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 .
Status of the Claims
2. Claims 19-20 are currently pending. This office action is in response to the amendment filed on 09/15/2025.
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.
3. Claims 19-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 3 of U.S. Patent No. 10,106,637 B2 in view of Mentak 740 (US 2013/0231740 A1).
Concerning claims 19-20 the patent teaches a copolymer which comprises vinyl naphthalene in an amount of 18 to 28 % by weight, 2-(2-ethoxyethoxy)ethyl acrylate in an amount of from 39 to 49 % by weight, hydroxyethyl acrylate in an amount from 23 to 33 % by weight, a crosslinker in an amount of from 2.5 % to 3.5 % by weight and an ultraviolet light absorbing material in an amount of from 0.5 to 1.5 % by weight (claim 1). The patent teaches that the ultraviolet absorbing material can be one of the claimed compounds (claim 3).
The patent does not specifically teach the use of hydroxyethyl methacrylate instead of hydroxyethyl acrylate.
Mentak 740 is drawn to similar copolymers and teaches that examples of hydrophilic monomers include hydroxyethyl acrylate and hydroxyethyl methacrylate (paragraph 0036). As such Mentak 740 teaches that these monomers are substantially equivalent and interchangeable with one another particularly since (meth)acrylate is a well known term of art that indicates either an acrylate or a methacrylate can be used for a particular monomer.
It would have been obvious to one of ordinary skill in the art at the time of filling to use hydroxyethyl methacrylate instead of hydroxyethyl acrylate to give the claimed composition in the patent because Mentak 740 teaches that these monomers are substantially equivalent and interchangeable with one another.
Allowable Subject Matter
4. Claims 19-20 are allowable over the prior art of record but are rejected over non statutory double patenting as is indicated above
The following is a statement of reasons for the indication of allowable subject matter: The claims are allowable over the closest prior art of record of Pascault (US 6,878,776 B1).
Pascault teaches crosslinked polymer microparticles that are made by polymerization of
10-40 mol% Cardura E10 (meth)Acrylate,
10-75 mol% of butyl and/or tert-butyl and/or ethylhexyl and/or 2-(2-ethoxyethoxyethyl (meth)acrylate and styrene with a molar ratio of styrene to (meth)acrylic monomer which can vary from 0 to 0.2
5-40 mol% of hydroxyethyl (meth)acrylate or maleic anhydride or (meth)Acrylic acid or of glycidyl methacrylate
2-10 mol% of hexane diol and/or propylene glyocol and/or neopentyl glycol and/or trimethylolpropane (meth)acrylate,
with the sum of the molar percentages of these constituents being equal to 100 (column 11 lines 50-65).
Pascault does not teach or fairly suggest the claimed copolymer having the claimed combination of monomers particularly the specifically claimed uv absorbing materials.
Response to Arguments
5. Applicant's arguments filed 09/15/2025 have been fully considered but they are not persuasive. Applicant argues regarding the double patenting rejection over US patent No 10,106,637 that applicant will file a terminal disclaimer over the ‘637 patent and thus the rejection will be rendered moot.
This argument is not found to be persuasive as no terminal disclaimer has been filed and until such terminal disclaimer has been filed and approved the double patenting rejection provided above can not be removed.
Conclusion
6. Claims 19-20 are rejected over double patenting rejections. Claims 19-20 are allowable over the prior art of record.
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 DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L MILLER/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763