DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-14 and 20 in the reply filed on December 1, 2025 is acknowledged.
Claims 15-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 1, 2025.
Specification
The first line of the specification should be amended to recite that “This application claims benefit of Provisional Serial Number 63/280,628, filed on November 18, 2021, and Provisional Serial Number 63/250,245, filed on September 30, 2021.”.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-2, 4, 8-14 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Keller, US 2013/0123399.
Keller, US 2013/0123399, discloses a thermoplastic mixture comprising 0.001-1% by weight of at least one compound of formula 1a:
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172
342
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wherein n is 1-10, which reads upon the instant claims when A is of formula (II), G is CH2CH2, p is 1, R1 is methyl, Q and Q’ are oxygen, b is zero, m is 1, q is at least 4, and R3 is an A group of formula (II) (see abstract and paragraphs 8-10). It is further taught by Keller that the mixture further contains 5-45% by weight of a plasticizer (see paragraph 31) and further additives, such as dyes and chelating agents (see paragraph 40), per the requirements of the instant invention. Specifically, note the Examples in Tables 2-4. Although Keller is silent with respect to the water solubility value of their compound of formula 1a, the examiner asserts that the compound of formula 1a disclosed in Keller would inherently meet the water solubility requirements of the instant invention, since products of identical chemical composition cannot have mutually exclusive properties. Therefore, instant claims 1-2, 4, 8-14 and 20 are anticipated by Keller, US 2013/0123399.
Claims 1-4, 8-14 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rohrbach et al, US 2005/0020457.
Rohrbach et al, US 2005/0020457, discloses an aqueous functional fluid comprising 0.002-10% by weight of a 4-hydroxyphenylpropionic acid ester antioxidant of formula (I):
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132
310
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wherein R1 and R2 represent hydrogen or a C1-9 alkyl group and the other represents a C3-9 alkyl group, R3 is hydrogen or methyl, R4 is hydrogen, a C1-30 alkyl group or a group of formula (A) wherein R1’ and R2’ are hydrogen or a C1-9 alkyl group and the other represents a C3-9 alkyl group, and n is 1-60, which reads upon the instant claims when A is of formula (II), G is CH2CH2, p is 1, R1 is methyl, Q and Q’ are oxygen, b is zero, m is 1, q is at least 4, and R3 is an A group of formula (II), hydrogen or a C1-4 alkyl group (see abstract and paragraphs 11-19 and 42-50), 5-95% by weight of a polyalkylene glycol (see paragraphs 51-61), 60-99% by weight of water (see paragraphs 62-63), and 0.01-10% by weight of additional additives, such as further antioxidants and corrosion inhibitors (see paragraphs 64-133), per the requirements of the instant invention. Specifically, note the Examples in paragraphs 143-148. Although Rohrbach et al is silent with respect to the water solubility value of their antioxidant of formula (I), the examiner asserts that the compound of formula (I) disclosed in Rohrbach et al would inherently meet the water solubility requirements of the instant invention, since products of identical chemical composition cannot have mutually exclusive properties. Therefore, instant claims 1-4, 8-14 and 20 are anticipated by Rohrbach et al, US 2005/0020457.
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 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of copending Application No. 18/295,910 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending Application No. 18/295,910 claims a similar treatment composition comprising a treatment adjunct and 0.001-5% by weight of an antioxidant of formulae I-V (see claims 1-30 of copending Application No. 18/295,910), as required in the instant claims. Therefore, instant claims 1-14 and 20 are an obvious formulation in view of claims 1-30 of copending Application No. 18/295,910.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P MRUK whose telephone number is (571)272-1321. The examiner can normally be reached on 7:00am-5:30pm Monday-Thursday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN P MRUK/
Primary Examiner, Art Unit 1761
Brian P Mruk
January 22, 2026