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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/10/2026 has been entered.
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 1, 4-8 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8-11 of copending Application No. 14/907, 860 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to reaction product of isophorone diisocyanate and only tertiary amine components represented by the formulas of the pending claims, for example, the reaction product of isophorone diisocyanate and 2-[2-2-(dimethylamino)ethoxy]ethyl- methyl amino] ethanol of copending claim 11. The copending claims claim the use of a catalyst. Therefore, the copending claims include more elements and is thus much more specific. Thus the invention of the copending claims is in effect a “species” of the “generic” invention of the application claims. Since the application claims are anticipated by the copending claims, they are not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 8, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 202005/0069649 to Ambrose et al. in view of JP-2017/132936 to Masahito et al.
As to claims 1-4, 8, and 29, Ambrose discloses catalysts comprising only tertiary amine groups and urethane groups (0008) derived from diisocyanate including isophorone diisocyanate (0016, Example B) and tertiary amines including dimethylamino propylamine (Example B). Ambrose discloses wherein the product is substantially free of isocyanate functionality (0020).
Ambrose does not expressly disclose the elected tertiary amine component.
However, Masahito discloses reaction products of diisocyanate and tertiary amines including the ones taught in Ambrose and the elected compound represented by the following:
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At the time of filing it would have been obvious to a person of ordinary skill in the art to substitute a known type of tertiary amine taught in Ambrose with another known type of tertiary amine taught in Masahito based on the tenet wherein it is prima facie obvious to add a known ingredient to a known composition for its known function. See MPEP2100. Further, because of the increased in reacting groups the amine taught in Masahito would not remain in the free state and thus prevent odor elimination and improving further reactions from yellowing (0011).
Claims 1-4, 8, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2011/0237742 to Floshbach et al. in view of JP-2017/132936 to Masahito et al.
As to claims 1-4, 8, and 29, Flosbach discloses a liquid two component coating composition comprising a catalyst that is the reaction product of only a diisocyanate, in particular, isophorone diisocyanate and a tertiary amine component (0086) wherein suitable tertiary amines include N,N-dimethyldiethanolamine, N,N-dimethylaminopropanol. Flosbach teaches a full reaction with the diisocyanate and the tertiary amine at ratios of 1:1.1 (0084).
Flosbach does not expressly disclose the elected tertiary amine component.
However, Masahito discloses reaction products of diisocyanate and tertiary amines including the ones taught in Flosbach and the elected compound represented by the following:
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At the time of filing it would have been obvious to a person of ordinary skill in the art to substitute a known type of tertiary amine taught in Flosbach with another known type of tertiary amine taught in Masahito based on the tenet wherein it is prima facie obvious to add a known ingredient to a known composition for its known function. See MPEP2100. Further, because of the increased in reacting groups the amine taught in Masahito would not remain in the free state and thus prevent odor elimination and improving further reactions from yellowing (0011).
Response to Arguments
Applicant’s arguments with respect to claims 1-4, 8, and 29 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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, 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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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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