Prosecution Insights
Last updated: April 19, 2026
Application No. 18/142,358

RHEOLOGY MODIFIER FOR SEALANT OR ADHESIVE FORMULATIONS

Non-Final OA §101§102§103§112§DP
Filed
May 02, 2023
Examiner
PEPITONE, MICHAEL F
Art Unit
1767
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Elementis Specialties Inc.
OA Round
1 (Non-Final)
74%
Grant Probability
Favorable
1-2
OA Rounds
3y 2m
To Grant
96%
With Interview

Examiner Intelligence

Grants 74% — above average
74%
Career Allow Rate
865 granted / 1165 resolved
+9.2% vs TC avg
Strong +22% interview lift
Without
With
+22.2%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
52 currently pending
Career history
1217
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
40.9%
+0.9% vs TC avg
§102
24.8%
-15.2% vs TC avg
§112
19.8%
-20.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1165 resolved cases

Office Action

§101 §102 §103 §112 §DP
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 . Claim Objections Claims 6-18, 23-66, 72-83, 87-109, 111-128 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim and/or should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claims have not been further treated on the merits. The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not). The examiner notes claim 19 is not present in the claims filed on 5/2/23. The examiner assumes claim 19 has been canceled. The canceled claim should be listed in an amendment with the proper status modifier indicating said claim was canceled. 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 1-5, 20-22, 85-86, and 110 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 1 recites the limitation "obtainable from" in line 2. It is unclear if the polyurea is obtained/produced from the reaction, or if the polyurea is merely obtainable. Accordingly, claim 1 is indefinite. For the purpose of examination, claim 1 will be interpreted the polyurea is obtained from the reaction. Claim 2 recites the limitation "obtainable from" in line 2. It is unclear if the polyurea is obtained/produced from the reaction, or if the polyurea is merely obtainable. Accordingly, claim 2, and dependent claims 3-5 and 20-22 are indefinite. For the purpose of examination, claim 2 will be interpreted the polyurea is obtained from the reaction. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation C1-C8 alkylene, and the claim also recites C2-C8 alkylene, C2-C4 alkylene which is the narrower statement of the range/limitation. In the present instance, claim 5 recites the broad recitation C1-C8 alkylene, and the claim also recites C2-C8 alkylene, C2-C4 alkylene which is the narrower statement of the range/limitation. In the present instance, claim 21 recites the broad recitation C1-C8 alkylene, and the claim also recites C2-C8 alkylene, C2-C4 alkylene which is the narrower statement of the range/limitation. In the present instance, claim 85 recites the broad recitation C1-C8 alkylene, and the claim also recites C2-C8 alkylene, C2-C4 alkylene which is the narrower statement of the range/limitation. In the present instance, claim 86 recites the broad recitation C1-C12 hydrocarbyl, and the claim also recites C3-C10 hydrocarbyl, a C1-C12 hydrocarbyl selected from which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Regarding claims 4-5, 21, 85-86: the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth [see MPEP 2173.05(d)]. Claim 110 recites the limitation "obtainable from" in line 2. It is unclear if the polyurea is obtained/produced from the reaction, or if the polyurea is merely obtainable. Accordingly, claim 110 is indefinite. For the purpose of examination, claim 110 will be interpreted the polyurea is obtained from the reaction. Claim 110; It is unclear if the text within the parentheses (e.g. of the diamine and the triamine) is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parenthesis further limits the