DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant's election with traverse of Group I, claims 47-59, 62-76, in the reply filed on 7/6/2026 is acknowledged. The traversal is on the ground(s) that there is no serious search burden. This is not found persuasive because the inventions have acquired a separate status in the art as evidenced by their divergent classification.
The requirement is still deemed proper and is therefore made FINAL.
Claims 60-61 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/6/2026.
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 47-59, 62-76 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,649,346. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘346 claims an aqueous composition comprising: (a) an anionically stabilized copolymer derived from greater than 65% by weight of one or more (meth)acrylate monomers and has a Tg of between −50° C. and 0° C., wherein the anionically stabilized copolymer comprises (i) 10-15% by weight methyl methacrylate; (ii) 50-70% by weight butyl acrylate; (iii) 15-30% by weight 2-ethylhexylacrylate; (iv) greater than 0 to 5% by weight carboxylic acid-containing monomers; (v) 0-5% by weight acrylamide; and (vi) 0-5% by weight acetoacetoxy monomers, and wherein the anionically stabilized copolymer is further derived from greater than 0% by weight to 35% by weight of one or more additional ethylenically-unsaturated monomers, wherein the one or more additional ethylenically-unsaturated monomers include a vinyl aromatic monomer having up to 20 carbon atoms and wherein the anionically stabilized copolymer does not include a phosphorus-containing monomer; (b) a derivatized polyamine in an amount of from greater than 0% to 8% by weight, based on the dry weight of the anionically stabilized polymer; and (c) a volatile base; wherein the derivatized polyamine has a degree of nitrogen-derivatization of at least 10%.
This is an anticipatory type double patenting rejection.
Claims 47-59, 62-76 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10,465,086. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘086 claims an aqueous composition comprising: (a) an anionically stabilized copolymer derived from greater than 65% by weight of one or more (meth)acrylate monomers and has a Tg of between −50° C. and 0° C., wherein the anionically stabilized copolymer comprises (i) 10-15% by weight methyl methacrylate; (ii) 50-70% by weight butyl acrylate; (iii) 15-30% by weight 2-ethylhexylacrylate; (iv) greater than 0 to 5% by weight carboxylic acid-containing monomers; (v) 0-5% by weight acrylamide; and (vi) 0-5% by weight acetoacetoxy monomers, and wherein the anionically stabilized copolymer is further derived from greater than 0% by weight to 35% by weight of one or more additional ethylenically-unsaturated monomers, wherein the one or more additional ethylenically-unsaturated monomers include a vinyl aromatic monomer having up to 20 carbon atoms and wherein the anionically stabilized copolymer does not include a phosphorus-containing monomer; (b) a derivatized polyamine in an amount of from greater than 0% to 8% by weight, based on the dry weight of the anionically stabilized polymer; and (c) a volatile base; wherein the derivatized polyamine has a degree of nitrogen-derivatization of at least 10%.
This is an anticipatory type double patenting rejection.
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.
Claims 50-51, 53-55, 57-58, 69 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.
Claims 50-51, 53, 58 recite the limitation "the derivative polyalkylene imine or alkoxylated polyvinylamine". There is insufficient antecedent basis for this limitation in the claim.
Claim 54 recites the anionically stabilized copolymer includes an acrylic based copolymer. This is indefinite because the anionically stabilized copolymer recites a number of monomers in claim 47. Therefore, it is unclear whether the acrylic based copolymer of claim 54 further limits the copolymer recited in claim 47 or whether it is in addition to the copolymer of claim 47. In other words, does claim 54 recite an acrylic based copolymer that is present in addition to the anionically stabilized copolymer of claim 47? Thus, claim 54 and all dependent claims are indefinite.
