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 .
Election/Restrictions
In view of the Arguments received 04/07/2026, the examiner withdraws the Restriction mailed 02/10/2026. Group I (Claims 1-5) which were previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 02/10/2026 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or non-statutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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.
Claims 1-10 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-10 of co-pending Application No. 17/631,612 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the given below.
Application No. ‘612 claims a method for increasing storage stability of epoxy resin composition, the method comprising providing an epoxy resin composition an epoxy resin and a curing agent for curing the epoxy resin; and adding boronic acids of the general formula (I) to the epoxy resin composition, formula (II), formula (III), and formula (IV). Furthermore, Application No. ‘612 claims an epoxy resin composition comprising at least one epoxy resin and a curing agent for curing the epoxy resin, wherein the composition comprises at least one boronic acid of the general formula (I), and wherein the epoxy resin composition does not comprise, in addition to the curing agent according to general formula (III), another curing agent selected from the group consisting of cyanamide, guanidines, cyanoguanidines, nitroguanidines, acylguanidines, biguanidines, and a compound according to general formula (IV).
The scope of the present claims encompasses the scope of the claims in Application No. ‘612.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Closest Prior Art
TAKAHASHI (U.S. Publication No. 2018/0327602, hereinafter TAKAHASHI), one of the closest prior art of record, teaches a resin composition comprising one or more inorganic substances selected from the group consisting of an inorganic nitride and an inorganic oxide, a boronic acid compound, and an epoxy compound [0013]. The resin composition may contain one of epoxy compound or two or more of epoxy compounds [0037]. The boronic acid compound may be a compound represented by General Formula 1,
PNG
media_image1.png
101
392
media_image1.png
Greyscale
R1 and R2 each independently represents a hydrogen atom,
X represents a divalent linking group including at least one linking group A selected from the group consisting of a heteroarylene group which may have a substituent [0020-0021 and 0053-0063]. More specifically [0083], Examples of the boronic acid compound include
PNG
media_image2.png
219
316
media_image2.png
Greyscale
(which reads on Formula I and II of the present invention).
The resin composition may contain a curing agent [0039 and 0146]. However, TAKAHASHI fails to teach the curing agent has the general formula (III).
STROBEL et al. (U.S. Publication No. 2013/0323429, hereinafter STROBEL), one of the closest prior art of record, teaches curing agents for epoxy resins comprising mixtures containing cyanamide and a urea-derivative which reads on Formula III [0015], however, the present claims recite wherein the epoxy resin composition does not comprise, in addition to the curing agent according to general formula (III), another curing agent selected from the group consisting of cyanamide, guanidines, cyanoguanidines, nitroguanidines, acylguanidines, biguanidines, and a compound according to general formula (IV). However, STROBEL teaches the mixture of curing agents containing cyanamide, therefore, STROBEL does not teach the claim limitations of 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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
Prosecution Insights