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 .
Response to Arguments
In their response the applicants amended the claims to further limit the scope of surface coated titanium dioxide particles. Specifically, the amendment recites that the titanium dioxide particles are coated with alumina, combination of alumina and silica, and combination of alumina, silica and zirconia.
Disclosure of Butuc which is utilized to meet surface treated titania as well as coated titania, does not identify specific compounds (organic or inorganic) which could meet the limitations of amended claims.
It is examiner’s position that while Butuc teaches surface treated titania and coated titania, the teaching is too generic and does not provide any definition or discussion as to what the specific surface treatments and surface coating can be. Therefore, the titania of Butuc does not meet the titania of the instant invention.
In summary, prior art of record is overcome. Since updated search did not identify any new references that would meet instant invention, claims are considered as allowable over the prior art of record.
With respect to the Double Patenting rejection, co-pending application 17/628803 is allowed therefore Terminal Disclaimer is required to overcome the rejection. Co-pending application 18/530417 is still pending and this application would be first to allow. The rejection over ‘417 application can be withdrawn. The rejection of ‘417 application does contain a double patenting rejection over instant invention which will be maintained.
This office action will maintain all of the Double Patenting rejections in the event ‘417 issues first.
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 13-15, 17, 21-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 7, 11, 14-16, 17-20 of copending Application No. 18/830,711. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1,2, 5 and 7 of co-pending application ‘711 discloses composition comprising PEG:PDMAEMA block copolymer which is used with titanium dioxide of claim 20. Claim 2 of ‘711 further states that block copolymer can have multiple blocks which include diblock and triblock (also in claim 3).
Claim 11 states that the molar ratio of PEG to PDMAEMA is 1:0.1 to 1:5.
Claim 19 discloses use of solvent carrier and pigment.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 13-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-26, 29-30 of co-pending Application No. 18/530,417 (‘417). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 13 of ‘471 discloses use of diblock and/or triblock polymers comprising PEG block and PDMAEMA and carrier. Which meets instant claims 13 and 14
Claims 14 and 16 of ‘471 disclose aqueous composition which is latex paint which meets instant claim 14.
Claim 15 of 471 discloses that composition is oil-based composition which meets instant claim 15.
Claim 17 of ‘471 is identical to instant claim 17.
Claims 18 and 19 of ‘471 disclose the same pH values as instant claims 18 and 19.
Claim 20 of ‘471 discloses the same amount of diblock as instant claim 20.
Claim 21 of ‘471 limits the polymer to diblock which is the same as instant claim 21.
Claim 22 of ‘471 discloses ratio between PEG and PDMAEMA which is the same ratio as that of the instant claim 22.
Claim 23 of ‘471 limits invention to triblock which is also the limitation of instant claim 23.
Claim 24 of ‘471 discloses ratio of the triblock polymer that is within the same range as the ratio of the instant claim 24.
Claim 25 of ‘471 discloses molecular weight of PEG that encompasses the molecular weight of the PIG of the instant claim 25.
Claim 26 of ‘471 discloses molecular weight of PDMAEMA which encompasses the molecular weight of the instant claim 26.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 10, 2026
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