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/Restriction
Applicant’s election of the composition comprising no nanoparticles in the reply filed on December 15, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 2, 7 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 4 and 9 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.
In claims 4 and 9, the metes and bounds of the “moderator compound” are indeterminate in scope in that its moderating function or effect is not apparent. As recited, such does not distinguish over any of the other recited components.
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).
Ben-Ascher discloses a PAI-based coating composition comprising:
a solvent inclusive of N-butylpyrrolidone (NBP) per Examples 1-11 (meets Applicants’ N-butyl pyrrolidone (a)); and
a polyamideimide (PAI) resin inclusive of PAIs per Examples 14 and 15 (meets Applicants’ polyamideimide (b) Mw and Mw/Mn ratio),
wherein the PAI content ranges from 10 to 60 wt.% [0057] (overlaps with Applicants’ polyamideimide (b) content of 25 to 40 pbw) (e.g., abstract, figures, [0025-0030], [0034-0035], [0057], examples, claims).
Specifically, Ben-Ascher discloses coating compositions comprising ~21 wt.% PAI and the presently claimed NBP solvent (Examples 1-11 per Fig. 2A) and coating compositions comprising ~21 wt.% PAIs which meet the presently claimed Mw and Mw/Mn ratio and solvents other than NBP (Examples 14 and 15 per Fig. 2C). Ben-Ascher discloses [0057] that the viscosity of the coating composition is a function of the PAI content, which may be in a range of 10 to 60% solids.
As to claim 1, it would have been within the purview of Ben-Asher’s inventive disclosure, and obvious to one having ordinary skill in the art, to formulate a PAI-based coating composition comprising:
a polyamideimide (PAI) per Examples 14 and 15 (meets Applicants’ polyamideimide (b) Mw and Mw/Mn ratio); and
a solvent composition comprising NBP per Examples 1-11(meets Applicants’ N-butyl pyrrolidone (a)),
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].
Claims 1, 4, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019026769 A (Saito) abstract and machine translation.
Saito discloses a composition comprising:
preferably 5 wt.% or more of a polyamideimide (PAI) resin having a number average molecular weight (Mn) greater than 10,000 obtained by reacting a diisocyanate and a tricarboxylic acid in a solvent A comprising a nitrogen-containing cyclic compound having an alkyl group having 4 or more carbon atoms which is preferably N-butylpyrrolidone (NBP) “because of its low boiling point” (page 3); and
preferably 35 wt.% or more of a solvent B which can be the same as solvent A (e.g., abstract, pages 3-6, examples, claims).
In Example 2, Saito sets forth a composition comprising:
30 wt.% of a polyamideimide (PAI) resin having a Mn of 14,000 obtained by reacting a diisocyanate (MDI) and trimellitic anhydride (TMA) in NBP;
NBP as solvent B; and
an epoxy resin.
In essence, Saito’s working example differs from claim 1 in that the PAI is not defined in terms of Mw and Mw/Mn ratio. Given that the weight average molecular weight (Mw) of a polymer is always greater than its number average molecular weight (Mn), it would be expected that Saito’s exemplified PAI with Mn of 14,000 would have a Mw greater than 14,000, giving rise to a Mw/Mn of greater than 1. Thus, absent evidence of unusual or unexpected results for the presently claimed Mw and Mw/Mn limitations, no patentability can be seen in the presently claimed subject matter.
As to claim 4, in Saito’s working example 1, the MDI and TMA monomers are reacted at 130°C, which is above the presently claimed 80 - 120°C range. Saito, however, discloses that “there are no particular limitations on the reaction conditions such as the temperature of the monomer solution” (page 7). Thus, absent evidence of unusual or unexpected results, it would have been obvious to one having ordinary skill in the art to carry out the monomer reaction at any temperature (inclusive of that presently claimed) with the reasonable expectation of success.
As to claim 8, Saito discloses using the composition as coating materials (Example 2) for metals (page 11). It would have been obvious to one having ordinary skill in the art to use the coating materials to coat metal wires with the reasonable expectation of success.
As to claim 9, the temperature recitation is a product-by-process limitation and, as such, it is not seen that the patentability of the presently claimed composition depends therefrom. Thus, it is not seen that Saito’s working example 1 obtained by reacting diisocyanate (meets Applicants’ diisocyanate), trimellitic anhydride (meets Applicants’ tricarboxylic acid), methyl ethyl oxime block agent (meets Applicants’ moderator compound) and NBP (meets Applicants’ solvent) at 130°C distinguishes over the presently claimed composition.
9. Claims 5, 6, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019026769 A (Saito) described hereinabove in view of CN 106543890 B (Fan) and WO 2021/048074 (Flores).
Saito does not expressly disclose the inclusion of a monocarboxylic acid. Fan and Flores, however, directed to the production of polyamideimide resins disclose the conventionality of further including a monocarboxylic acid such as formic acid (Fan claim 1) and acetic acid (Flores [0057]) as moderator compounds. Thus, it would have been within the purview of one having ordinary skill in the art to further include a monocarboxylic acid as taught by Fan or Flores in the synthesis of the PAI disclosed by Saito for its expected additive effect and with the reasonable expectation of success.
Double Patenting
10. 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.
11. Claims 1, 4-6 and 8-11 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
12. Applicant's arguments filed December 15, 2025 have been fully considered but they are not persuasive in overcoming the 35 USC 112 rejection, the 35 USC 103 rejection of claims 1 and 8 over US 2019/0112501 (Ben-Asher) and the nonstatutory double patenting rejection.
Applicants argue that it would readily be understood that the moderator compound is a monofunctional compound which can terminate a polymer chain. Given that the moderator compound includes monoanhydrides, such does not distinguish over the tricarboxylic acid anhydride which is a monoanhydride.
Applicants argue that Ben-Ascher fails to teach a composition which has all the presently claimed elements. It is maintained that it would have been within the purview of Ben-Ascher’s inventive disclosure, and obvious to one having ordinary skill in the art, to produce a composition comprising:
a PAI per Examples 14 and 15 (meets Applicants’ polyamideimide (b) Mw and Mw/Mn ratio); and
a NBP solvent composition per Examples 1-11 (meets Applicants’ solvent (a)),
wherein the PAI content is 25 to 40 wt.% (meets Applicants’ polyamideimide (b) content) in accordance with the ultimate viscosity desired. Applicants’ assertion that the comparative testing results per Table 1 demonstrate unexpected results for the presently claimed Mw 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 inventive Examples 3-5 which contain a solids content.
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.
13. Applicant’s arguments and amendments filed December 15, 2025 are effective to overcome the 35 USC 103 rejections of claims 4-6 and 9-11 over US 2019/0112501 (Ben-Asher). Specifically, the recitation “a solvent consisting of N-n-butyl pyrrolidone” precludes the co-solvents required by Ben Ascher. However, upon further consideration, a new ground(s) of rejection is made in view of JP 2019026769 A (Saito) as described hereinabove.
Conclusion
14. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
15. 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.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765