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
Applicant’s election of Group I (claims 1-14, 17, and 18) and of species polyester polyol in the reply filed on 7/27/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 15, 16, and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/27/2026.
Specification
The abstract of the disclosure is objected to because it does not have proper content or proper language. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. The present abstract includes language “the present application relates to,” “in the preset application,” and “[t]he present application can also provide.”
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.
Claims 2-5 are rejected under 35 U.S.C. 112(b) 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.
With respect to claims 2-5, it is unclear whether the properties of adhesion force to aluminum or a polyester surface, the hardness, or a curvature of a cured product formed from the curable composition are positively recited. If they are, then the claims are indefinite for not being clearly drawn to a composition of matter or to an article of manufacture. If they are not, then the properties are considered to be functional language, i.e., is the curable composition capable of being formed into a cured product having these properties?
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.
Claim 9 is rejected under 35 U.S.C. 112(d) 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. The second polyol compound of claim 1 necessarily has “two functionalities or more.” Paragraph [39] of the instant specification states that “The term polyol compound means a compound containing two or more hydroxy groups. Such a compound may also be called a polyfunctional polyol compound.” 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.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Klein (US 2011/0245406).
With respect to claims 1, 6, and 11, Klein exemplifies a coating composition (paragraph 0158, Table 1) comprising a polyester polyol A1 with at least one hydroxy group esterified with isononanoic acid (paragraph 0134) which reads on claimed first polyol with a polyester skeleton and a hydrocarbon group with 9 carbon atoms, (paragraph 0158, Table 1) and Additive F2 comprising a polyacrylate polyol which reads on second polyol and hydrophilic silica which reads on filler (paragraph 0152) and a second part comprising polyisocyanate curing agent I1 (paragraph 0154).
With respect to claims 2-5, With respect to claims 2-4, Klein does not explicitly disclose the adhesion force to aluminum or a polyester surface, the hardness, or a curvature of a cured product formed from the curable composition; however, these are all properties of a product formed by curing the curable composition. These surface properties are highly dependent on how the cured product is manufactured such as whether there are voids in the final products or the degree of curing. Therefore, the curable composition is capable of forming an article with these properties. Also, because Klein anticipates the ingredients of the composition, it is inherent that a cured product from its curable composition exhibit the claimed properties such properties since such properties are evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With respect to claim 8, Klein’s exemplified coating composition (paragraph 0158, Table 1) includes catalyst D1 comprising hexanol (paragraph 0153) which read on claimed compound having one hydroxyl group and 6 carbon atoms.
With respect to claim 9, the polyacrylic polyol exemplified by Klein necessarily has at least two functionalities.
With respect to claim 10, the polyacrylic polyol exemplified by Klein necessarily has a polyol unit which is dependent on how the polyacrylic polyol polymers which have multiple hydroxyl groups are segmented.
With respect to claim 12, in Table 1, the composition includes a flow control agent F3 which functions as a plasticizer because it evens out viscosity and movement of polymers.
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 of this title, 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 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Klein (US 2011/0245406).
The discussion with respect to Klein in paragraph 8 above is incorporated here by reference.
With respect to claim 13, Klein teaches that a filler “for example” includes aluminum oxide (i.e., alumina) (paragraph 0117).
Klein fails to disclose adding a filler other than silica to the example.
Nevertheless, because Klein teaches that fillers are suitable coating additives, it would have been obvious to one of ordinary skill in the art to add select an aluminum oxide as filler. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
With respect to claim 14, in Table 1 of Klein, it teaches that second component includes polyisocyanate and that filler can be included (paragraph 0117).
Klein does not teach that a filler is also located in this second component.
Nevertheless, because Klein teaches that filler are suitable coating additives, it would have been obvious to one of ordinary skill in the art to add a filler to the second component comprising polyisocyanate.
Claims 1, 4-7, 9-11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ercole (US 2012/0252967).
With respect to claims 1, 6, 7, 9-11, Ercole discloses a polyurethane polymer prepared from an α-oxy carbonyl moiety
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where Y is OH or —[—O—R2(OH)z—]y—OH, X is H or —[—C(O)CH(R1)O—]x—H, R is an optionally substituted aliphatic hydrocarbon having three or more carbon atoms, R1 is an optionally substituted aliphatic hydrocarbon, and x is a positive integer ranging from 1 to 100, wherein for each repeat unit x when x≥2, R1 is the same or different, R2 is a z+2 valent moiety selected (un)substituted hydrocarbons, y is an integer ranging from 1 to 100, wherein for each repeat unit y when y≥2, R2 is the same or different, and z is 0 or an integer ranging from 1 to 20 (claims 1 and 8). An exemplified formulation includes PCLD (polycaprolactone diol) with fatty acid modifier 2-OH oleic acid, BDO (1,4-butanediol) (reads on claimed second polyol compound), and HDI polyisocyanate (paragraphs 0230, 0233). Ercole teaches that a filler can be added (paragraph 0104).
The example does not include a filler.
Even so, it would have been obvious to one of ordinary skill in the art to add a filler given that Ercole teaches that it is a suitable additive.
With respect to claims 4 and 5, Ercole teaches that polyurethanes can be “soft” (paragraph 0006) which suggests a low hardness and low curvature radius like claimed.
With respect to claim 14, Ercole teaches that the polyurethanes can be prepared by a batch wise mixing including a first part with ingredient other than polyisocyanate and a second part with polyisocyanate, wherein fillers can be included in either part (paragraph 0104).
With respect to claim 17, in formula
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where Y is OH or —[—O—R2(OH)z—]y—OH and X is H or —[—C(O)CH(R1)O—]x—H, x is a positive integer ranging from 1 to 100 and y is an integer ranging from 1 to 100 (claims 1 and 8). The integers for x and y correspond to claimed n and range of 1-100 overlaps with claimed 1-25.
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, 2, 6, and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 and 8 of copending Application No. 18/276,352. Although the claims at issue are not identical, they are not patentably distinct from each other because US appl ‘352 claims a curable composition comprising a polyol component and a filler, wherein the polyol component comprises a first polyol having at least one substituent of Formula (1) (like in instant claim 6) and at least one linear or branched hydrocarbon group with 3 or more carbon atoms bonded to a polyester (e.g., polycaprolactone) skeleton and the second polyol does not have the at least one linear or branched hydrocarbon group. When the curable composition is cured it has an adhesion force to aluminum of 1N/mm2 or less. Because the claims of US ‘352 are more specific than the presently claimed curable composition, the claims of US ‘352 anticipate the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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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.
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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