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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/291,958 (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 compositions comprising overlapping amounts of (meth)acrylic modified polyurethane comprising polymerization units of anhydrosugar-alkylene oxide adducts, a (meth)acrylic monomer, an epoxy resin, an epoxy curing promoter, and a polymerization initiator. The difference in the claims lies in the future intended use of the composition, the instant claims are directed to coatings for metals and the copending claims are directed to compositions for bonding heterogenous materials.
The intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02. The compositions in both sets of claims are the same and thus an ordinary skilled artisan would find that the coating composition in the pending claims could be used as an adhesive.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-5, 7-9, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2007/0166642 to Inoue in view of JP-2013/142128 to Takahashi et al. with evidence provided by U.S. Patent Pub. No. 2021/0309670 to Yoo et al.
As to claims 1-3, 7, and 11, Inoue discloses a photosensitive coating composition comprising (A) 10 to 90% of epoxy (meth)acrylate resin, (B) 1 to 60 % of urethane (meth)acrylate resin (0064), (C) 1 to 50% of epoxy resin (0071), (D) 10 to 70 % unsaturated monomer diluent (0076), (E) 0.1 to 20% of thermal initiator or photopolymization initiator (Abstract), and imidazole epoxy curing agents wherein the contents are based 100 mass parts of the photocurable composition (0080).
The content of each component sits within a range value that overlaps or sits inside of the claimed ranges. It is well settled that where prior art describes components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05. In light of the cited patent case law, it would therefore have been obvious that in this particular instance to 10% of the epoxy (meth)acrylate to obtain a coating with desired heat resistance and flexibility (0047).
Inoue discloses a urethane (meth)acrylate comprising the reaction product of a diisocyanate, polyether polyol and a chain terminating hydroxy alkyl acrylate (0050-0060). Inoue does not expressly disclose a polyol derived from anhydrosugar alcohol-alkylene oxide adduct.
Within the same field of polyurethane coatings, Takahashi discloses an aqueous polyurethane coating comprising a prepolymer containing anhydrosugar alcohol backbones, in particular polyether adducts of isosorbide and ethylene oxide (0065).
At the time of filing it would have been obvious to a person of ordinary skill in the art to substitute the polyol of Inoue with the polyether sugar adduct of Takahashi to improve adhesion and heat resistance of the coating composition and for environmental concerns because anhydrosugar alcohols are renewable low-cost raw materials (0004, 0079, 0005 Yoo).
As to claims 4-5, Inoue discloses 4,4-diphenylmethane diisocyanate or isophorone diisocyanate and 2-hydroxyethyln acrylate (0108).
As to claim 8, Inoue discloses (meth)acrylic monomers with 1 to 4 acrylic groups (0074).
As to claim 9, Inoue discloses difunctional epoxy resins (0070, Examples).
As to claim 12, Inoue discloses mixing the components at room temperature and curing under heat (0124-0125).
As to claim 13, Inoue discloses coating metallic surfaces with the coating composition (0003).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2007/0166642 to Inoue in view of JP-2013/142128 to Takahashi et al. with evidence provided by U.S. Patent Pub. No. 2021/0309670 to Yoo et al. that has been explained above and is applied here as such in view of U.S> Patent Pub. No. 2018/0079935 to Ota et al.
As to claim 10, Inoue discloses a photosensitive coating composition comprising (A) 10 to 90% of epoxy (meth)acrylate resin, (B) 1 to 60 % of urethane (meth)acrylate resin (0064), (C) 1 to 50% of epoxy resin (0071), (D) 10 to 70 % unsaturated monomer diluent (0076), (E) 0.1 to 20% of thermal initiator or photopolymization initiator (Abstract), and imidazole epoxy curing agents wherein the contents are based 100 mass parts of the photocurable composition (0080). Inoue does not expressly disclose the claimed initiator.
Within the same field of photocurable (meth)acrylate urethane containing compositions, Ota discloses the use of the claimed organic peroxide initiators (0044-0046).
At the time of filing it would have been obvious to a person of ordinary skill in the art to use the initiator taught in Ota in the photocurable composition of Inoue to allow for lower temperature curability (Abstract, 0048).
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
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.
/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763