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 .
DETAILED ACTION
Claim Status
Claims 2-21 are pending. Claims 2-21 are under examination. Claims 2-21 are rejected. No claims allowed.
Filing Receipt
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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) 2, 6-8, 10-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Das et al. (Activated Ester Containing Polymers: Opportunities and Challenges for the Design of Functional Macromolecules, Chemical Reviews, 116, pp. 1434-1495, Published 2015), He et al. (Postpolymerization Modification Using Less Cytotoxic Activated Ester Polymers for the Synthesis of Biological Active Polymers, Biomacromolecules, 15, pp. 3197-3205, Published 2014) and D’Orazio (USPGPub20100119646, Published 05-2010).
Scope of the Prior Art
Das et al. teach the cleavage of a bond coupling the currently claimed pendant group (salicylic acid) to the synthetic polymer backbone as seen immediately below (p. 1439). X is O, Y is CR3, wherein R3 is H, R5 is a substituted C1 carbonyl group, R1, R2, R3 and R4 are hydrogen.
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Concerning R5, the specification par. 58 exemplifies a carbonyl group being a C1-6 carbon chain, wherein each carbon atom of a given chain can form the carbonyl. Currently, the R5 in Das et al. is a C1 alkyl forming a carbonyl group (See scheme 8 of Das et al.). In par. 35 of specification the term “substituted” refers to a compound wherein a hydrogen is replaced by another functional group. Currently, the hydrogen position of the C1 carbonyl group R5 in Das et al. is substituted with an alcohol or a alkoxy group (See scheme 8 of Das et al.).
` The cleaved pendant group with the acrylate polymer is the current mixture.
Das et al. goes on to reference He et al. as supplying the reaction procedures (p.1439, upper right column).
Das et al. teach “removal of the molecular compounds from polymers is a routine procedure that is conducted anyways and allows recycling of the activating alcohol” (p. 1435).
Concerning the curing the provided curable composition, the acrylate monomer
taught by Das et al. in scheme 8 with the AIBN is the curing the provided curable
composition.
Ascertaining the Difference
Das et al. does not teach the recovery of the pendant group from the mixture.
Secondary Reference
He et al. teach the above cleavage of a bond coupling the currently claimed pendant group to the synthetic polymer backbone and the product being redissolved in THF (p. 3199). This can also be considered the current mixture.
Concerning the percent recoveries, including claim 7, He et al. teach aminolysis of the current pendent group with upwards of 98 to 100%. Thus a removal of the pendent group from the polymer is at 98 to 100%.
He et al. does not teach the recovery of the salicylic acid from the mixture.
D’Orazio teach well-known processes and methods that involve chromatography, crystallization and/or steam distillation for isolating and purifying phenols that overlap in structure of current phenols (par. 12). For example, D’Orazio teach Dihydroeugenol in paragraph 12, wherein X is O, R1, R2 and R4 are H, R3 is C3 alkyl and R5 is a C1 alkoxy. The phenol and subsequent purification of the phenol taught by D’Orazio renders D’Orazio analogous art to the invention. The chromatography taught by D’Orazio is the current chromatographic separation system of claim 11 and 19 and purification methods of 17. The distillation taught by D’Orazio is the current distillation, claims 6, 10 and 16-17.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have recovered the pendant group from the currently claimed polymer and subsequent mixture taught by Das et al. and He et al. using well-known methods that involve chromatography, crystallization and/or steam distillation for isolating and purifying phenols (D’Orazio par. 12). The ordinary artisan would have done so to recycle the activated alcohol as taught by Das et al.
The ordinary artisan would have had a reasonable expectation of success in recovery of the pendant group from the claimed polymer and subsequent mixture because Das et al. teach “removal of the molecular compounds from polymers is a routine procedure that is conducted anyways and allows recycling of the activating alcohol” (p. 1435) and D’Orazio teach well-known processes and methods that involve chromatography, crystallization and/or steam distillation for isolating and purifying phenols that overlap the structures of current phenols (par. 12)..
Upon doing so the ordinary artisan would have arrived at the currently claimed invention.
