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 .
This Office action is in response to the amendment filed 12/11/2025. Claims 21-23 are cancelled; and claims 1-20 are currently pending in the application.
Election/Restrictions
Applicant’s election without traverse of group I, drawn to claims 1-11, in the reply filed on 12/11/2025 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/11/2025.
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 1-8 and 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No.11,744,925 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, U.S. Patent No. 11,744,925 B2 comprises a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and a second monomer 4-hydroxybutyl acrylate including a functional group such as hydroxyl. Therefore, claims 1-7 and 11 are fully anticipated over the claims in U.S. Patent No. 11,744,925 B2.
Additionally, claims in U.S. Patent No. 11,744,925 B2 are silent with respect to the species of monomer “b” of dependent claims.
However, Applicant’s attention is drawn to MPEP § 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of U.S. Patent No.11,744,925 B2 wherein it teaches that the base coat includes a polymer that is a polymer of tetrahydrofurfuryl acrylate monomer and at least one other monomer including amine groups such as 2-aminoethyl methacrylate (col. 2, lines 34-51) which is a homolog of (3-aminopropyl)methacrylate. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers). Therefore, in light of the teachings in general disclosure of U.S. Patent No. 11,744,925 B2, it would have been obvious to one skilled in art to prepare a copolymer of tetrahydrofurfuryl acrylate and (3-aminopropyl) methacrylate, absent evidence to the contrary.
Claims 1-8 and 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,883,564 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, U.S. Patent No. 11,883,564 B2 comprises a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and a second monomer 4-hydroxybutyl acrylate (including a functional group such as the hydroxyl) and 2-aminoethyl methacrylate. Therefore, claims 1-7 and 11 are fully anticipated over claims in U.S. Patent No. 11, 883,564 B2. Additionally, 2-aminoethyl methacrylate is a homolog of (3-aminopropyl)methacrylate of dependent claims in present application. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers).
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,257,370 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, U.S. Patent No. 11,883,564 B2 comprises a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and 4-hydroxybutyl acrylate (includes a functional group such as the hydroxyl); top coat comprising a copolymer of methoxyethyl acrylate (i.e., alkyloxyalkyl acrylate) and a second component comprising 2-aminoethyl methacrylate. Therefore, claims 1-7 and 11 are fully anticipated over claims in U.S. Patent No. 12,257,370 B2. Additionally, the second component 2-aminoethyl methacrylate is a homolog of (3-aminopropyl) methacrylate of dependent claims in present application. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers).
Claims 1-8 and 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,514,960 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, U.S. Patent No. 12,514,960 B2 comprises a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and a second monomer 4-hydroxybutyl acrylate (including a functional group such as the hydroxyl). Therefore, claims 1-7 and 11 are fully anticipated over claims in U.S. Patent No. 12.514,960 B2.
Additionally, claims in U.S. Patent No. 12.514,960 B2 are silent with respect to the species of monomer “b” of dependent claims.
However, Applicant’s attention is drawn to MPEP § 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of U.S. Patent No. 12.514,960 B2 wherein it teaches that the base coat includes a polymer that is a polymer of tetrahydrofurfuryl acrylate monomer and at least one other monomer including amine groups such as 2-aminoethyl methacrylate (col. 1, lines 45-61) which is a homolog of (3-aminopropyl)methacrylate. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers). Therefore, in light of the teachings in general disclosure of U.S. Patent No. 11,744,925 B2, it would have been obvious to one skilled in art prior to the filing of present application to prepare a copolymer comprising tetrahydrofurfuryl acrylate and (3-aminopropyl)methacrylate, absent evidence to the contrary.
