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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/24/2025 has been entered. Claim 1 is amended; claims 2, 6, 10-14, 17-18, 20, 23-26, and 28 are cancelled; claims 16, 19, 21-22, and 32 are withdrawn from consideration as being drawn to non-elected invention; and claims 33-34 are added. Accordingly, claims 1, 3-5, 7-9, 15-16, 19, 21-22, 27 and 29-34 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-5, 7-9, 15, 27, 29-31, and 33-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-34 of copending Application No. 18/862,735. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to compositions comprising a polymer of at least one acetoacetyl functional ethylenically unsaturated monomer of formula I or II:
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, having similar molecular weight and a polyetheramine. The amount of acetoacetyl functional ethylenically unsaturated monomer in copending claims is open to any amount including greater than 90% as in present claims.
Copending claims are silent with respect to the species of polyetheramine; and the ratio of polymer to polyetheramine.
However, applicant attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of copending application, wherein the polyether amine is a derivative of formula:
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wherein R7 is H or methyl, R8 is H or methyl, and having weight average molecular weight of 200 to 4,000 (page 15, lines 25-32). The binder polymer may be present in amounts of 1 to 90% by weight (page 17, lines 5-10). Additionally, polyetheramine is present in amounts of 0 to 10% in claim 31 of copending application. Therefore, in light of the teachings in general disclosure of copending application, it would have been obvious to one skilled in art prior to the filing of present application to include the polyether amine having the above stated formula in the coating composition including a ratio for the polymer to polyetheramine in overlapping ranges, absent evidence to the contrary. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1, 3, 5, 8-9, 15 and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 2012/0148858 A1) in view of Krasia et al (Chem. Commun., 2003; pp538-539) and Huntsman (downloaded from internet on 2/16/2023).
Regarding claims 1 and 29-31, Wu discloses an aldehyde abatement composition comprising amino functional compound with a primary amino functional group (abstract). See example NJ02 (Table 3) wherein the formaldehyde abatement coating composition comprises AAEM functional acrylic latex (i.e., acetoacetoxyethyl methacrylate and reads on acetoacetyl functional ethylenically unsaturated monomer of formula I in present claim 1, wherein R1, and R2 are H, R3 is C1-alkyl, R4 is C2-alkylene, R5 = H, R6 = methyl, X = O, Y = O, a = 1 and b = 1) and Jeffamine T403. Suitable amino functional compounds with a primary amino functional group include polyether amines having at least one primary amino group attached to a polyether backbone. Examples of suitable polyetheramines include diamines (paragraph 0013) which reads on polyether diamine in present claim 1. It is noted that monomer other than acetoacetyl functional ethylenically unsaturated monomer is optional, since it is present in amounts of 0% and not required.
Wu is silent with respect to the amount of acetoacetyl functional ethylenically unsaturated monomer; and species of polyether diamine.
However, regarding amount of acetoacetyl functional ethylenically unsaturated monomer, Wu in the general disclosure teaches that acetoacetyl functional polymer is added to the aldehyde abatement composition to provide additional reactivity with an aldehyde and reduction of aldehyde in the environment near the substrate. Amino functional groups on amino-functional compound react with the acetoacetyl functional group to enhance the reactivity of acetoacetyl group towards aldehydes (paragraph 0024). Additionally, Krasia et al teach a homopolymer of 2-(acetoacetoxy)ethyl methacrylate (Fig. 1) which reads on polymer containing at least 90% of at least one acetoacetyl functional ethyenically unsaturated monomer in present claim 1. Therefore, in light of the teachings in Krasia et al and given that Wu teaches its polymer comprising acetoacetyl functional monomer in combination with amine reduces the aldehyde in its compositions, it would have been obvious to one skilled in art prior to the filing of present application to include the homopolymer of 2-(acetoacetoxy)ethyl methacrylate, in the composition, of Wu, for above mentioned advantages.
Regarding species of polyether diamine, Wu in the general disclosure teach that suitable polyether amines are available under the trade designation Huntsman (paragraph 0013). Examples of Jeffamine available from Huntsman include polyether diamines represented by formula
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and have a molecular weight of from 230 to 4000 (page 4) which reads on the polyether diamines in present claims 1 and 29-31. Therefore, in light of the teachings in Huntsman and given that Wu contemplates using Jeffamine available from Huntsman, it would have been obvious to one skilled in art prior to the filing of present application to include any of the polyether amines from Huntsman including the polyether diamines, in the composition, of Wu in view of Krasia et al, absent evidence to the contrary.