Concerning claim 6, 10-11, 16-17 and 19 and the distillation to produce a crude pendent group and purifying the crude pendent group with a chromatographic separation system, D’Orazio teach well-known methods that involve chromatography, crystallization and/or steam distillation for isolating and purifying phenols that overlap the current phenols (par. 12). The ordinary artisan knowing that the recovered phenols taught by Das et al. are routinely recovered and recycled would have utilized the teachings of D’Orazio to isolate and purify using the well-known method of distillation, chromatography, and/or crystallization to achieve the phenols taught by Das et al. for recycling.
The order of applying the isolation/purification techniques taught by D’Orazio is obvious. Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) and Selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP 2144.04 IV C.
Concerning claim 7, 8, 14 and the recovering at least 70% of the pendent group present in the polymer, He et al. teach aminolysis of the current pendent group with upwards of 98 to 100% (Table 2 and page 3202). Thus, removal of the pendent group from the polymer is at 98 to 100%. Upon performing the substantially identical isolation, purification methods of chromatography, and/or steam distillation as argued above, the claimed percent pendent recovery would have been met. The reason being the methods of the prior art are substantially identical to those of the current invention.
For example, the prior art teach high removals of the claimed pendent group of 98 to 100% with substantially identical isolation and purification methods of distillation and chromatography. Therefore, products obtained by the prior art would have been substantially identical to those currently claimed.
Substantially identical methods yield substantially identical products. See MPEP 2112.01 I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re
Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Concerning claim 12-13, and 18 due to the products of the prior art being substantially identical to those of the current invention the fraction would have comprised at most 5% w/w impurities based on dry solids and the pendent group would have had a purity of at least 70-95% w/w based on dry solids.
Additionally, as a reminder the removal of the pendent group is routine (Das et al. p. 1435) and the methods utilized to isolate and purify phenols having structures that overlap in scope with the current compounds, are well-known (D’Orazio par. 12). Thus, the ordinary artisan would have been able to arrive at the cleavage, recovery, isolation and purification of the current pendent group having the current impurities and purities with a reasonable expectation of success.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Das et al. (Activated Ester Containing Polymers: Opportunities and Challenges for the Design of Functional Macromolecules, Chemical Reviews, 116, pp. 1434-1495, Published 2015), He et al. (Postpolymerization Modification Using Less Cytotoxic Activated Ester Polymers for the Synthesis of Biological Active Polymers, Biomacromolecules, 15, pp. 3197-3205, Published 2014) and D’Orazio (USPGPub20100119646, Published 05-2010) as applied to claims 2, 6-8, 10-19 and in further view of Boudreaux et al. 1 (Controlled activity polymers. XI Hydrolytic release studies of hydrophilic copolymers with labile esters of model allelopathic phenols, J. of Controlled Release, 44, pp. 185-194, Published 1997).
Scope of the Prior Art
The combinational teachings of Das et al., He et al. and D’Orazio are in the above 103 rejection and are incorporated by reference.
Ascertain the Differences
Das et al., He et al. and D’Orazio do not teach cleaving the bond coupling the pendent group to the backbone of the polymer via hydrolysis.
Secondary References
Boudreaux et al. 1 teach the hydrolytic cleavage of a bond coupling the
currently claimed pendant group (salicylic acid) to the synthetic polymer backbone (p. 186-188). Salicylic acid is the identical pendant group taught by Das et al. Boudreaux et al. 1 teach the hydrolysis is done in an aqueous buffer/dioxane solution (p. 187). This is the currently claimed mixture. Boudreaux et al. 1 teach hydrolysis at a pH of 10 (Table 4, p. 188).
