DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 12, 2026 has been entered.
Response to Amendment
3. The amendment filed on February 12, 2026 has been entered in the above-identified application. Claims 1, 6, 9, 10 16, 17, 19 and 20 are amended. Claim 12 is canceled. Claims 1-11 and 13-21 are pending and under consideration.
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.
4. Claims 1-11 and 13-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. US 11426984 B2.
The instant application claims a protected substrate, comprising: a planar substrate comprising a surface; and a burn-off temporary protective layer positioned over at least a portion of the surface, wherein the burn-off temporary protective layer comprises a polyurethane layer, an epoxide layer, or a combination thereof. The claims in US 11426984 B2 recite a protected substrate, comprising: a planar substrate comprising a surface; a temporary protective layer positioned over at least a portion of the surface; a first temporary protective sheet positioned over at least a first portion of the surface; and a second temporary protective sheet positioned over at least a second portion the surface, wherein an overlapping portion of the second temporary protective sheet overlaps an overlapping portion of the first temporary protective sheet at an overlap; wherein a gap is defined by the overlap between the second temporary protective sheet and the portion of the surface, wherein the temporary protective layer comprises a wax, wherein a portion of the temporary protective layer is positioned within the gap between the second temporary protective sheet and the portion of the surface, and wherein the temporary protective layer is removable by burning without substantially damaging the substrate or rendering it unsuitable for its intended use.
US 11426984 B2 does not claim that their protective layer comprises a polyurethane or epoxide coating.
However, O’Dwyer et al. disclose an abrasion and solvent resistant polyurethane protective coating for bilayer windshields. In some of the examples, polyurethane reaction mixtures, typically about 70 percent solids, are applied by drawknife to an untreated float glass substrate. Various polyurethane compositions may be applied by a variety of conventional coating techniques. The thickness of abrasion-resistant coatings is determined by the ability to apply a uniform continuous film to a maximum determined by desired optical properties. (See Abstract and Column 12, lines 1-20).
Accordingly, it would have been obvious to one having ordinary skill in the art use a polyurethane protective layer as the protective coating on the coated substrate claimed in US 11426984 B2 given that O’Dwyer et al. teaches that their polyurethane protective coating provides abrasion and solvent resistance. With regards to the limitation that “the polyurethane layer is formed from an aqueous polyurethane, a polyurethane formed from a two component system, a polyurethane emulsion, an oil-modified polyurethane, and combinations thereof, wherein the epoxide layer is formed from a polyepoxide that comprises two or more epoxy functional groups, an epoxide emulsion, and combinations thereof”, the patentability of a product does not depend on its method of production. If the product is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
5. Claims 1-11 and 13-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11440297 B2.
The instant application claims a protected substrate, comprising: a planar substrate comprising a surface; and a burn-off temporary protective layer positioned over at least a portion of the surface, wherein the burn-off temporary protective layer comprises a polyurethane layer, an epoxide layer, or a combination thereof.
The claims of U.S. Patent No. 11440297 B2 recite a protected substrate, comprising: a planar substrate comprising a surface; and a burn-off temporary protective layer positioned over at least a portion of the surface, wherein the burn-off temporary protective layer comprises polylactic acid (PLA), wherein the burn-off temporary protective layer is removable by a heat treatment process that does not substantially damage the surface.
U.S. Patent No. 11440297 B2 does not claim that their protective layer comprises a polyurethane or epoxide coating.
However, O’Dwyer et al. disclose an abrasion and solvent resistant polyurethane protective coating for bilayer windshields. In some of the examples, polyurethane reaction mixtures, typically about 70 percent solids, are applied by drawknife to an untreated float glass substrate. Various polyurethane compositions may be applied by a variety of conventional coating techniques. The thickness of abrasion-resistant coatings is determined by the ability to apply a uniform continuous film to a maximum determined by desired optical properties. (See Abstract and Column 12, lines 1-20).
Accordingly, it would have been obvious to one having ordinary skill in the art use a polyurethane protective layer as the protective coating on the coated substrate claimed in U.S. Patent No. 11440297 B2 given that O’Dwyer et al. teaches that their polyurethane protective coating provides abrasion and solvent resistance. With regards to the limitation that “the polyurethane layer is formed from an aqueous polyurethane, a polyurethane formed from a two component system, a polyurethane emulsion, an oil-modified polyurethane, and combinations thereof, wherein the epoxide layer is formed from a polyepoxide that comprises two or more epoxy functional groups, an epoxide emulsion, and combinations thereof”, the patentability of a product does not depend on its method of production. If the product is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
6. Claims 1-11 and 13-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No.11602767 B2.
The instant application claims a protected substrate, comprising: a planar substrate comprising a surface; and a burn-off temporary protective layer positioned over at least a portion of the surface, wherein the burn-off temporary protective layer comprises a polyurethane layer, an epoxide layer, or a combination thereof.