claim. Claim Rejections - 35 USC § 102 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grigsby et al. (WO 2020/185450). Regarding claim 1: Grigsby et al. (WO ‘450) discloses dispersants prepared from an isocyanate and a polyoxyalkylene amine [abstract], wherein the isocyanate can be a diisocyanate such as hexamethylene diisocyanate and 4,4’-diphenylmethane diisocyanate (4,4’-MDI) [0028-0029]. Grigsby et al. (WO ‘450) discloses Example 1 [Ex. 1; 0067; Table 1, Run H] reacts Surfonamine L200 amine and hexamethylene diisocyanate (note: hexamethylene diisocyanate exchanged for 4,4’-MDI (Rubinate 44) in Run H as the isocyanate [see MPEP 2131.02]) at a 1.01 N/NCO ratio [Ex. 1; 0067; Tables 1-2, Run H]. Grigsby et al. (WO ‘450) discloses Surfonamine L series has a -CH3 end group and a methyl (R = CH3) side chain [0039]. Note Surfonamine L series: PNG media_image1.png 174 482 media_image1.png Greyscale [0039]. Claim(s) 67 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grigsby et al. (WO 2020/185450). Regarding claim 67: Grigsby et al. (WO ‘450) discloses dispersants prepared from an isocyanate and a polyoxyalkylene amine [abstract], wherein the isocyanate can be a diisocyanate such as hexamethylene diisocyanate and 4,4’-diphenylmethane diisocyanate (4,4’-MDI) [0028-0029]. Grigsby et al. (WO ‘450) discloses Example 1 [Ex. 1; 0067; Table 1, Run H] reacts Surfonamine L200 amine and hexamethylene diisocyanate (note: hexamethylene diisocyanate exchanged for 4,4’-MDI (Rubinate 44) in Run H as the isocyanate [see MPEP 2131.02]) at a 1.01 N/NCO ratio [Ex. 1; 0067; Tables 1-2, Run H]. Grigsby et al. (WO ‘450) discloses Surfonamine L series has a -CH3 end group and a methyl (R = CH3) side chain [0039]. Note Surfonamine L series: PNG media_image1.png 174 482 media_image1.png Greyscale [0039]. Claim Rejections - 35 USC § 103 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. Claim(s) 2-5 and 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grigsby et al. (WO 2020/185450). Regarding claims 2-5: Grigsby et al. (WO ‘450) discloses dispersants prepared from an isocyanate and a polyoxyalkylene amine [abstract], wherein the isocyanate can be a diisocyanate such as hexamethylene diisocyanate and 4,4’-diphenylmethane diisocyanate (4,4’-MDI) [0028-0029]. Grigsby et al. (WO ‘450) discloses the polyoxyalkylene amine can be a monoamine [0036] such as Surfonamine L-series, that has a -CH3 end group and a methyl (R = CH3) side chain [0036; 0039]. Grigsby et al. (WO ‘450) discloses the polyoxyalkylene amine can be a diamine [0041] such as Jeffamine D-series, that has a -NH2 end groups and methyl or ethyl (R2 = CH3 ; CH2CH3) side chains [0042]. Grigsby et al. (WO ‘450) discloses Example 1 [Ex. 1; 0067; Table 1, Run H] reacts Surfonamine L200 amine and hexamethylene diisocyanate (note: hexamethylene diisocyanate exchanged for 4,4’-MDI (Rubinate 44) in Run H as the isocyanate [see MPEP 2131.02]) at a 1.01 N/NCO ratio [Ex. 1; 0067; Tables 1-2, Run H]. Grigsby et al. (WO ‘450) does not specifically disclose Ex. 1 containing L200 and a Jeffamine D-series. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a Jeffamine D-series polyoxyalkylene amine based on the invention of Grigsby et al. (WO ‘450), and would have been motivated to do so since Grigsby et al. (WO ‘450) suggests that the composition can contain Jeffamine D-series polyoxyalkylene amines [0041-0042]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06]. Note Surfonamine L-series: PNG media_image1.png 174 482 media_image1.png Greyscale [0039]; Jeffamine D-series: PNG media_image2.png 168 482 media_image2.png Greyscale [0042]. Regarding claims 20-22: Grigsby et al. (WO ‘450) discloses the basic claimed additive [as set forth above with respect to claim 2]. Note: claims 20-22 further defines species of the triamine component recited in claim 2. However, as claimed, such species only further