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have substituted the cleavage method taught by the prior art with the base hydrolysis taught by Boudreaux et al. 1 with a reasonable expectation of success. MPEP 2141 III. (E) "Obvious to try" and/or (B) substitution. In doing so the ordinary artisan would have arrived at the current invention.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Das et al. (Activated Ester Containing Polymers: Opportunities and Challenges for the Design of Functional Macromolecules, Chemical Reviews, 116, pp. 1434-1495, Published 2015), He et al. (Postpolymerization Modification Using Less Cytotoxic Activated Ester Polymers for the Synthesis of Biological Active Polymers, Biomacromolecules, 15, pp. 3197-3205, Published 2014), D’Orazio (USPGPub20100119646, Published 05-2010) Boudreaux et al. 1 (Controlled activity polymers. XI Hydrolytic release studies of hydrophilic copolymers with labile esters of model allelopathic phenols, J. of Controlled Release, 44, pp. 185-194, Published 1997), as applied to claims 2-3, 6-8, 10-19 and in further view of Ester Hydrolysis (pages 1-3, Published 05-2021).
Scope of the Prior Art
The combinational teachings of Das et al., He et al. and D’Orazio, and Boudreaux et al. 1, are written in the above 103 rejection and are incorporated by reference.
Additional teachings of Boudreaux et al. 1 are as follows. Boudreaux et al. 1 teach hydrolysis at a pH of 10 (Table 4, p. 188).
Ascertaining the Difference
The prior art does not teach the inorganic base hydrolysis nor elevated temperature.
Secondary Reference
Ester Hydrolysis teach hydrolysis of esters via base hydrolysis (page 1 of 3). Ester Hydrolysis teach heat being used during hydrolysis of esters and teach NaOH (p. 1 of 3).
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have substituted the hydrolysis arrived at by the ordinary artisan in the above 103 rejection involving the teachings of Boudreaux et al. 1 with the base hydrolysis taught by Ester Hydrolysis with a reasonable expectation of success. The ordinary artisan would have done so to substitute one known method for another to obtain predictable results. See MPEP 2141 III (B). Upon doing so the ordinary artisan would have arrived at the currently claimed invention.
Concerning the inorganic base, Ester Hydrolysis teach NaOH (p. 1 of 3). The ordinary artisan in need of a base would have chosen NaOH with a reasonable expectation of success.
Concerning the elevated temperature, the ordinary artisan would have tried heating the base hydrolysis because Ester Hydrolysis teach heat being used during hydrolysis of esters (p. 1 of 3). Additionally, the ordinary artisan would have used routine experimentation to find the working ranges. MPEP 2144.05 II. A. and B. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Additionally, the ordinary artisan in need of a temperature would have started at
room temperature and modified the temperatures using routine experimentation to find the working ranges.
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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,939,287 (287).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 287 claims the following.
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X is O, Y is CR3, R3 is H, R2 and R4 are H, R5 is a C1 alkoxy. This compound reads on the current compounds.
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287 does not singularly claim 70% of the pendent group is recovered as in current claim 7. However, claim 14 of 287 renders the recovery of 70% of the pendent group obvious.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Claims 2-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 23 and 29 of copending Application No. 17/728,865 (865) in view of Das et al. (Activated Ester Containing Polymers: Opportunities and Challenges for the Design of Functional Macromolecules, Chemical Reviews, 116, pp. 1434-1495, Published 2015), He et al. (Postpolymerization Modification Using Less Cytotoxic Activated Ester Polymers for the Synthesis of Biological Active Polymers, Biomacromolecules, 15, pp. 3197-3205, Published 2014), D’Orazio (USPGPub20100119646, Published 05-2010), Boudreaux et al. 1 (Controlled activity polymers. XI Hydrolytic release studies of hydrophilic copolymers with labile esters of model allelopathic phenols, J. of Controlled Release, 44, pp. 185-194, Published 1997) and Ester Hydrolysis (pages 1-3, Published 05-2021).
865 claim the current polymer. For example, 865 claims the following.
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When x is O and R2 is alkyl and R5 is an alkoxy and R3-R4 are H, this overlaps currently claimed compounds/polymers/monomers.
865 does not claim the current dental appliance medical device utility. However, the utility is ascertained from the specification of 865 on page 15, bridging paragraphs 33-34.
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See MPEP 804(II)(B)(1).
The court pointed out that "this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined." In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014), the court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
865 does not claim cleaving a bond coupling the pendant group to a backbone of the polymer to produce a mixture.