Claims 1-8 and 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, and 19-27 of copending Application No. 18/866,363. Although the claims at issue are not identical, they are not patentably distinct from each other because while present claims are drawn to a copolymer comprising (a) at least one monomer independently selected from alkyloxyalkyl acrylate, alkyloxyalkyl (alkyl)acrylate, heterocycloalkyl acrylate, (heterocycloalkyl)alkyl acrylate, heterocycloalkyl (alkyl)acrylate, or (heterocycloalkyl)alky (alkyl)acrylate; and (b) at least one monomer independently selected from a monomer containing an amine, a carboxylic acid or a hydroxyl or a salt thereof, U.S. Patent No. 11,883,564 B2 comprises applying a base coat including a copolymer of a first tetrahydrofurfuryl acrylate monomer (i.e., heterocycloalkyl acrylate) and a second monomer 4-hydroxybutyl acrylate (including a functional group such as the hydroxyl) and 2-aminoethyl methacrylate. Therefore, claims 1-7 and 11 are fully anticipated over claims in U.S. Patent No. 11, 883,564 B2. Additionally, 2-aminoethyl methacrylate is a homolog of (3-aminopropyl)methacrylate of dependent claims in present application. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites “copolymer of a) a monomer of formula I and a monomer of formula II” (lines 1-2) and is in conflict with the recitation “at least one monomer selected from a monomer of formula I or a monomer of formula II” (lines 2-3). Hence, metes and bounds of present claims cannot be ascertained by one of ordinary skill in art prior to the filing of present application. However, Examiner interprets the copolymer to be a polymer comprising monomer of formula I or monomer of formula II, in light of the dependence on claim 2, and all the exemplary embodiments, in present application, including a monomer of formula I or monomer of formula II.
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 1-7 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al (US 2018/0325649 A1).
Regarding claim 1, Wu et al disclose, in example 5, a copolymer formed from a monomer mixture comprising 2-methoxyethylacrylate (i.e., reads on alkyloxyalkyl acrylate in present claim 1) and (3-aminopropyl) methacrylamide hydrochloride (paragraph 0055) which reads on monomer containing a salt of amine in present claim 1. See example 6, wherein the copolymer is formed from monomer mixture comprising tetrahydrofurfuryl acrylate and (3-aminopropyl)methacrylamide hydrochloride (paragraph 0056) which reads on monomer containing salt of an amine in present claim 1. It is noted that tetrahydrofurfuryl acrylate is represented by formula:
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72
144
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(i.e., reads on heterocycloalkyl acrylate in present claim 1).
Regarding claim 2-7 and 11, see example 5, wherein polymer is formed from monomer mixture comprising 2-methoxyethylacrylate and (3-aminopropyl) methacrylamide hydrochloride (paragraph 0055) which reads on monomer containing salt of an amine in present claim 2; 3, 4, and 5. It is noted that 2-methoxyethylacrylate is represented by formula:
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126
454
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(i.e., reads on monomer of formula I in present claim 2, wherein R1 = H, R2 = C2 alkylene and R3 = C1 alkyl; monomer of formula I in present claims 3, 4, 5 and 6). See example 6, wherein the copolymer is formed from monomer mixture comprising tetrahydrofurfuryl acrylate (i.e., reads on monomer of formula II in present claim 2, wherein R4 = H, R5 = C1 alkylene, x = 1, R6 = C3 alkylene, and y = 0; monomer of formula II in present claims 3, 4, and 5;
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74
140
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in present claims 7 and 11) and (3-aminopropyl) methacrylamide hydrochloride (paragraph 0056) which reads on monomer containing salt of an amine in present claims 2, 3, 4 and 5. Examples of second monomer include hydroxybutyl acrylate (paragraph 0014) which is open to the hydroxyl group in any position including as in 4-hydroxybutyl acrylate of present claim 11.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al (US 2018/0325649 A1).
The discussion with respect to Wu et al in paragraph 18 above is incorporated here by reference.
Wu et al are silent with respect to (3-aminopropyl)methacrylate.
However, Wu et al in the general disclosure teach that in one embodiment, the second monomer is aminoethyl methacrylate (paragraphs 0013-0014) which is a homolog of (3-aminopropyl)methacrylate of present claims. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers). Therefore, in light of the teachings in general disclosure of Wu et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to prepare a copolymer comprising tetrahydrofurfuryl acrylate or 2-methoxyethylacrylate, independently, and (3-aminopropyl)methacrylate, absent evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764