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 .
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 8-11, 16-17, 22, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakanishi et al., EP 1072627.
As an initial matter, whereas Applicant characterizes the invention of claim 8 as a paint additive, the Examiner regards this simply as a recitation of intended use. According to MPEP 2112.02, “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim).
Nakanishi teaches in Example 1 a polysiloxane-polyether graft copolymer derived from precisely the same reactants as are employed in Synthesis Example 1 of the instant Specification. The Examiner appreciates that the relative molar contributions of the reactants that provide oligosiloxane pendant groups and oligoether pendant groups are not the same and, therefore, one of ordinary skill may expect that their products will differ in the relative ratios of pendant siloxane- and oligoether segments. It is, nevertheless, the Examiner’s position that the prior art polymer will inherently possess a weight-average molecular weight well within the claimed range notwithstanding this structural difference given that the aforementioned polymer chains make only a relatively minor contribution to the overall structure (only 5 total substituents on a polydiorganosiloxane backbone totaling 47 repeat units are either of the oligosiloxane or oligoether chains). The aforementioned reaction is carried out in an organic solvent and, thus, there is no patentable distinction between the final reaction mixture of prior art Example 1 and the invention defined by claim 9.
As for claims 10 and 11, the only required material(s) of the composition disclosed in these claims is the copolymer and solvent of claims 8 and 9, which the Examiner has already demonstrated as unpatentable.
Rather than further limiting the makeup of the so-called paint compositions of claims 10 and 11, claims 16 and 17 instead outline how they are to be used.
As for claims 22 and 23, the prior art copolymers are formulated into cosmetic compositions, which can be thought of as coatings for the skin.
Claims 8-11, 16-17, 22, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deeth et al., U.S. Patent Application Publication No. 2013/0046028.
Applicant is directed to Production Example 2 where is disclosed the formation of a copolymer conforming with a formula MD400DR*416DR*214M where DR*41 is as defined in [0145] and DR*21 has a structure homologous with the polyether macromer depicted in [0143] except that the ethylenically-unsaturated group is reduced. It can be verified mathematically that a polymer with this structure has a molecular weight within the claimed range. (As an aside, it is appreciated that the polyether segments of the prior art copolymer are terminated with a hydroxyl group whereas R4 and R5 in formulae (2) and (3) are alkyl- or acyl groups. Still, paragraphs [0082,0085] indicate that the graft polyether chains may be similarly-terminated and it is the Examiner’s position that copolymers like that in production example 2, but where the hydrogen atom is replaced with an alkyl/acyl group would be at once envisaged in light of those teachings.
All of the same analysis laid out in explaining the unpatentability of the claims over Nakanishi, including the treatment of the phrase “paint additive” and “used for antifouling paint” applies here as well.
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 8, 9, and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 7 of copending Application No. 17/768,673 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. The body of instant claim 8 and co-pending claim 1 overlap in scope in most respects with the qualifier that the latter attaches a couple of mathematical expressions with which the branched polysiloxane-polyether must comply. The breadth of the copolymers defined by instant claim 1 is such that those of co-pending claim 1 would be encompassed within.
As for claim 22, while it is appreciated that the compositions defined by the instant claims do not necessarily contain water, the Examiner submits that coatings derived from a composition that is water-based are generally dried with the concomitant evaporation of water, in which case there would be nothing differentiating the coating layers of instant claim 22 and prior art claim 7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 12-15, 18-21, and 24-27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In both of the above references, the anticipatory copolymer is formulated into cosmetic compositions and it is not obvious why resins of the type specified in claims 12-15 would have been incorporated into a cosmetic composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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June 5, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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