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 .
Election/Restrictions
Claims 13-20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/1/26.
Applicant's election with traverse of Group I in the reply filed on 9/1/26 is acknowledged. The traversal is on the ground(s) that there would be no serious burden associated with examination of both groups. This is not found persuasive because the method of Group II includes limitations that are not present in the product of Group I that would require additional search and consideration.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
Claim 2, e.g., recites “a gradual transition” between the first and second visual appearances. For the purposes of this action, gradual is being interpreted to mean not instantaneous.
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 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (US 6,458,867).
Claims 1-10: Wang teaches a lubricious hydrophilic coating on a catheter (Abst.), comprising PVP (9:20-37) and vitamin E (i.e. claimed tocopherol and claimed oil-like substance) (11:37-46). Wang does not expressly teach that the coating changes visual appearance when hydrated. However, Wang teaches the same coating using the same components as those which applicant discloses to yield the claimed changes in visual appearance (see, e.g., ¶¶ 0011-0013 of applicant’s specification). Therefore, the appearance changes of claims 1-6 are considered inherent in Wang.
Claim 11: Wang teaches that 0.02g of vitamin E is used (15:14-20)
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Wang.
Claim 12: Wang fails to teach the claimed weight percentage. However, Wang teaches that the vitamin E is included as an antioxidant (11:36-46). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have included 3.5-80 wt% vitamin E depending on the needed amount of anti-oxidation properties in the coating with the predictable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
