Detailed Office Action
Notice of Pre-AIA or AIA Status
1. 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 Rejection
2. 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.
3. Claims 2, 3, 8, 11, 12, 13, 15, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 11-15 of copending Application No. 19/106,101(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each claim set is drawn to a heat curable composition comprising the same prepolymer and a hydrazide having the same melting point. One in possession of the method of the copending claims would have been in possession of the composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
4. Claims 6, 7, 9, and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of copending Application No. 19/106,101 in view of Grogler et al. (US 4663,415) or Maeda et al. (US 5,855,668).
Each copending claim set is drawn to a heat curable composition comprising the same prepolymer and a hydrazide having the same melting point. One in possession of the method of the copending claims would have been in possession of the composition. Furthermore, Grogler et al. and Maeda et al. disclose the combination of polyamines having the claimed melting temperature with prepolymers to form one component heat curable compositions (See Examples within each reference). Since it has been held that it prima facie obvious to use a known component for its known function, the position is taken that it would have been obvious to mix the polyamines of the references with the hydrazide curing agent, so as to obtain a curing agent mixture of the hydrazide and the polyamine, and further to combine this mixture with the prepolymer to obtain a curable composition. Regarding claim 6, Grogler et al. disclose particle sizes that meet that claimed, therefore, it would have been obvious to utilize polyamine particles within the claimed composition. Regarding claim 7, the nitrogen compounds of Grogler et al. are in direct contact with the prepolymer; therefore, the claimed limitation would have been obvious. Regarding claim 9, Grogler et al. disclose the use of 4,4’-diphenylmethane diisocyanate within column 12, lines 47 and 48; therefore, it would have been obvious to produce the prepolymer using this diisocyanate.
This is a provisional nonstatutory double patenting rejection.
5. Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of copending Application No. 19/106,101 in view of Ludewig et al. (US 2002/0027969 A1).
Each copending claim set is drawn to a heat curable composition comprising the same prepolymer and a hydrazide having the same melting point. One in possession of the method of the copending claims would have been in possession of the composition. Furthermore, regarding claim 10, prepolymers useful for the production of polyurethanes employing the claimed NCO/OH ratio range were known at the time of invention, as evidenced by paragraph [0037] of Ludewig et al. Accordingly, since it has been held that it is prima facie obvious to use a known component for its known function, the position is taken that that it would have been obvious to use this known prepolymer to produce the claimed composition.
This is a provisional nonstatutory double patenting rejection.
Prior Art Rejection
6. 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.
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.
7. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Grogler et al. (US 4,663,415).
Grogler et al. disclose in Examples 1 and 2 the use of a polyamine having a melting point exceeding that claimed, corresponding to applicants’ nitrogen compound, as a solid curing agent for heat curing a heat-curable polyurethane composition that comprises a prepolymer having isocyanate end groups formed from the reaction of a polyisocyanate with polyol. Polyamines having the clamed melting points are disclosed within column 7.
8. Though the cited examples and specification fail to disclose compositions having the claimed amount contents for the claimed components, the reference does disclose that the compositions may include auxiliary agents and additives and catalysts in addition to the prepolymer and polyamine (see column 18, line 48 through column 20, line 30), Accordingly, the reference provides for the production of compositions containing components in addition to those described within the examples. Therefore, the position is taken that one of ordinary skill in the art would have been motivated to formulate compositions having quantities of components falling within those claimed depending on the objective or purpose of the final composition. For example, the addition of quantities of the disclosed fillers to the exemplified compositions would have had the effect of causing the resulting compositions to have component quantities that would have been expected to fall within those claimed. It has not been established that the claimed quantities yield anything unexpected.
9. The previous prior art rejections have been withdrawn in view of applicants’ response and amendment.
Allowable Subject Matter
10. Claims 4 and 5 are allowed.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (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 an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/Primary Examiner, Art Unit 1765
Prosecution Insights