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 .
In their response dated 1/26/2026 the applicants amended independent claims to recite weight average molecular weight of the polyamide B to be in a range of 5,132 or more and 21,000 or less.
Applicants further filed terminal disclaimer which was approved on 2/23/2026 to overcome double patenting rejections over co-pending application 17/427,281.
The applicants did not file the terminal disclaimer to overcome Double Patenting rejection over co-pending application 18/035,522. However the co-pending application ‘522 was passed to issue and issue fee was paid. Since terminal disclaimers are filed to align the later patent’s term with an earlier patent term and tie enforceability to common ownership the terminal disclaimer will have to be filed for remaining double patenting rejection.
Consequently, the Double Patenting rejection over co-pending application 18/035,522 is not overcome and it is incorporated here by reference.
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 and 8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 8 and 9 of co-pending Application No. 18/035,522 (‘522). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Co-pending invention ‘522 discloses rheology additive to a curable composition comprising diamide, hydrogenated castor oil and polyamide which encompasses the polyamide of the instant invention, as it is much broader in scope compared to polyamide of the instant invention. The content of the polyamide of the ‘522 falls within the content of the polyamide in instant invention. Diamide component is formed from the same diamines having 2-12 carbon atoms and monocarboxylic acid as defined in the instant invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-16 are over the prior art of record
Claims 2-7, 9-16 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. Specifically, independent claims 1 and 8 are rejected under Double Patenting rejection as stated above.
The prior art of record does not disclose a polyamide component B which has weight average molecular weight of above 5000. Updated search provided several references which do not remedy this deficiency. Specifically: US 2015/0274644 to Bernard discloses a rheological additive which is reaction product of amine and fatty acid preferably dissolved in hydrogenated castor oil. While the component does meet the definition of component B, the molecular weight is provided in number average molecular weight, wherein the conversion to weight average molecular weight is not possible without knowing the exact content of the monomers that make up the polyamide. Even if there was a possibility of conversion, Bernard would not meet the component A of the instant invention.
US 4,128,436 to O’Hara discloses a rheological additive comprising hydrogenated castor oil and oligomeric polyamide formed from monomers comprising fatty chains, the molecular weight of the polyamide is not disclosed. Additionally based on table in col. 5 such low molar content of acid to amine the molecular weight is actually expected to be lower than 5000.
US 7,910,652 discloses molecular weight in a range of 800-5,000.
Since references as applied against instant claims as well as art found during updated search does not teach the required molecular weight claims are deemed as allowable over the prior art.
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
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 February 27, 2026