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 .
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 1-5, 8, 10, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-9, and 11 of U.S. Patent No. 10,647,850 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because their subject matters overlap significantly, such that the claims are patentably indistinct from one another. For example, the claims of both the instant Application and the reference document are drawn to polycarbodiimide crosslinking agents comprising two polycarbodiimide components, wherein the components are endcapped with substantially similar functional groups. Furthermore, the (A):(B) ratios of the instant Application and the reference document overlap. The claimed component (A) of the reference document requires terminals “each endcapped with a hydrophilic organic compound” in claim 1, whereas component (A) of the reference document requires “substituents derived from hydrophilic compounds at both terminals.” The phrase “Derived from” adds breadth to the scope of the claims of the reference document, however this breadth lies in addition to the subject matter of the instant claims.
Claim Rejections - 35 USC § 102
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 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsukamoto (US 2018/0371237 A1).
Regarding claim 1, Tsukamoto teaches an aqueous resin crosslinking agent comprising a polycarbodiimide (A) and a polycarbodiimide (B) (Abstract), wherein the polycarbodiimide (A) has a hydrophilic organic compounds substituted at its ends, and wherein said organic compounds have molecular weights of 340 or more (Abstract). Polycarbodiimide (B) has substituents derived from organic compounds having molecular weights of 300 or less at both terminals, and the amount of polycarbodiimide (A) with respect to both polycarbodiimides ranges from 5 to 80 parts (Abstract), which anticipates the claimed range of “5 to 90 parts by mass per 100 parts by mass in total.” Tsukamoto further teaches that the polycarbodiimide (B) is formed from an isocyanate-terminated polycarbodiimide with the organic compound having a molecular weight of 300 or less ([0071]), and teaches that the organic diisocyanates used therein may include, inter alia hexamethylene diisocyanate ([0060]), which reads on the claimed “chain diisocyanate compound as a structural unit” because the instant Specification states that this compound is a suitable chain diisocyanate compound (c.f. instant Specification at [0051]).
Regarding claim 2, Tsukamoto teaches that the hydrophilic organic compound having a molecular weight of 340 or more is a polyalklyene oxide which is end-capped with an alkoxy group or a phenoxy group ([0019]). Tsukamoto teaches the same chemical structure as claimed, wherein the groups R1 and R2, as well as the repeat unit variable m has overlapping/identical (and therefore anticipatory) scopes compared to those as claimed.
Regarding claim 3, Tsukamoto teaches the use of a hydrophilic organic compound (as described above), wherein R1 is a methyl group and R2 is a hydrogen atom ([0020]).
Regarding claim 4, Tsukamoto teaches that the organic compound having a molecular weight of 300 or less has an active hydrogen which is reactive with an isocyanate group ([0072]).
Regarding claim 5, Tsukamoto teaches that the organic compound having a molecular weight of 300 or less includes monoamines, monoisocyanates, monoalcohols, and monocarboxylic acids ([0072]), all of which read on the claimed list.
Regarding claim 6, Tsukamoto teaches that the organic diisocyanates used therein may include, inter alia hexamethylene diisocyanate ([0060]), which reads on the claimed “chain diisocyanate compound as a structural unit” because the instant Specification states that this compound is a suitable chain diisocyanate compound (c.f. instant Specification at [0051]). The isocyanates present in this molecule (and the alternatives taught by Tsukamoto at [0059]-[0060]) are primary isocyanates.
Regarding claim 7, Tsukamoto teaches that the organic diisocyanates used therein may include, inter alia hexamethylene diisocyanate ([0060]), which reads on the claimed “chain diisocyanate compound as a structural unit” because the instant Specification states that this compound is a suitable chain diisocyanate compound (c.f. instant Specification at [0051]). The isocyanates present in this molecule (and some of the alternatives taught by Tsukamoto at [0059]-[0060]) are bonded to the terminals of a chain hydrocarbon.
Regarding claim 8, Tsukamoto teaches the inventive crosslinking agent within an aqueous medium ([0001]).
Regarding claim 9, Tsukamoto teaches the incorporation of a hydrophilic solvent into the aqueous medium ([0064]), and teaches the incorporation of such solvents as, inter alia, tetrahydrofuran and methanol ([0107]), both of which read on the claimed “hydrophilic solvent” because the instant Specification states that they are suitable hydrophilic solvents (c.f. instant Specification at [0072]).
Regarding claim 10, Tsukamoto further teaches the incorporation of a surfactant ([0121]).
