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 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 1, 3, 6, 7-10, 13, 16-19, 21, 23, 93-96, 99, and 101 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 8-11, 14, 17-20, 22, 92-96, 98, and 100 of copending Application No. 18/263,383 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to coating compositions comprising a binder resin and a feather reducing agent wherein the coating composition is coated on a portion of substrate treated with a composition comprising a trivalent chromium compound. It is clear that all the elements of the application claims are found in the copending claims. The difference between the application claims and the copending claims lies in the fact that the copending claims includes more elements and is thus much more specific. Thus the invention of the copending application is in effect a “species” of the “generic” invention of the application. Since the application claims are anticipated by the claims in the copending application, they are not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 6-7 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 6 claims wherein the composition is an aqueous coating composition. It is unclear if the limitation is referring to the pretreatment composition or the composition containing the binder.
Claim 7 claims wherein the composition is an aqueous coating composition. It is unclear if the limitation is referring to the pretreatment composition or the composition containing the binder.
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.
Claims 1, 3, 6, 7-10, 13, 16-19, 21, 23, 93-96, 99, and 101 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2020/0140680 to Lewis et al. in view of U.S. Patent Pub. No. 2021/0102076 to Konuma et al.
As to claims 1, 3, and 99, Lewis discloses coated substrates coated with a coating composition comprising a polymeric binder comprising reactive functional groups and a curing agent comprising functional groups that are reactive with the reactive functional groups including aminoplasts, polyisocyanates, polyepoxides, hydroxalkylamides, polyacids, polyamines, polyamides which are reactive with carboxylic acids (0053-0075 also function as crosslinking agents). Lewis discloses wherein the substrate is treated with a pretreatment composition including those comprising trivalent chromium (0146).
Lewis discloses pretreated substrates obtained from a pretreatment composition comprising a trivalent chromium as well as other types of pretreatment compositions.
Konuma discloses pretreatment compositions comprising trivalent chromium (0015, 0092-0095).
At the time of filing it would have been obvious to select the trivalent chromium pretreatment composition taught in Lewis to provide improved corrosion resistance as taught in Konuma (0002).
As to claims 6-7, Lewis discloses the curable film forming compositions may be solventborne or water (Abstract, 0093, 0149).
As to claims 8-10, 13, 16-18, and 23, Lewis discloses wherein the coating composition comprises a polyester resin derived from the reaction of polyhydric alcohols including ethylene glycol, hexylene glycol, or neopentyl glycol and polyacids such as sebacic, maleic or fumaric, and phthalic including anhydrides thereof, i.e. acrylic polyester resin (0035).
As to claim 19, Lewis discloses suitable acrylic monomers such as methacrylic acid, ethyl methacrylate, butyl methacrylate, etc. (0027, 0031).
As to claim 21, Lewis discloses wherein the amount of polymer binder in the composition ranges from 30 to 60% (0092).
As to claims 93-96 with regard to the claimed properties, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients within the claimed amounts. Therefore, the claimed effects and physical properties would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to claim 101, Lewis discloses multiple substrates (0134-0140).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763