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.
DETAILED ACTION
Claims 1-20 are pending in this application. This application claims priority to provisional application 63/525,223, filed on 07/06/2023.
Election/Restrictions
Applicants’ election without traverse of group I, claims 1-12, and subsequent specie election of iodinated polyhydroxylated initiator 220 of fig. 2 in claims 6 and 9-12 among claims 6-12, filed on 07/20/2026 is acknowledged. Since iodinated polyhydroxylated initiator 220 of fig. 2 is not recited in claims, the specie election of iodinated polyhydroxylated initiator 220 of fig. 2 is construed as the species in claims 9-12 among claims 6-12.
Claims 7, 8, and 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group or species, there being no allowable generic or linking claim.
Claims 1-6 and 9-12 will presently be examined to the extent they read on the elected subject matter of record.
Claim Objections
Claim 9 is objected to because of the following informalities: misspelling in “though” should be “through” based on the context. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-6, and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grinstar et al. (US 2011/0158909 A1).
Grinstar et al. meet all of the limitations of claims 1, 3, 4, 6 and 9-11. Grinstar et al. disclose contrast agents comprising iodinated (the claimed radiopaque in the instant claim 1) organic molecules and exemplified in figure 10
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which contains 2 iodinated aromatic section (the claimed core region, the instant claims 1 and 6 and claim 11)
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directly attached to each other by amide bond
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(the instant claims 9 and 10) (paragraph 23-25), with 4 bigger arms
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and each of the bigger arms containing 1 arm
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and 1 arm
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(total 8, the claimed polymer arms) attached to the core section and all 8 of them having -NH3+ which is a reactive moiety (the instant claim 1) and having oxazoline monomer ring-opening residue
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(the instant claim 3) and total of 12 monomers (each of the 4 bigger arms having 1 monomer connecting to each of the 2 arms and 1 in each of the 2 arms) (the instant claim 4).
Grinstar et al. meet all of the limitations of claims 1, 3, 5, 6 and 9-11. Grinstar et al. disclose contrast agents comprising iodinated (the claimed radiopaque in the instant claim 1) organic molecules and exemplified in figure 12
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which contains 2 iodinated aromatic section (the claimed core region, the instant claims 1 and 6 and claim 11)
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directly attached to each other by amide bond
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(the instant claims 9 and 10), with 4 bigger arms
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and each of the bigger arms containing 2 arms
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arm (total 8, the claimed polymer arms) attached to the core section and all 8 of them having -OH which is a reactive moiety (the instant claim 1 and nucleophile in the instant claim 5) and having oxazoline monomer ring-opening residue
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(the instant claim 3).
Grinstar et al. meet all of the limitations of claim 12. The limitation in the instant claim 12 is a product-by-process limitation. The determination of patentability of a product-by-process claim is based on the product itself, not its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. The burden is shifted to the applicant to provide evidence to demonstrate that the structure of the claimed agent resulted from the said process is different from that of agent disclosed in the prior art. See MPEP 2113.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1-6 and 9-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Grinstar et al. (US 2011/0158909 A1),
The teachings of Grinstar et al. are discussed above and applied in the same manner. Grinstar et al. claim in claim 2 an agent
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(the instant claims 1, 6, and 9-11) with R1 and R2 being CONHR'2 with R' being (CH2CH2O)nR'' with n=1-2000 (the claimed C2 alkylene oxide in the instant claims 3 and 4) and R'' being OH (a reactive group and nucleophile in the instant claims 1 and 5) or R' being COO(CH2)nOR'' (the claimed ester group in the instant claim 2) with n=1-2000 and R'' being OH (a reactive group and nucleophile in the instant claims 1 and 5).
Grinstar et al. do not teach the same monomer number in the instant claim 4 (1-2000 vs the claimed 10-1000).
This deficiency is cured by a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed range of monomer number is 10-1000 and the range of monomer number taught in the prior art is 1-2000 and therefor, includes the claimed range.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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