer.
Regarding claim 6, as discussed above, Collin teaches that the pre-polymer from the structure of
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, which has activated group such as acrylate group (
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) functionalized on one of the hydroxy group of the polyol (glycerol).
Regarding claim 7, Collin teaches the degree of acrylation can vary from 0.2 to 0.9 mol/mol of polyol (glycerol) (page 10, lines 5th paragraph), which reads on the claimed range of “at least 0.05 mol/mol of monomer unit.”
Regarding claim 12, Collin teaches the resin composition further comprises a photo-initiator (Abstract; pages 6 and 16-17).
Regarding claim 18, the recitation of “for use in a method of adhering or sealing tissue, or for adhering tissue to the surface of a medical” is an intended use. As discussed above, the composition of claim 1 has been structurally taught by the combined teachings of Collin, Huang and Watson. Thus, the composition of Collin in view of Huang and Watson being substantially the same in structure as the claimed composition would have been capable of performing the intended use of “for use in a method of adhering or sealing tissue, or for adhering tissue to the surface of a medical,” as claimed. It is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 1-3, 6-9, 11-12, and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nijst et al (Biomacromolecules, 2007, 8: 3067-3073) in view of Huang et al (Journal of Materials Chemistry B, 2016, 4: 2090-2101; previously cited) and Watson et al (Biomedical Materials, 2014, 9 (025014): 1-10).
The Claim Interpretation for claim 19 applies here.
Elected species: pre-polymer of Formula (III):
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, wherein p is an integer between 1 and 20, wherein n, m, and o are integers equal to or greater than 1, and wherein Ra, Rb, Rc are independently selected from H, alkyl, alkenyl and aryl.
Regarding claims 1, 8, 9, 11 and 19, Nijst teaches a photocured elastomer containing a prepolymer of poly(glycerol-co-sebacate) acrylate having the following structure:
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(Abstract; Introduction; pages 3068-3073; Figure 1).
However, Collin does not teach the phosphate group that is functionalized on one of the hydroxy group of the species elected pre-polymer of Formula (III) of claims 1 and 11.
Regarding the phosphate group that is functionalized on one of the hydroxy group of the species elected pre-polymer of Formula (III) of claims 1 and 11, Huang teaches a phosphorylated poly(sebacoyl diglyceride) having the following structure:
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(Abstract; pages 2090-2092, 2094-2097, and 2099-2100; Figs. 1 and 2 and Scheme 1). Huang teaches the phosphate group (POCl3) is used at 0.5 equimolar based on the theoretical amount of hydroxy groups in the phosphorylated poly(sebacoyl diglyceride), which reads on the claimed “the proportion of negatively-charged functional groups compared to the number of monomer units in the backbone is at least 0.05 mol/mol of monomer unit,” as recited in claim 1. Huang teaches the phosphorylation of poly(sebacoyl diglyceride) provides a biomimetic material that has increased adhesion rate of the poly(sebacoyl diglyceride) to osteoblast cells (Abstract; pages 2090-2091, 2097 and 2099-2100).
It would have been obvious to one ordinary skill in the art to modify the pre-polymer of Nijst such that the pre-polymer is phosphorylated by functionalizing using 0.5 equimolar of pendant phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer, and produce the claimed invention. One of ordinary skill in the art would have been motivate to do so because Nijst and Huang are both drawn to poly(sebacoyl glyceride), and Huang provided the guidance for phosphorylating by functionalizing a phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer (poly(sebacoyl glyceride)) of Nijst so as to provide phosphorylated poly(sebacoyl glyceride) that has increased cell adhesion rate (Huang: Abstract; pages 2090-2091, 2097 and 2099-2100). One of ordinary skill in the art would have reasonable expectation of success modify the pre-polymer of Nijst such that the pre-polymer is phosphorylated by functionalizing a phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer because per Watson, phosphorous-containing polymers are useful in regenerative medicine applications, as the phosphorous-containing polymers improve and accelerate the formation of native tissue by mimicking the native role of phosphorous groups in the body and by attachment of other bioactive molecules, thereby beneficial for accelerating tissue regeneration in bone tissue and vascular tissue (Watson: Abstract; Introduction; pages 2-6). An ordinary artisan provided the guidance Huang and Watson would have looked to modifying the pre-polymer of Nijst such that the pre-polymer is phosphorylated by functionalizing a pendant phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer so as to provide a phosphorylated polymer that is useful in regenerative medicine applications by accelerating tissue regeneration, which is also desired by Nijst, as the pre-polymer of Nijst is also used for tissue regeneration (Nijst: Abstract; Introduction), achieve Applicant’s claimed invention with reasonable expectation of success.
Regarding claims 2 and 3, as discussed above, Huang provided the guidance for modify the pre-polymer of Collin such that the pre-polymer is phosphorylated by functionalizing a pendant phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer.
Regarding claim 6, as discussed above, Nijst teaches a photocurable elastomer containing a prepolymer of poly(glycerol-co-sebacate) acrylate having the following structure:
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, which has activated group such as acrylate group (
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) functionalized on one of the hydroxy group of the polyol (glycerol).
Regarding claim 7, Nijst teaches the degree of acrylation can vary from 0.17 to 0.54 mol/mol of polyol (glycerol) (pages 3068-3071), which reads on the claimed range of “at least 0.05 mol/mol of monomer unit.”
Regarding claim 12, Nijst teaches the photocurable elastomer further contains a photo-initiator (Abstract; pages 3068-3070).
Regarding claim 18, the recitation of “for use in a method of adhering or sealing tissue, or for adhering tissue to the surface of a medical” is an intended use. As discussed above, the composition of claim 1 has been structurally taught by the combined teachings of Nijst, Huang and Watson. Thus, the composition of Nijst in view of Huang and Watson being substantially the same in structure as the claimed composition would have been capable of performing the intended use of “for use in a method of adhering or sealing tissue, or for adhering tissue to the surface of a medical,” as claimed. It is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention, as evidenced by the references, especially in the absence of evidence to the contrary.
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, 6-9, 11-12, and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-42 of U.S. Patent No. 11179491 in view of Huang et al (Journal of Materials Chemistry B, 2016, 4: 2090-2101; previously cited) and Watson et al (Biomedical Materials, 2014, 9 (025014): 1-10).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘491 significantly overlap with the subject matter of instant claims, i.e., compositions comprising the same acrylated pre-polymer containing a polymeric unit of the general formula (-A-B-)n, wherein A represents a moiety derived from a polyol (glycerol), B represents a moiety derived from a polyacid (diacid), and n represents an integer equal to or greater than 1.
While the claims in the Patent ‘491 do not recite the pre-polymer as having negatively-charged functional groups such as phosphate groups on the polymeric backbone, it would have been obvious to modify the pre-polymer of Patent ‘491 such that the pre-polymer is phosphorylated by functionalizing a pendant phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer per guidance from Huang and Watson (Huang: Abstract; pages 2090-2092, 2094-2097, and 2099-2100; Figs. 1 and 2 and Scheme 1; Watson: Abstract; Introduction; pages 2-6).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 11179491 in view of Huang and Watson
Claims 1-3, 6-9, 11-12, and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11898005 in view of Huang et al (Journal of Materials Chemistry B, 2016, 4: 2090-2101; previously cited) and Watson et al (Biomedical Materials, 2014, 9 (025014): 1-10).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘005 significantly overlap with the subject matter of instant claims, i.e., compositions comprising the same acrylated pre-polymer containing a polymeric unit of the general formula (-A-B-)n, wherein A represents a moiety derived from a polyol (glycerol), B represents a moiety derived from a polyacid (diacid), and n represents an integer equal to or greater than 1.
While the claims in the Patent ‘005 do not recite the pre-polymer as having negatively-charged functional groups such as phosphate groups on the polymeric backbone, it would have been obvious to modify the pre-polymer of Patent ‘005 such that the pre-polymer is phosphorylated by functionalizing a pendant phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer per guidance from Huang and Watson (Huang: Abstract; pages 2090-2092, 2094-2097, and 2099-2100; Figs. 1 and 2 and Scheme 1; Watson: Abstract; Introduction; pages 2-6).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 11898005 in view of Huang and Watson
Claims 1-3, 6-9, 11-12, and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12234319 in view of Huang et al (Journal of Materials Chemistry B, 2016, 4: 2090-2101; previously cited) and Watson et al (Biomedical Materials, 2014, 9 (025014): 1-10).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Patent ‘319 significantly overlap with the subject matter of instant claims, i.e., compositions comprising the same acrylated pre-polymer containing a polymeric unit of the general formula (-A-B-)n, wherein A represents a moiety derived from a polyol (glycerol), B represents a moiety derived from a polyacid (diacid), and n represents an integer equal to or greater than 1.
While the claims in the Patent ‘319 do not recite the pre-polymer as having negatively-charged functional groups such as phosphate groups on the polymeric backbone, it would have been obvious to modify the pre-polymer of Patent ‘319 such that the pre-polymer is phosphorylated by functionalizing a pendant phosphate group on one of hydroxy group on the glycerol monomer unit of the pre-polymer per guidance from Huang and Watson (Huang: Abstract; pages 2090-2092, 2094-2097, and 2099-2100; Figs. 1 and 2 and Scheme 1; Watson: Abstract; Introduction; pages 2-6).
Consequently, the ordinary artisan would have recognized the obvious variation of the instant claimed subject matter over U.S. Patent No. 12234319 in view of Huang and Watson
Conclusion
No claim is allowed.
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/DOAN T PHAN/ Primary Examiner, Art Unit 1613