Claim 57 recites 10-30 wt% of a vinyl aromatic monomer but depends from claim 47 which recites 10-15 wt% methyl methacrylate, 50-70 wt% butyl acrylate, and 15-30 wt% ethylhexylacrylate. Based on the amounts in claim 47, the highest amount of vinyl aromatic possible is 25wt% because the least amounts of the other components are 75 wt% (10 wt% methyl methacrylate, 50 wt% butyl acrylate, and 15 wt% ethylhexylacrylate). This creates an indefinite situation because it is unclear which monomer range is incorrect. This same issue is present in claim 69.
Claim 60 recites the limitation "an aqueous coating composition defined by claim 47". There is insufficient antecedent basis for this limitation in the claim. It is suggested that this recite “the aqueous composition of claim 47”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 56 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 56 recites the anionically stabilized copolymer is derived from 0-5wt% carboxylic acid containing monomers. This limitation is present in claim 47, and therefore, claim 56 does not further limit claim 47.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
No prior art rejections are presented over claims 47-59, 62-76.
Relevant prior art includes Helmer (US 6,075,079), Takarabe (US 5,705,560), and Matthews (US 2008-0171810 A1).
Helmer teaches an aqueous composition comprising 95-99 wt% of an anionically stabilized aqueous emulsion of a copolymer having a Tg of 0-40˚C, 0.2-5 wt% of a volatile base and 0.2-5 wt% of a polyamine (abstract). Helmer teaches the copolymer has 1-100 wt% (meth)acrylate monomers (col. 9, ln. 45-55).
The Tg and the amount of (meth)acrylate of the copolymer overlap claimed ranges.
Helmer fails to teach the monomer composition of claims 47-49 or the derivative polyalkyleneimine or alkoxylated polyvinylamine of claims 48 and 76.
Takarabe teaches an aqueous paint composition comprising a film forming latex polymer having anionic property, a water soluble or dispersible polymer formed from a monomer mixture containing at least 20 wt% of amine functional group containing monomer and a volatile base (abstract). Takarabe teaches a composition that is made form 65.6 wt% of butyl acrylate 33.1 wt% of methyl methacrylate and 1.3 % of methacrylic acid which has a glass transition temperature of 0°C (column 15 lines 35-60 Table 7 sample 19) which is indicated to be used in a composition having poly oxazolidinyl ethyl methacrylate polymer in amount of 2 and 5 % by weight of the solids (column 16 lines 30-40 Table 8 Sample 19).
Takarabe fails to teach the monomer composition of claims 47-49 or the derivative polyalkyleneimine or alkoxylated polyvinylamine of claims 48 and 76.
Mathews teaches an aqueous composition which includes a polymer having a Tg of -30 or more and a polyfunctional amine and a volatile base (abstract). Matthews teaches a particular example of a polymer which is made from a total of 302.4 (256.6+45.8) methyl methacrylate 9.0 g of methacrylic acid and 588.6 (499.5+89.1) g of butyl acrylate in order to form a binder polymer (paragraph 0105). This would result in 65.4 % of butyl acrylate 33.6 % of methyl methacrylate and 1% of methacrylic acid present in the binder. Matthews further teaches that this polymer is an anionically stabilized emulsion polymer due to the presence of the carboxylic acid monomers (paragraph 0042) and teaches that volatile base is added to the binder before the polyfunctional amine (paragraph 0076). The polyfunctional amines are indicated to comprise amine functional polymers and can include those of polymers such as N-(meth)acryloxyalkyl-oxazolidines, dimethylaminoethyl (meth)acrylate and polymers such as poly(ethyleneimine) (paragraph 0078). The amount of the polyfunctional amine is indicated to be present in an amount of preferably 0.5 to 2.0 wt% based on the weight of binder aqueous dispersion (paragraph 0079) which is indicated to have a solids content of 30 wt% or more and up to 50 wt% of the binder polymer(paragraph 0075). This would indicate that the polyfunctional amine is present in an amount of which is greater than 0 but less than 5 wt% based on the dry weight of the anionically stabilized polymer.
Mathews fails to teach the monomer composition of claims 47-49 or the derivative polyalkyleneimine or alkoxylated polyvinylamine of claims 48 and 76.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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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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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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