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 with traverse of Group I, claims 1 and 3-5 in the reply filed on 11/17/2025 is acknowledged. The traversal is on the ground(s) that evaluating and searching all the groups would not put undue burden on the examiner. This is not found persuasive because the groups of inventions do not relate to a single general inventive concept because the groups lack unity of invention because the shared technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Clay et al. (US 2015/0218426), as discussed in the previous action, or in view of Swaans et al. (US 2019/0211158) and Zhou et al. (US 2019/0168259), as discussed below.
The requirement is still deemed proper and is therefore made FINAL.
It is noted that claims 7-9 were amended to depend from claims 1 and 3, and new claims 16-28 depend from claims 1 and 3-5, and, therefore, these claims fall within Group I.
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, 3-5, 7-9, and 16-28 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 contains the limitation “comprising water in a major amount of the liquid carrier” in line 8. It is unclear how much water is required by the limitation “a major amount”. For the purposes of examination, “comprising water in a major amount of the liquid carrier” will be considered to mean that the liquid carrier comprises greater than 50% water.
Claims 9 and 16-18 depend from claim 1 and, therefore, also contain this limitation.
Claim 3 contains the limitation “comprising water in a major amount of the liquid carrier” in line 9. It is unclear how much water is required by the limitation “a major amount”. For the purposes of examination, “comprising water in a major amount of the liquid carrier” will be considered to mean that the liquid carrier comprises greater than 50% water.
Claims 7-8 and 19-20 depend from claim 3 and, therefore, also contain this limitation.
Claim 4 contains the limitation “comprising water in a major amount of the liquid carrier” in line 9. It is unclear how much water is required by the limitation “a major amount”. For the purposes of examination, “comprising water in a major amount of the liquid carrier” will be considered to mean that the liquid carrier comprises greater than 50% water.
Claims 21-24 depend from claim 4 and, therefore, also contain this limitation.
Claim 5 contains the limitation “comprising water in a major amount of the liquid carrier” in line 9. It is unclear how much water is required by the limitation “a major amount”. For the purposes of examination, “comprising water in a major amount of the liquid carrier” will be considered to mean that the liquid carrier comprises greater than 50% water.
Claims 25-28 depend from claim 4 and, therefore, also contain this limitation.
Claim Rejections - 35 USC § 103
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 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) 1, 3-4, 8-9, 16-17, 19-20, and 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swaans et al. (U.S. Patent Application Publication 2019/0211158, hereafter Swaans ‘158) in view of Zhou et al. (U.S. Patent Application Publication 2019/0168259, hereafter Zhou ‘259).
Claim 1: Swaans ‘158 teaches a method of coating a substrate (abstract, [0122]) where the substrate can be a metal substrate ([0115]), the method comprising:
providing an aluminum metal substrate ([0112], [0115]);
directing a liquid jet coating composition to at least a portion of the substrate ([0112], [0122], [0133]), the coating composition comprising:
polymer particles having a number average molecular weight of at least 100 kDaltons (abstract, [0012]) and an average particle size of 2 to 10 microns ([0022]); and
a liquid carrier comprising water (abstract, [0008], [0009]), where the liquid carrier comprises water in an amount of less than 85 wt% ([0010]); and
curing the coating to form a hardened continuous adherent coating on at least a portion of the substrate ([0110]) where the coating can have a thickness of 0.5 to 50 microns ([0013]).
With respect to claim 1, Swaans ‘158 does not explicitly teach that the water is in a major amount of the liquid carrier. However, the claimed water amount range of in a major amount is obvious over the water amount range of less than 85 wt% taught by Swaans ‘158 because they overlap. See MPEP 2144.05.
With respect to claim 1, Swaans ‘158 does not explicitly teach that the substrate is a coil or that the substrate has an average thickness of up to 635 microns.
Zhou ‘259 teaches a method of coating a metal substrate (abstract, [0008]) comprising providing an aluminum metal substrate ([0008]), applying a liquid coating composition to at least a portion of the substrate (abstract, [0001]) where the liquid coating composition comprises polymer (abstract) and water ([0001]), and curing the liquid coating composition to form an adherent coating (abstract, [0006]). Zhou ‘259 teaches that the aluminum metal substrate can be an aluminum coil substrate with a thickness of about 175 microns to 230 microns (abstract, [0008], [0039]). Zhou ‘259 teaches that this provides a substrate that is particularly useful ([0001], [0039]). Both Swaans ‘158 and Zhou ‘259 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘259, abstract, [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the aluminum coil substrate with a thickness of about 175 microns to 230 microns taught by Zhou ‘259 as the substrate used in the method taught by Swaans ‘158 because it is a particularly useful substrate, as taught by Zhou ‘259.