Claims of U.S. Patent No.11602767 B2 recite a substrate having a burnable coating mask, comprising: a substrate having a first surface and a second surface opposite the first surface; the first surface comprising a first section and a second section adjacent the first section; a mask coating layer over the first section, wherein the mask coating layer is not present over the second section; and a functional coating layer over at least a portion of the mask coating layer and over the second section; wherein the mask coating layer comprises at least one of a wax, an organic oil, a polyolefin, a polyester, a polycarbonate, a polyether, an aqueous polyurethane, a polyurethane formed from a two component system, a polyurea material, or some combination thereof.
U.S. Patent No.11602767 B2 does not claim that their protective layer comprises a polyurethane or epoxide coating.
However, O’Dwyer et al. disclose an abrasion and solvent resistant polyurethane protective coating for bilayer windshields. In some of the examples, polyurethane reaction mixtures, typically about 70 percent solids, are applied by drawknife to an untreated float glass substrate. Various polyurethane compositions may be applied by a variety of conventional coating techniques. The thickness of abrasion-resistant coatings is determined by the ability to apply a uniform continuous film to a maximum determined by desired optical properties. (See Abstract and Column 12, lines 1-20).
Accordingly, it would have been obvious to one having ordinary skill in the art use a polyurethane protective layer as the protective coating on the coated substrate claimed in U.S. Patent No.11602767 B2 given that O’Dwyer et al. teaches that their polyurethane protective coating provides abrasion and solvent resistance. With regards to the limitation that “the polyurethane layer is formed from an aqueous polyurethane, a polyurethane formed from a two component system, a polyurethane emulsion, an oil-modified polyurethane, and combinations thereof, wherein the epoxide layer is formed from a polyepoxide that comprises two or more epoxy functional groups, an epoxide emulsion, and combinations thereof”, the patentability of a product does not depend on its method of production. If the product is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
7. Claims 1-11 and 13-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-8, 10-14 of copending Application No. 17/677,685. (reference application).
The instant application claims a protected substrate, comprising: a planar substrate comprising a surface; and a burn-off temporary protective layer positioned over at least a portion of the surface, wherein the burn-off temporary protective layer comprises a polyurethane layer, an epoxide layer, or a combination thereof.
Claims of copending Application No. 17/677,685 recite a protected glass substrate, comprising: a planar glass substrate comprising a surface; and a burn-off temporary protective layer positioned over at least a portion of the glass surface, wherein the burn-off temporary protective layer is removable by a heat treatment process that does not substantially damage the glass surface or leave behind any substantial residue.
Copending Application No. 17/677,685 does not claim that their protective layer comprises a polyurethane or epoxide coating.
However, O’Dwyer et al. disclose an abrasion and solvent resistant polyurethane protective coating for bilayer windshields. In some of the examples, polyurethane reaction mixtures, typically about 70 percent solids, are applied by drawknife to an untreated float glass substrate. Various polyurethane compositions may be applied by a variety of conventional coating techniques. The thickness of abrasion-resistant coatings is determined by the ability to apply a uniform continuous film to a maximum determined by desired optical properties. (See Abstract and Column 12, lines 1-20).
Accordingly, it would have been obvious to one having ordinary skill in the art use a polyurethane protective layer as the protective coating on the coated substrate claimed in copending Application No. 17/677,685 given that O’Dwyer et al. teaches that their polyurethane protective coating provides abrasion and solvent resistance. With regards to the limitation that “the polyurethane layer is formed from an aqueous polyurethane, a polyurethane formed from a two component system, a polyurethane emulsion, an oil-modified polyurethane, and combinations thereof, wherein the epoxide layer is formed from a polyepoxide that comprises two or more epoxy functional groups, an epoxide emulsion, and combinations thereof”, the patentability of a product does not depend on its method of production. If the product is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
8. The applicants have asked that the filing of terminal disclaimers be held in abeyance. In view of this, the previous double patenting rejections have been repeated.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787