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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 67 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The identity of the variable n is unclear because it is (a) functionally illegible (due to small typeface and pixilation) as well as (b) because it is undefined.
Clarification is in order.
Claim 68 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The labels which appear below the diagramed formulas are unclear because they are functionally illegible (due to pixilation).
Clarification is in order.
Claim 70 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The identity of the variables n and m are unclear because they are (a) functionally illegible (due to small typeface and pixilation) as well as (b) because they are undefined. Furthermore, there appears to be an extraneous variable, or mark, i, adjacent to the variable n. But, due to the small typeface and pixilation, whatever it may be is functionally illegible.
Clarification is in order.
Claim 73 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Some of the labels which appear below the diagramed formulas are unclear because they are functionally illegible (due to pixilation).
Clarification is in order.
Claim 74 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The identity of the variables n and m are unclear because they are (a) functionally illegible (due to small typeface and pixilation) as well as (b) because they are undefined.
Clarification is in order.
Claim 77 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Some of the labels which appear below the diagramed formulas are unclear because they are functionally illegible (due to pixilation).
Clarification is in order.
Claims 69, 71, 72, 75, 76 and 78-80 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims all depend, or ultimately depend, from an indefinite claim yet do not relieve the indefiniteness. Dependent claims 69, 71, 72, 75, 76 and 78-80 are also, therefore, indefinite.
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.
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.
Claims 67-69 are rejected under 35 U.S.C. 103 as being unpatentable over the Ph. D. dissertation of Bahar Demirdirek (2016), cited in the IDS.
Inventor teaches a polymer having a backbone that comprises a plurality of units of Formula (I) and which has an average molecular weight of 1000-700,000 Daltons (independent claim 67). Dependent claim 68 teaches that the polymer upon hydrolysis yields salicylic acid and itaconic acid. Dependent claim 69 teaches that the polymer is a homopolymer.
The reference teaches the homopolymer of Formula (I) of instant claim 1 (page 107, Scheme 5.1, SAm-polymer).
Inventor distinguishes over the cited art in that a particular molecular weight range is specified for the polymer. However, one of ordinary skill in the polymer arts, a highly skilled individual, before the effective filing date of the instant invention, would have found it obvious to synthesize a homopolymer utilizing the monomer Formula (I) in whatever weight range the skilled individual might need for a particular application. One of ordinary skill in the art would have been motivated to do so, and with a reasonable expectation of success, because just such a polymer has already been proposed in the dissertation and the polymerization reaction – any polymerization reaction – may be appropriately tailored by one of ordinary skill so as to provide a polymer of suitable length (i.e. molecular weight) for a particular application.
Claim 68 is included in this rejection because a compound and its properties are inseparable (MPEP 2112.01; 2141.02 (V)). The prior art polymer and the instant polymer are the same homo polymer. That being the case, their behavior under hydrolysis conditions will be same. That is, the limitation of claim 68 is intrinsic to the teachings of the cited art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: International Journal of Pharmaceutics (2017), 528, pp. 406-415 is cited to show inventor’s related work (Uhrich) with salicylic acid-based hydrogels (in particular page 407, Scheme 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush, can be reached at 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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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 9/25/2026
