DETAILED ACTION
Claim Status
Claim(s) 1-20 is/are pending.
Claim(s) 1-3, 5-9, 11-20 is/are rejected.
Claim(s) 4, 10 is/are withdrawn from consideration.
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 .
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 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.
Response to Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-6, 9-11) in the reply filed on 05/26/2026 is acknowledged.
Claim(s) 7-8 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 05/26/2026.
Claim Rejections - 35 USC § 103 (AIA )
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-6, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• FUKAGAWA (US 2017/0226251),
and in view of Applicant’s Admissions.
FUKAGAWA ET AL ‘251 discloses liquid compositions for forming a sulfobetaine-based material which is non-adhesive to a biological substance (e.g., an anti-fouling coating), wherein the liquid composition comprises:
(A) a (co)polymer (corresponding to the recited “polymer (a1)” and/or polymer (b1)) derived from:
• a sulfobetaine monomer (I) wherein the sulfobetaine structure contains a -C(=O)-NH- group (corresponding to the recited “structural unit (ii) having a betaine structure that is not of an ester linkage type”) wherein the sulfobetaine monomer (I) contains a (meth)acrylic or vinyl structure, and wherein the sulfobetaine monomer (I) preferably constitutes up to 95 mol% of the copolymer;
• optionally at least one additional betaine monomer (M-1) wherein X1 is -C(=O)-O- (corresponding to the recited “”structural unit (i) having an ester linkage type betaine structure”);
• optionally at least one additional non-betaine monomer (M-2) wherein Y can contain a carboxyl group (corresponding to the recited “structural unit (iii) having a carboxyl group”);
(B) a solvent comprising one or more of:
• water;
• amide compounds (e.g., 1-methyl-2-pyrrolidone (i.e., N-methyl-2-pyroolidone (NMP); N,N-dimethylformamide; N-N-dimethylacetamide; etc.);
• sulfoxide compounds such as DMSO, etc.;
• or mixtures thereof;
wherein the liquid composition preferably containing 10-70 wt% of sulfobetaine-containing (co)polymers.
The liquid compositions can also be a curable composition comprising a mixture of: (i) a (co)polymer of the sulfobetaine monomer; and (ii) one or more additional betaine or non-betaine comonomers; wherein the curable composition can be reacted (e.g., using heat, etc.) to produce a sulfobetaine-based non-adhesive material (e.g., an anti-fouling coating on a substrate). (entire document, paragraph 0004-0006, 0008-0017, 0044-0049, 0055, 0057-0070, 0088-0092, 0113-0141, 0146, 0189, etc.) However, the reference does not specifically mention the solubility parameters of specific solvents.
Applicant admits that N-methyl-2-pyroolidone (NMP) and N,N-dimethylformamide and N-N-dimethylacetamide and dimethyl sulfoxide (DMSO) are organic solvents satisfying the δD and δP and δH and boiling point requirements as recited in claim 1. (Table 4 in the specification).
Regarding claims 1-2, 4-6, 9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a mixture of known solvents (e.g., water in combination with organic solvents such as NMP or N,N-dimethylformamide or N-N-dimethylacetamide or dimethyl sulfoxide (DMSO), as suggested in FUKAGAWA ET AL ‘251 to form a liquid compositions for forming a sulfobetaine-based material (e.g., a coated film, etc.) which is non-adhesive to a biological substance (e.g., for medical devices).
Regarding claim 3, one of ordinary skill would have incorporated known hydrophilic structures (e.g., hydroxyl groups, carboxyl groups, etc.) in the sulfobetaine-containing materials of FUKAGAWA ET AL ‘251 in order to optimize the wetting properties of the sulfobetaine-based anti-fouling coating for specific applications.
Further regarding claims 10-11, since the liquid compositions (co)polymer of FUKAGAWA ET AL ‘251 can comprise a polymer or monomer containing additional betaine monomer (M-1) wherein X1 is -C(=O)-O- (corresponding to the recited “”structural unit (i) having an ester linkage type betaine structure”) in amounts as low as 5 mol% of the copolymer, and can be subjected to heating; the Examiner has reason to believe that at least some of the containing additional betaine monomer (M-1) in the sulfobetaine-based material of FUKAGAWA ET AL ‘251 would experience hydrolysis and react with other comonomers to form the recited “polymer (a2) containing a structural unit (iv) having an ester linkage type betaine structure and a structural unit (v) having a carboxyl group”) as recited in claim 9, the Examiner has reason to believe that at least a portion of the polymer or monomer comprising additional comonomer (M-1) in the sulfobetaine-based copolymers of FUKAGAWA ET AL ‘251, upon being subjected to heating conditions sufficient to convert the liquid composition to a film or coating, would further react (e.g., by hydrolysis) to form at least some amount of “polymer (a2) containing a structural unit (iv) having an ester linkage type betaine structure and a structural unit (v) having a carboxyl group”) as recited in claim 9; therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594.
Further regarding claims 10-11, one of ordinary skill in the art would have made coatings formed from liquid compositions containing the sulfobetaine-based copolymers of FUKAGAWA ET AL ‘251 at least partially water-swellable (e.g., by controlling the degree of crosslinking; by incorporating water-absorbing binders, etc.) in order to: (i) improve compatibility with living tissue and/or biological fluids (which contain a high water content); and/or (ii) to facilitate infusion or release of drugs or other water-soluble biologically active compounds.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CHEN ET AL (US 2016/0355624) disclose betaine-containing coatings.
CHEN ET AL (US 2022/0161456) disclose betaine-containing liquid compositions using a mixture of water and organic solvents.
SAMOUR ET AL (US 3,671,502) and BOWERS ET AL (US 5,284,854) disclose (meth)acrylic copolymers containing betaine structures.
ZHANG E AL (US 2020/0157338) and YAMAMOTO ET AL (US 2020/0223966) disclose coating compositions containing betaine-containing compounds.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
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August 8, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights