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 dated 6/5/2026 applicant’s representative submitted clear and concise arguments which good detail outlined reasons why primary reference of Kittle cannot be properly combined with either Gutman or Yoshinari. Examiner agrees with the arguments and the rejection of record over Kittle and Gutman as well as over Kittle and Yoshinari are withdrawn.
Reference of Kittle submitted in the IDS dated 6/5/2026 is the patent publication of 18/007,503 utilized in the Double Patenting rejection. The reference, due to common inventors, does not qualify as prior art because it does not reflect one year grace period per AIA .
The only pending rejections are double patenting rejections over US 18/007503 and 18/007,819.
Co-pending application 18/007,503 is already allowed and terminal disclaimer will have to be filed.
Co-pending application 18/007,819 is not patented and examiner Sweeney issued double patenting rejection over current application. Since this application will probably allow before 18/007819, the examiner will maintain the rejection for now in the even that ‘819 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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/007,503 (‘503). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Copending application ‘503 discloses a one component powder coating comprising curable resin, one or more curing additives and 10-20 wt.% of dry blended inorganic particulate additive comprising aluminum oxide, aluminum hydroxide and silica with content of silica and powder particle size distribution as required by the instant claims.
While the tribocharged silica is not required in claim 1 of ‘503, it is required in dependent claims. Ratios of the inorganic particulates are also the same in both invention.
In both invention wax coated silica is excluded
Both invention utilize the same type of polymers and a curing system that is capable of curing at a temperature below 160oC.
Both invention claim substrate that is coated with the composition as well as substrate that is coated twice.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/007,819 (‘819). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is almost the same as the claim 1 of ‘819 except that dry blended inorganic particle is utilized I amount of 0.1-15 % by weight which is encompassed by instantly claimed amount of 0.1-25 % by weight. The dry blended additive in ‘819 is utilized in amount of 0.1-35 % by weight while instant invention requires 5.0-25% by weight in instant claim 6. Other limitations in all dependent claims such as particle size distribution, ratios of all the claimed components are also within the same range. In both application the additive is free of wax coated silica.
With respect to the additives, ‘816 claims additional components which are not listed in instant claims. However, per MPEP 804 the specification can be used to learn the meaning of a term. In instant case, the examiner can rely on specification to learn the meaning of term “additive”. Consistent with the MPEP, instant invention lists the same additives, for example metallic pigment. The definition of additive further includes two silicas bearing negative and positive charge as claimed in instant claim 1.
Both inventions claimed substrate coated with powder coating composition as well as substrate that is coated with more than one layer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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, 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
June 11, 2026
Prosecution Insights