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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 04, 2026 has been entered.
Election/Restriction
Claims 2, 7 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 15, 2025.
Claim Rejections - 35 USC § 112
Claims 6 and 11 are 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 6 is indefinite in that it is unclear from which claim such is dependent on.
Claim 11 is indefinite for depending on cancelled claim 10.
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.
Claims 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0112501 (Ben-Asher ‘501) as evidenced by US 2017/0349706 (Ben-Asher ‘706).
Ben-Ascher ‘501 discloses a PAI-based coating composition obtained by dissolving a polyamideimide (PAI) resin in a solvent such as N-butylpyrrolidone (NBP) (e.g., abstract, figures, [0025-0030], [0034-0035], [0057], examples, claims).
In Fig. 2A (Examples 1-11), Ben-Ascher ‘501 expressly sets forth coating compositions comprising;
- a PAI per “Inventive Example II”, which per Fig. 2C has a Mw of 32,317 g/mol and a Mw/Mn ratio (PDI) of 1.75 (meets Applicants’ polyamideimide resin, Mw and Mw/Mn ratio thereof); and
- a solvent comprising 100% NBP or 70 to 90% NBP (meets Applicants’ N-n-butyl pyrrolidone),
wherein the PAI solid content ranges from 20.96 to 21.02% (below Applicants’ 25 to 40 pbw content). Specifically, Ben-Ascher ‘501 discloses [0044-0045] that the PAI per “Inventive Example II” is the same PAI per “Inventive Example I” described in “Example II of U.S. provisional patent application 62/346,440”, i.e., Ben-Asher ‘706. Notably, as evidenced by Ben-Asher ‘706 [0046], said PAI of Example II has a Mw of 32 kg/mol (32,000 g/mol), which is consistent with the Mw of 32,317 g/mol defining the “Inventive Example II” PAI per Ben-Asher ‘501 (Fig. 2C).
In essence, claim 1 differs from Examples 1-11 of Ben-Asher ‘501 in that the claimed composition comprises a higher PAI content of from 25 to 40 pbw. Ben-Ascher ‘501, however, discloses [0057] that a PAI solids content of 10 to 60% can be satisfactorily used in accordance with the desired viscosity. Thus, it would have been within the purview of the inventive disclosure of Ben-Asher ‘501 to formulate a composition wherein the PAI content is 25 to 40 wt.% (meets Applicants’ polyamideimide (b) content) in accordance with the ultimate viscosity desired. Case law holds that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, In re Aller, 105 USPQ 233.
As to claim 8, Ben-Acher discloses using the coating composition as wire enamels [0041].
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, 4, 6, 8, 9 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/277606 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims do not preclude the additional materials, e.g., water, amine compound, present in the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed June 04, 2026 have been fully considered but they are not persuasive in overcoming the 35 USC 103 rejection over US 2019/0112501 (Ben-Asher ‘501) or the nonstatutory double patenting rejection.
Applicants’ argument that Ben-Asher ‘501 does not include the molecular weight information of the PAI used in Examples 1-11 is not well taken. Examples 1-11 use the PAI from “Inventive Example II” (Fig. 2A), which is the same PAI from “Inventive Example II” used in Example 14 (Fig. 2C) having a Mw of 32,317 g/mol and a Mw/Mn ratio (PDI) of 1.75. Ben-Ascher ‘501 discloses [0044-0045] that the PAI from “Inventive Example II” is the same PAI ”described in Example II of U.S. provisional patent application 62/346,440”, i.e., Ben-Asher ‘706. Notably, Ben-Asher ‘706 [0046] substantiates that said PAI has a Mw of 32 kg/mol (32,000 g/mol).
Applicants’ assertion that the testing results per Table 1 demonstrate unexpected results for Examples 3, 4 and 5, which have a Mw in the claimed range, as compared to comparative Examples 1 and 2, which have a Mw outside the claimed range, is not well taken. Notably, comparative Example 2 is not defined in terms of solid content and, as such, it is unclear whether such is directly comparable to Examples 3-5 in terms of solids content. Moreover, Applicants’ contention that solids content is not a claimed parameter is not understood given that the presently claimed 25 to 40 pbw polyamideimide content appears to reflect a solids content. Furthermore, while Applicants assert that Example 3 with a PAI solid content of 40.3% is an inventive example, such is outside the presently claimed 25 to 40 pbw range. In any event, given that Ben-Asher expressly exemplifies Examples 1-11 comprising a PAI having a Mw of 32,317 g/mol and a Mw/Mn ratio (PDI) of 1.75 with NBP, the molecular weight does not appear to be a distinguishing feature.
As to the nonstatutory double patenting rejection, it is noted that a complete response to a nonstatutory double patenting rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321. Such a response is required even when the nonstatutory double patenting rejection is provisional.
Applicants’ arguments filed June 04, 2026 have been fully considered and are persuasive in overcoming the 35 USC 103 rejections over JP 2019026769 A (Saito). Specifically, Applicants have provided a declaration showing that, when measured according to DIN 55672, the polyamideimide used in Saito’s example has a Mn of 5727 and a Mw of 7930 g/mol (Mw/Mn=1.38), the Mw being lower than that presently claimed. Saito does not disclose or suggest using a polyamideimide meeting the presently claimed molecular weight limitations.
Allowable Subject Matter
Claims 4 and 9 are directed to allowable subject matter.
The claims require a solvent “consisting of N-n-butyl pyrrolidone”, which precludes the co-solvents required by En Asher ‘501.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
Prosecution Insights