define the genus of the triamine component (i.e. claims 2 and 20-22 do not require the rheological additive to comprise the triamine component). Claim(s) 68-70 and 84-86 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grigsby et al. (WO 2020/185450). Regarding claims 68-70: Grigsby et al. (WO ‘450) discloses dispersants prepared from an isocyanate and a polyoxyalkylene amine [abstract], wherein the isocyanate can be a diisocyanate such as hexamethylene diisocyanate and 4,4’-diphenylmethane diisocyanate (4,4’-MDI) [0028-0029]. Grigsby et al. (WO ‘450) discloses the polyoxyalkylene amine can be a monoamine [0036] such as Surfonamine L-series, that has a -CH3 end group and a methyl (R = CH3) side chain [0036; 0039]. Grigsby et al. (WO ‘450) discloses the polyoxyalkylene amine can be a diamine [0041] such as Jeffamine D-series, that has a -NH2 end groups and methyl or ethyl (R2 = CH3 ; CH2CH3) side chains [0042]. Grigsby et al. (WO ‘450) discloses Example 1 [Ex. 1; 0067; Table 1, Run H] reacts Surfonamine L200 amine and hexamethylene diisocyanate (note: hexamethylene diisocyanate exchanged for 4,4’-MDI (Rubinate 44) in Run H as the isocyanate [see MPEP 2131.02]) at a 1.01 N/NCO ratio [Ex. 1; 0067; Tables 1-2, Run H]. Grigsby et al. (WO ‘450) does not specifically disclose Ex. 1 containing L200 and a Jeffamine D-series. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a Jeffamine D-series polyoxyalkylene amine based on the invention of Grigsby et al. (WO ‘450), and would have been motivated to do so since Grigsby et al. (WO ‘450) suggests that the composition can contain Jeffamine D-series polyoxyalkylene amines [0041-0042]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06]. Note Surfonamine L-series: PNG media_image1.png 174 482 media_image1.png Greyscale [0039]; Jeffamine D-series: PNG media_image2.png 168 482 media_image2.png Greyscale [0042]. Regarding claims 84 and 86: Grigsby et al. (WO ‘450) discloses dispersants prepared from an isocyanate and a polyoxyalkylene amine [abstract], wherein the isocyanate can be a diisocyanate such as hexamethylene diisocyanate and 4,4’-diphenylmethane diisocyanate (4,4’-MDI) [0028-0029]. Grigsby et al. (WO ‘450) discloses the polyoxyalkylene amine can be a monoamine [0036] such as Surfonamine L-series, that has a -CH3 end group and a methyl (R = CH3) side chain [0036; 0039]. Grigsby et al. (WO ‘450) discloses the polyoxyalkylene amine can be a triamine [0045] such as Jeffamine T-series, that has a -NH2 end groups, R3 as hydrogen, methyl or ethyl (R3 = H; CH3 ; CH2CH3) and R4 as hydrogen or ethyl (R4 = H ; CH2CH3), [0045]. Grigsby et al. (WO ‘450) discloses Example 1 [Ex. 1; 0067; Table 1, Run H] reacts Surfonamine L200 amine and hexamethylene diisocyanate (note: hexamethylene diisocyanate exchanged for 4,4’-MDI (Rubinate 44) in Run H as the isocyanate [see MPEP 2131.02]) at a 1.01 N/NCO ratio [Ex. 1; 0067; Tables 1-2, Run H]. Grigsby et al. (WO ‘450) does not specifically disclose Ex. 1 containing L200 and a Jeffamine T-series. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a Jeffamine T-series polyoxyalkylene amine based on the invention of Grigsby et al. (WO ‘450), and would have been motivated to do so since Grigsby et al. (WO ‘450) suggests that the composition can contain Jeffamine T-series polyoxyalkylene amines [0045]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06]. Note Surfonamine L-series: PNG media_image1.png 174 482 media_image1.png Greyscale [0039]; Jeffamine T-series: PNG media_image3.png 266 694 media_image3.png Greyscale [0045]. Regarding claim 85: Grigsby et al. (WO ‘450) discloses polyoxyalkylene diamines having instant R3 as -CR2CH2- (R2 = H or CH3) [0041] and -CHCH3-CH2- [0043]. Grigsby et al. (WO ‘450) does not specifically disclose polyoxyalkylene triamines having instant R3 as -CR2CH2- (R2 = H or CH3) or -CHCH3-CH2-. