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 non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Double Patent No. #1
Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,739,172. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Patent No. ‘172 claims a composition comprising a compound comprising divalent segments L and at least two X groups, wherein the divalent segments L are represented by the formula:
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The scope of the present claims encompasses the scope of the claims in US Patent No. ‘172.
Double Patent No. #2
Claims 1-20 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of co-pending Application No. 18/036,230 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given.
US Application No. ‘230 claims a free-radically polymerizable crosslinker composed of divalent segments Z represented by the formula
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The scope of the present claims encompasses the scope of the claims in US Publication No. ‘230.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patent No. #3
Claims 1-20 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of co-pending Application No. 18/268,042 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Application No. ‘042 claims a composition comprising a compound comprising divalent segments L and at least two X groups, wherein the divalent segments L are represented by the formula:
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The scope of the present claims encompasses the scope of the claims in US Publication No. ‘042.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patent No. #4
Claims 1-20 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of co-pending Application No. 18/268,173 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Application No. ‘173 claims a composition comprising a compound comprising divalent segments L and at least two X groups in an amount of 20 percent to 35 percent by weight, based on the total weight of acrylic-functional compounds in the composition, wherein the divalent segments L are represented by the formula:
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The scope of the present claims encompasses the scope of the claims in US Publication No. ‘173.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patent No. #5
Claims 1-20 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of co-pending Application No. 18/291,552 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Application No. ‘552 claims a composition comprising a compound comprising divalent segments L and at least two X groups in an amount from 15 percent to 22 percent by weight, based on the total weight of acrylic-functional compounds in the composition, wherein the divalent segments L are represented by the formula:
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The scope of the present claims encompasses the scope of the claims in US Publication No. ‘552.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
PRIOR ART
BACCEI, one of the closest prior art of record, fails to teach the a free-radically polymerizable crosslinker comprising divalent segments Z represented by the formula
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BACCEI teaches graft polymer segments of the prepolymers are derived from poly(alkylene)ether polyol backbones to which have been grafted vinyl monomers or polymers. The graft polymers conform to the structural formula:
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Wherein R3 and R4 are alkenyl and/or branched alkenyl radicals having 2 to about 10 carbon atoms; Q is a vinyl polymeric or copolymeric radical which may be linear or branched alkyl, alkenyl, alkynyl, aromatic, cycloaliphatic or heterocyclic, containing 2 to about 12 carbon/hetero atoms , x may range from 0 to about 200 which does not satisfy the claim limitations of the present invention. Therefore, BACCEI does not disclose or render obvious the present invention.
DRISCOLL et al., one of the closest prior of record, fails to teach the free-radically polymerizable crosslinker comprising divalent segments Z represented by the formula
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DRISCOLL teaches polymerizable mixtures comprising acryloyl and methacryloyl derivatives of oligomers having the formula:
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which does not satisfy the claim limitations of the present invention. Therefore, DRISCOLL fails to disclose or render obvious the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763