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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I Claims 1-8 in the reply filed on June 18, 2025 is acknowledged.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
To clarify the record, the election of June 18, 2025 is without traverse.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The formulas and equivalents of Claim 1 necessarily result in the structure of Claim 6 as amines and epoxies necessarily react in ring opening mechanism. Therefore, Claim 6 does not further limit Claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (CN107154513).
Li teaches in the abstract figure and throughout the disclosure the reaction of polyethylene glycol diglycidyl ether with a polyether amine based on polypropylene (DPPO). The figure shows crosslinking between the chains anticipating the crosslinked resin of Claim 1. The gel teaching of ¶[0002] also reasonably suggests the crosslinking of the claims must be present. The hydroxyl groups are on the main chain as will be the remaining glycidyl groups that are unreacted. Further, ¶[0015] teaches discrete values of the molecular weight of the epoxy ether polymer (500) and also the molecular weight of the polyamine (2000 – exemplified ¶[0030]). The specific combination of 500 and 2000 is exemplified in ¶[0057]. See also ¶[0046]. These are sufficiently specific to anticipate the ranges of Claim 3 and Claim 5 along with the structures of Claim 2 and Claim 4 and the combination reaction product of Claim 6 as this is the intermediate reaction product that leads to the formation of the crosslinked network.
¶[0072] exemplifies 0.2 g PEGDE(1 mol/500g)(2 epoxy eq/ 1 mol) = 0.0008 eq epoxy.
0.4 g DPPO(1 mol/2000g)(4 amine eq/ 1 mol) = 0.0008 eq amine.
Amine and epoxy are equivalents anticipating Claim 1’s range. Additionally to get the reaction product of Claim 6 the amount of equivalents must be equal and as Claim 6 is anticipated therefore, the equal equivalent limitation is also anticipated.
As the network is formed from reaction of epoxy with amine groups the secondary hydroxyls formed are on the main chain along with the epoxy groups being on the main chain as the epoxy used is difunctional rather than tri- or higher functional (i.e. there is no branching in the monomers used to form the network as a crosslinked network will have branching regardless because it is crosslinked). This anticipates said limitation of Claim 1 and also Claim 8 as the lack of branching reasonably suggests the hydroxyl groups are restricted to the main chain as recited. Additionally, the as-filed specification gives no other information as to how the secondary hydroxyls could not be restricted as recited with it comes to reacting diglyceryl ethers with diamines. As the hydroxyl groups are restricted as claimed and Applicant discloses this state leads to higher oxidation potentials (¶[0070] as-filed specification), and the epoxy ether polymer is PEGDGE as Applicant has used, one of ordinary skill in the art is reasonably suggested the oxidation potential of the resin must be 4.36V as claimed in Claim 7.
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.
Claim 1, 2, 4, 6, 7, 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12, 13, 14, and 16 of copending Application No. 17/335376. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 12, 13, 14 and 16 of 17/335376 specifically teach instant Claims 1, 2, 4, 6, 7 and 8 in a specific application environment. The oxidation potential of Claim 7 must be present as the specific epoxy resin is used that produces this oxidation potential according to Applicant’s as-filed specification. (¶[0070] as-filed specification)
To get the reaction product of Claim 6 the amount of equivalents must be equal and as Claim 6 is anticipated therefore, the equal equivalent limitation is also anticipated.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-14 of U.S. Patent No. 11,579,117. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 8-14 of U.S. 11,579,117 specifically teach instant Claims 1-8 in a specific application environment. The oxidation potential of Claim 7 must be present as the specific epoxy resin is used that produces this oxidation potential according to Applicant’s as-filed specification. (¶[0070] as-filed specification)
To get the reaction product of Claim 6 the amount of equivalents must be equal and as Claim 6 is anticipated therefore, the equal equivalent limitation is also anticipated.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,664,533. Although the claims at issue are not identical, they are not patentably distinct from each other because practicing the method of Claims 1-9 of U.S. 11,664,533 necessarily leads one of ordinary skill in the art to products that anticipate instant claims 1-8. To get the reaction product of Claim 6 the amount of equivalents must be equal and as Claim 6 is anticipated therefore, the equal equivalent limitation is also anticipated.
Response to Arguments
Applicant’s claim amendments and remarks filed September 30, 2025 have been fully considered but are not sufficient to move the application to allowance. §112 rejections and §102 rejections over Ohfuska and Pastine are withdrawn as Ohfuska and Pastine do not reject Claim 6 which is considered to require equal equivalents of epoxy and amine to accomplish. The new §112 4th and modification the rejection of Li have been necessitated by Applicant’s claim amendment to epoxy:amine equivalents. Additionally, the non-statutory double patenting rejections of record have been updated to address the new limitation which is also necessitated by Applicant’s amendment.
Applicant’s remarks filed September 30, 2025 have been fully considered but are not persuasive. Applicant present no arguments to the non-statutory double patenting rejections of record and, therefore, these rejections are maintained.
Applicant’s remarks to Li are not persuasive. As above, Li teaches the equivalents Applicant argues are not present in Li. Applicant provides no other arguments to Li not specifying the equivalents limitation other than simply Li does not state the limitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766
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