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979) [see MPEP 2144.09]. Claim(s) 110 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grigsby et al. (WO 2020/185450). Regarding claim 110: Grigsby et al. (WO ‘450) discloses dispersants prepared from an isocyanate and a polyoxyalkylene amine [abstract], wherein the isocyanate can be a diisocyanate having a uretdione moiety prepared by dimerization of diisocyanates such as hexamethylene diisocyanate and 4,4’-diphenylmethane diisocyanate (4,4’-MDI) [0028; 0030-0032]. Grigsby et al. (WO ‘450) discloses the polyoxyalkylene amine can be a monoamine [0036] such as Surfonamine L-series, that has a -CH3 end group and a methyl (R = CH3) side chain [0036; 0039]. Grigsby et al. (WO ‘450) discloses the polyoxyalkylene amine can be a diamine [0041] such as Jeffamine D-series, that has a -NH2 end groups and methyl or ethyl (R2 = CH3 ; CH2CH3) side chains [0042]. Grigsby et al. (WO ‘450) discloses Example 1 [Ex. 1; 0067; Table 1, Run A] reacts Surfonamine L200 amine and a diisocyanate having a uretdione moiety prepared by dimerization hexamethylene diisocyanate (note: hexamethylene diisocyanate exchanged for 4,4’-MDI (via Isonate 143L) as the dimerized diisocyanate in Run A [see MPEP 2131.02]) at a 1.00 N/NCO ratio [Ex. 1; 0067; Tables 1-2, Run A]. Grigsby et al. (WO ‘450) does not specifically disclose Ex. 1 containing L200 and a Jeffamine D-series. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a Jeffamine D-series polyoxyalkylene amine based on the invention of Grigsby et al. (WO ‘450), and would have been motivated to do so since Grigsby et al. (WO ‘450) suggests that the composition can contain Jeffamine D-series polyoxyalkylene amines [0041-0042]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06]. A prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04]. Note Surfonamine L-series: PNG media_image1.png 174 482 media_image1.png Greyscale [0039]; Jeffamine D-series: PNG media_image2.png 168 482 media_image2.png Greyscale [0042]. Double Patenting A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101. Claims 1-3, 20, 67-69, and 110 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3, 19, 67-69, and 111 of copending Application No. 18/995,535 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. 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 4-5, 21-22, 70-71, and 85 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-5 and 20-21, 70-71 of copending Application No. 18/995,535 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the rheological additive of Application No. 18/995,535 anticipates the instant rheological additive of claims 4-5 when R3 is C1-C8 alkylene and R4 is C1-C8 alkylene, respectively. The rheological additive of Application No. 18/995,535 anticipates the instant rheological additive of claims 21-22 when R3 is C1-C8 alkylene and R5 is a linear or branched C1-C12 hydrocarbyl, respectively. The rheological additive of Application No. 18/995,535 anticipates the instant rheological additive of claims 70-71 when R3 is C1-C8 alkylene and R4 is C1-C8 alkylene, respectively. The rheological additive of Application No. 18/995,535 anticipates the instant rheological additive of claim 85 when (L2) has R3 as C1-C8 alkylene. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. See attached form PTO-892. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM. 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, Mark Eashoo can be reached on 571-272-1197. 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 the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
Read full office action

Prosecution Timeline

May 02, 2023
Application Filed
Feb 03, 2026
Non-Final Rejection — §101, §102, §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
74%
Grant Probability
96%
With Interview (+22.2%)
3y 2m
Median Time to Grant
Low
PTA Risk
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