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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 6-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN1793197A in view of CN1546006A
With regard to claim 6 note CN1793197A discloses a method for preparing biodegradable polymer microspheres by polymerizing biodegradable polymeric monomers including aliphatic polyester monomers such as lactide, glycoside, and caprolactone in the presence of a catalyst to form biodegradable polyester microspheres. CN1793197A further teaches suitable polymerization catalysts, including stannous octoate and tine chloride, as well as reaction temperatures and polymerization conditions.
CN1546006A discloses biodegradable polymer microspheres formed from biodegradable polymers including PLE-PEG, PLGA, PLA-PCL and related biodegradable polyester materials. CN1546006A further teaches the use of polyethylene glycol PEG and PEG biodegradable polymer systems for preparing biodegradable polymer microspheres.
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ the polymerization method of CN1793197A in order to employ the biodegradable polymer systems and PEG materials taught by CN1546006A because both references are directed to the preparation of biodegradable polymer microspheres for drug delivery applications and seek to improve biocompatibility, biodegradability and microsphere performance. One of ordinary skill would have expected to have had a reasonable expectation of success in combining these teachings.
With regard to claim 7 CN1793197A discloses lactide, glycolide and caprolactone as biodegradable cyclic ester monomers. See page 3 lines 26-27.
With regard to claim 8, note background section of CN1793197A.
With regard to claim 9 CN1793197A discloses catalysts including stannous octoate, tin chloride, zinc chloride and zinc oxide in amounts which fall within the claimed catalysts ratio. See page 3 line 38.
With regard to claim 10, generally, it is prima facie obvious to select a known material, such as an antioxidant, for incorporation into a composition, based on its recognized suitability for its intended purpose. See Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). (Selection of solvent having boiling point and vapor pressure properties recognized as being ideal for printing inks into printing ink compositions found obvious on its face). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). (Selection of a known plastic to make a plastic container found obvious on its face).
With regard to claim 11 CN1793197A discloses polymerization temperatures of approximately 75-100C which overlap the claimed ranges. See page 3 line 40.
With regard to claim 12, note background section of CN1793197A as well as the discussion for claim 6 above.
With regard to claim 13 CN1793197A discloses lactide and caprolactone. See page 3 lines 26-27.
With regard to claim 14 CN1793197A discloses lactide and caprolactone and glycolide as suitable cyclic ester monomers. See page 3 lines 26-27.
With regard to claim 15 CN1793197A discloses stannous octoate and tin chloride as polymerization initiators or catalysts. See page 3 lines 28-29.
In conclusion, in view of the above, there appears to be no significant difference
between the reference(s) and that which is claimed by applicant(s). Any differences not
specifically mentioned appear to be conventional. Consequently, the claimed invention
cannot be deemed as unobvious and accordingly is unpatentable.
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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/Terressa Boykin/ Primary Examiner, Art Unit 1765
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