Regarding claims 3, 5, and 8, it is noted that 2-(acetoacetoxy)ethyl methacrylate is represented by formula:
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(i.e. reads on monomer of formula I in claim 3 wherein R1, and R2 are H, R3 is C1-alkyl, R4 is C2-alkylene, R5 = H, R6 = methyl, X = O, Y = O, a = 1 and b = 1; monomer of formula I in claim 5 wherein R1, and R2 are H, R3 is methyl, R4 is ethylene, R5 = H, R6 = methyl, X = O, Y = O, a = 1 and b = 1; and monomer of formula Ia in claim 8).
Regarding claim 9, Krasia et al teach a homopolymer of 2-(acetoacetoxy)ethyl methacrylate has a weight average molecular weight of 7656 g/mol (page 538, col. 2, 2nd full paragraph). It is noted that (weight average molecular weight Mw) = Mn (i.e., 6.6 kg/mol) * PDI (i.e., 1.16).
Regarding claim 15, Wu teaches that amount of film-forming additional polymer is preferably from 5 to 95% by weight (paragraph 0027). The amount of amino-functional compound is about 0.1 to 90% by weight (paragraph 0021) which overlaps with the ratio of polymer of acetoacetyl functional ethyenically unsaturated monomer and amine in present claim 15. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Claims 4 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 2012/0148858 A1) in view of Krasia et al (Chem. Commun., 2003; pp538-539), Huntsman (downloaded from internet on 2/16/2023), and Fan et al (WO 2017/011972 A1).
The discussion with respect to Wu, Krasia et al and Huntsman in paragraph 13 above is incorporated here by reference.
Wu, Krasia et al and Huntsman differ with respect to the species of acetoacetyl functional unsaturated monomer.
Fan et al in the same field of endeavor teach polymer comprising as copolymerized units at least one acetoacetoxy functional ethylenically unsaturated monomer (abstract). Examples of acetoacetoxy functional ethylenically unsaturated monomer include acetoacetoxyethyl (meth)acrylate, and allyl acetoacetate (bridging paragraph pages 2-3). Less formaldehyde content in the aqueous solution, higher formaldehyde abatement effectiveness of coating film (bridging paragraph pages 5-6). It is noted that allyl acetoacetate is represented by formula:
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. Therefore, in light of the teachings in Fan et al in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application, to include allyl acetoacetate, of Fan et al, which is functionally equivalent to acetoacetoxyethyl (meth)acrylate, in the co(polymer), of Wu in view of Krasia et al and Huntsman, absent evidence to the contrary.
Response to Arguments
The Applicant's arguments filed 10/24/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that (A) examiner asserted that the new data presented does not demonstrate an unexpected effect as the copolymer used in Example 14 has lower residual aldehyde than homopolymers from examples 5, 9, and 11-12. Applicants disagree with this analysis. Example 14, which involves a copolymer, has a molecular weight of 2.4 million D, whereas examples 5, 9, 11, and 12, which are all 100% homopolymers, have molecular weights of less than 0.05 million D. These are two entirely different dimension polymers. The copolymer samples are more hydrophobic and this increased hydrophobicity contributes to their significantly better hydrolysis stability in the acetoacetate group, which is crucial for the formaldehyde abatement function. In contrast, homopolymers with smaller molecular weights do not display the same level of hydrolysis stability. It is in error to simply compare the two based only on technical effects.
In response, it appears that applicant is stating that a copolymer is more hydrophobic and is crucial for the formaldehyde abatement and therefore unexpected compared to what is taught in the cited prior art. However, the claims are drawn to both a copolymer having at least 90% by weight of acetoacetyl functional ethylenically unsaturated monomer and homopolymer of acetoacetyl functional ethylenically unsaturated monomer. Independent claim is open to any molecular weight and would include homopolymers whose ability to reduce aldehyde is not good as some of the comparative examples. Hence, applicant arguments are not persuasive. Additionally, it is known from teachings in Wu et al, that a combination of polymer comprising acetoacetyl functional ethylenically unsaturated monomer and amine helps reduce aldehyde content.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/
Primary Examiner, Art Unit 1764