However, the ordinary artisan would have cleaved the pendent groups to arrive at the current invention because Das et al. teach “removal of the molecular compounds from polymers is a routine procedure that is conducted anyways and allows recycling of
the activating alcohol” (p. 1435).
The recovery, isolation, purification at the claimed yields of pendent group and purity were argued to be obvious in the above 103 rejections. The above combinational teachings if the prior art are written in the above 103 rejections and are incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter in view of the prior art.
This is a provisional nonstatutory double patenting rejection.
Claims 2-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 183 of copending Application No. 19/021,547 (547) in view of Das et al. (Activated Ester Containing Polymers: Opportunities and Challenges for the Design of Functional Macromolecules, Chemical Reviews, 116, pp. 1434-1495, Published 2015), He et al. (Postpolymerization Modification Using Less Cytotoxic Activated Ester Polymers for the Synthesis of Biological Active Polymers, Biomacromolecules, 15, pp. 3197-3205, Published 2014), D’Orazio (USPGPub20100119646, Published 05-2010), Boudreaux et al. 1 (Controlled activity polymers. XI Hydrolytic release studies of hydrophilic copolymers with labile esters of model allelopathic phenols, J. of Controlled Release, 44, pp. 185-194, Published 1997) and Ester Hydrolysis (pages 1-3, Published 05-2021).
547 claims the current polymer. For example, 547 claims the following.
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When R50 and R48 are an alkoxy and R49 and R59 are H, this overlaps currently claimed compounds/polymers/monomers.
547 does not claim cleaving a bond coupling the pendant group to a backbone of the polymer to produce a mixture.
However, the ordinary artisan would have cleaved the pendent groups to arrive at the current invention because Das et al. teach “removal of the molecular compounds from polymers is a routine procedure that is conducted anyways and allows recycling of the activating alcohol” (p. 1435).
The recovery, isolation, purification at the claimed yields of pendent group and purity were argued to be obvious in the above 103 rejections. The above combinational teachings if the prior art are written in the above 103 rejections and are incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter in view of the prior art.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Upon obviation of the nonstatutory double patenting rejections claims 5, 9 and 20-21 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art to the invention is Das et al. (Activated Ester Containing
Polymers: Opportunities and Challenges for the Design of Functional Macromolecules,
Chemical Reviews, 116, pp. 1434-1495, Published 2015).
Das et al. teach the cleavage of a bond coupling the currently claimed pendant group (salicylic acid) to the synthetic polymer backbone as seen immediately below (p. 1439). X is O, Y is CR3, wherein R3 is H, R5 is a substituted C1 carbonyl group, R1, R2, R3 and R4 are hydrogen.
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Concerning R5, the specification par. 58 exemplifies a carbonyl group being a C1-6 carbon chain, wherein each carbon atom of a given chain can form the carbonyl. Currently, the R5 in Das et al. is a C1 alkyl forming a carbonyl group (See scheme 8 of Das et al.). In par. 35 of specification the term “substituted” refers to a compound wherein a hydrogen is replaced by another functional group. Currently, the hydrogen position of the C1 carbonyl group R5 in Das et al. is substituted with an alcohol or a alkoxy group (See scheme 8 of Das et al.).
However, Das et al. does not teach utilizing the polymers in medical and/or dental polymers/appliances.
It would not have been obvious to have modified the prior art to arrive at the current invention. There being no reason to do so.
Ruppert (USPGPub2017/0156990, Published 06-2017) does teach polymers containing 2-phenoxyethylacrylate monomers useful in prosthetic applications (claim 15).
However, the phenyl group in 2-phenoxyethylacrylate is not taught to be substituted with the current R5 substituents. Additionally, current claim 14 does not allow for the current R1 and R5 substituents to be simultaneously H. The phenyl group in 2-phenoxyethylacrylate is not taught to be substituted.
It would not have been obvious to have modified the prior art to arrive at the current invention. There being no reason to do so.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAINE G DOLETSKI whose telephone number is (571)272-2766. The examiner can normally be reached M-F 7-4 EST.
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/B.G.D/ Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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