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 .
Claim Objections
Claim 10 is objected to because of the following informalities: claim 10 is dependent from claim 8 which is a cancelled claim. Appropriate correction is required.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al., US Patent Application Publication No. 2017/0181669 (hereinafter referred to as Lin) in view of Fathi et al., US Patent No. 11,219,639 (hereinafter referred to as Fathi).
Regarding claim 1, Lin discloses a composition comprising a hydrogel, the hydrogel comprising a polymer of formula I (Para. [0420]; Figure 17, PAM-ran-PAAPBA) wherein Y comprises one or more repeating units of formula (3), wherein R1 is H or OH (Para. [0420], "N-hydroxyethyl acrylamide PHEAA-ran-PAAPBA"); and moiety similar to Z of formula (4) wherein each of R1 to R6 is H and at least one unit of Z comprises BO2H2 (Para. [0420], "acrylamidophenylboronic acid PHEAA-ran-PAAPBA") and similar polymers to a block X related to formula (2) (Para. [0149], "PEGMA" and Figure 17, “PAM-ran-PAAPBA”); and n, I, j and k are at least one (Para. [0149]-[0420] and Figure 17, PAM-ran-PAAPBA).
Lin does not, however, disclose an acrylate of formula 2; a methacrylamide of formula 4; or a specific embodiment of a triblock polymer of formula I comprising X, Y and Z wherein n, i, j, and k, are each independently an integer from 1 to 4000 as recited in claim 1.
Fathi discloses a polymer comprising at least one antiseptic/analgesic/anti-inflammatory monomeric unit in conjunction with at least three further monomeric units, said three further monomeric units eliciting properties selected from the group consisting of: temperature activation, water solubility, mechanical strength, protein/polysaccharide bonding capacity, and combinations thereof (motivation to combine the references). The polymer has a water-soluble monomeric unit is a hydrophilic ethylene glycol (OEGMA) moiety; the mechanical strength-conferring monomeric unit is polylactide-co-2-hydroxy-ethyl-methyl acrylate (PLA/HEMA); the protein-reactive monomeric unit is an N-acryloxysuccinimide (NAS) moiety; and the thermosetting monomeric unit is an N-isopropyl acrylamide (NIPAAm) moiety. The anti-septic/analgesic/anti-inflammatory monomeric unit comprises a methacrylic ester derivative of salicylic acid (5-HMA or 4-HMA, or a combination thereof). It wold have been obvious to use the monomeric units reading on formula 2 and formula 4 of claim 1 from Fathi as monomeric units in the polymer of Lin for the reasons discussed above.
Regarding claim 17, Lin discloses a method, for making a composition comprising a hydrogel, the method comprises forming a polymer of formula I via a radial process (Para. [0246], "RAFT polymerization"), where X comprises one or more repeating units of a polyethylene methacrylate related to formula (2) (Para. [0149], "PEGMA" and Figure 17, PAM-ran-PAAPBA); Y comprises one or more repeating units of formula (3), wherein R1 is H or OH (Para. [0420], "PHEAA-ran-PAAPBA"); Z comprises one or more repeating units of formula (4) wherein each of R1 to R6 is H and at least one unit of Z comprises BO2H2 (Para. [0420], "PHEAA-ran-PAAPBA") and n, I, j and k are at least one (Para. [0149]-[0420] and Figure 17, PAM-ran-PAAPBA).
Lin does not, however, disclose the exact acrylamide of formula 2 used in the hydrogel polymer and the conjugation of formula.5 to at least one repeating unit of Y to produce a norbenene-functionalized polymer of formula I as recited in claim 17.
See discussion above regarding the Fathi reference.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5, 10-22 and 26 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-21 of application No. 19/120,512. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '512 application discloses the same limitations as does the instant application and would therefore be obvious sin light of the disclosures discussed above and incorporated herein by reference.
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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
Prosecution Insights