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 .
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 16-17, 20-21 and 34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-20 and 27-28 of copending Application No. 17/995,521 (reference application, which is now allowed). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims (eg #18) polyurethanes made from isocyanates and lignin derived aromatic alcohols. Applicant’s formula (I) is slightly broader in scope than the copending application’s formula (Ib) in that “R” can be -OH or -CH3, and “R5” can be hydroxyalkyl or H. The copending application’s claim 27 calls for “at least 80%” of the depolymerized lignin being the claimed monomer which overlaps applicant’s 10-90%.
Amended claims 16-17, 19-25 and 32-35 overcome the prior art on record.
Reference Zhao teaches polyurethane structure PU-4 derived from aromatic diisocyanate and vanillyl alcohol, VA (corresponding to 100 % by weight of lignin-derived monomers) which reads on the monomer Formula (I), where R is OH, R1 and R2 are H, R3 is -OCH3, R4 and R5 is H, and n=1.
Lee discloses polyurethane such as VA40 derived from aromatic diisocyanate and vanillyl alcohol VA which reads on the monomer corresponding to Formula (I), where R is OH, R1 and R2 are H, R3 is -OCH3, R4 and R5 is H, and n=1.
Reference Masashi teaches polyurethane derived (Synthesis Example 3) from aromatic diisocyanate, hydroxyphenylethyl alcohol, polycarbonate diol with molecular weight 800 Da (corresponding to a polyhydroxy compound). The monomer hydroxyphenylethyl alcohol corresponds to Formula (I), where R is OH, R1, R2, R3, R4, R5 are H, and n=2.
However, none of the above references address the limitation that monomer corresponding to Formula (I) is present in the required amount of 10-90 % by weight.
Response to Arguments
Applicant’s arguments, filed on 01/14/2026 with respect to the prior art rejection over references Zhao, Lee and Masashi have been fully considered and are persuasive. Therefore, the rejections over the above references have been withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner
Art Unit 1765
/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 3/12/26