Regarding claim 11, Tsukamoto teaches that the surfactant may be an anionic surfactant ([0122]).
Regarding claim 12, Tsukamoto teaches the use of alkylbenzenesulfonates and alkylsulfates such as sodium dodecylbenzenesulfonate and sodium dodecylsulfate ([0123]), which read on the claimed list.
Regarding claim 13, Tsukamoto teaches an aqueous resin composition containing the inventive crosslinking agents and an aqueous resin ([0125]).
Regarding claim 14, Tsukamoto teaches that the aqueous resin may specifically contain a polyester resin with a carboxyl group ([0127]), which reads on the claimed list.
Regarding claim 15, Tsukamoto teaches that the aqueous resin may be a polyester resin, a urethane resin, or an acrylic resin ([0127]), all of which read on the claimed list.
Regarding claim 16, Tsukamoto teaches that the composition may be used as an adhesive, a fiber treating agent, a coating agent, and in paints and inks ([0184]), all of which read on the claimed list.
Regarding claim 17, the claim is drawn to an intended use of the claimed waterborne resin composition. The intended use limitations do not require steps to be performed or limit the claims to a particular structure. These limitations do not limit the scope of the instant claims and need not be taught by the prior art in order to read on the claims. See MPEP 2111.02. Therefore, Tsukamoto as applied to claim 13, above, also reads on claim 17.
Regarding claim 18, Tsukamoto teaches a film formed from the inventive composition ([0131]).
Regarding claim 19, Tsukamoto teaches the crosslinking of the aqueous formulation (maintained crosslink-ability after a long shelf-life of the formulation is the inventive goal of Tsukamoto [0016]), and teaches the formation of a film on a substrate using the inventive composition ([0131]), which reads on the claimed “cured film” on a “base material.”
Regarding claim 20, Tsukamoto teaches that a diisocyanate compound within Polycarbodiimide (A) may be, inter alia, 2,6-tolylene diisocyanate ([0060]), which is a diisocyanate compound having an aromatic ring.
Response to Arguments
Applicant's arguments filed November 14, 2025 have been fully considered but they are not persuasive.
Applicant first requests that the nonstatutory double patenting rejection be withdrawn, citing “the same reasons” that prior art Tsukamoto allegedly fails to anticipate the instant claims. However, as will be discussed in the response to arguments, below, Tsukamoto does anticipate the instant claims, including the newly added claim 20. Therefore, the nonstatutory double patenting rejection is maintained.
Applicant argues that Tsukamoto fails to disclose each and every element of the pending claims, because hexamethylene diisocyanate is “merely one example among the list of diisocyanates in the production of polycarbodiimide (A).” Applicant further argues that the exemplifies diisocyanates taught to be included within polycarbodiimide (B) is limited to dicyclohexylmethane-4,4’-diisocyanate, and states that “Tsukamoto ‘237 does not disclose producing polycarbodiimide (B) from specific diisocyanates other than HDMI.”
However, Tsukamoto particularly states that an example method of producing polycarbodiimide (B) includes the same step of producing an isocyanate-terminated polycarbodiimide, said method step may be the same as that of polycarbodiimide (A) ([0093]), and states that an example of the diisocyanate of polycarbodiimide (B) may be dicyclohexylmethane-4,4’-diisocyanate ([0093]). Thus, the diisocyanate is specifically not limited to only dicyclohexylmethane-4,4’-diisocyanate, and the method of production may be identical to that of polycarbodiimide (A). Tsukamoto specifically teaches a listing of organic diisocyanate compounds “used in the production of the isocyanate-terminated polycarbodiimide,” and includes hexamethylene diisocyanate therein ([0059]-[0060]).
The Applicant next argues that dicyclohexylmethane-4,4’-diisocyanate does not fall within the particularly preferred diisocyanates of Tsukamoto which are deemed beneficial for improving the storage stability of the inventive composition. However, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
The Applicant finally argues that Tsukamoto fails to recognize the benefit of improved flexibility which is contemplated by the instant disclosure. However, It is not necessary that the prior art suggest the claimed combination to achieve the same advantage or result discovered by the Applicant. See MPEP 2144(IV). Furthermore, the discovery of a previously unappreciated property of a prior art composition does not render the previously disclosed composition patentably new to the discoverer (see MPEP 2112.I.). The composition of Tsukamoto therefore anticipates the claimed composition regardless of its appreciation of said flexibility characteristics.
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762