Further, it would have been a simple substitution that would have yielded predictable results.
Claim 3: Swaans ‘158 teaches a method of coating a substrate (abstract, [0122]) where the substrate can be a metal substrate ([0115]) useful for packaging ([0006]), the method comprising:
providing an aluminum metal substrate ([0112], [0115]);
directing a liquid jet coating composition to at least a portion of the substrate ([0112], [0122], [0133]), the coating composition comprising:
polymer particles having a number average molecular weight of at least 100 kDaltons (abstract, [0012]) and an average particle size of 2 to 10 microns ([0022]); and
a liquid carrier comprising water (abstract, [0008], [0009]), where the liquid carrier comprises water in an amount of less than 85 wt% ([0010]); and
curing the coating to form a hardened continuous adherent coating on at least a portion of the substrate ([0110]) where the coating can have a thickness of 0.5 to 50 microns ([0013]).
With respect to claim 3, Swaans ‘158 does not explicitly teach that the water is in a major amount of the liquid carrier. However, the claimed water amount range of in a major amount is obvious over the water amount range of less than 85 wt% taught by Swaans ‘158 because they overlap. See MPEP 2144.05.
With respect to claim 3, Swaans ‘158 does not explicitly teach that the substrate has an average thickness of up to 635 microns.
Zhou ‘259 teaches a method of coating a metal substrate (abstract, [0008]) comprising providing an aluminum metal substrate ([0008]), applying a liquid coating composition to at least a portion of the substrate (abstract, [0001]) where the liquid coating composition comprises polymer (abstract) and water ([0001]), and curing the liquid coating composition to form an adherent coating (abstract, [0006]). Zhou ‘259 teaches that the aluminum metal substrate can be an aluminum substrate with a thickness of about 175 microns to 230 microns (abstract, [0008], [0039]). Zhou ‘259 teaches that this provides a substrate that is particularly useful ([0001], [0039]). Both Swaans ‘158 and Zhou ‘259 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘259, abstract, [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the aluminum substrate with a thickness of about 175 microns to 230 microns taught by Zhou ‘259 as the substrate used in the method taught by Swaans ‘158 because it is a particularly useful substrate, as taught by Zhou ‘259.
Further, it would have been a simple substitution that would have yielded predictable results.
Claim 4: Swaans ‘158 teaches a method of coating a substrate (abstract, [0122]) where the substrate can be a metal substrate ([0115]) useful for packaging ([0006]), the method comprising:
providing an aluminum metal substrate ([0112], [0115]);
directing a liquid jet coating composition to at least a portion of the substrate ([0112], [0122], [0133]), the coating composition comprising:
polymer particles having a number average molecular weight of at least 100 kDaltons (abstract, [0012]) and an average particle size of 2 to 10 microns ([0022]); and
a liquid carrier comprising water (abstract, [0008], [0009]), where the liquid carrier comprises water in an amount of less than 85 wt% ([0010]); and
curing the coating to form a hardened continuous adherent coating on at least a portion of the substrate ([0110]) where the coating can have a thickness of 0.5 to 50 microns ([0013]) and the coating can be patterned ([0135]).
With respect to claim 4, Swaans ‘158 does not explicitly teach that the water is in a major amount of the liquid carrier. However, the claimed water amount range of in a major amount is obvious over the water amount range of less than 85 wt% taught by Swaans ‘158 because they overlap. See MPEP 2144.05.
With respect to claim 4, Swaans ‘158 does not explicitly teach that the substrate has an average thickness of up to 635 microns.
Zhou ‘259 teaches a method of coating a metal substrate (abstract, [0008]) comprising providing an aluminum metal substrate ([0008]), applying a liquid coating composition to at least a portion of the substrate (abstract, [0001]) where the liquid coating composition comprises polymer (abstract) and water ([0001]), and curing the liquid coating composition to form an adherent coating (abstract, [0006]). Zhou ‘259 teaches that the aluminum metal substrate can be an aluminum substrate with a thickness of about 175 microns to 230 microns (abstract, [0008], [0039]). Zhou ‘259 teaches that this provides a substrate that is particularly useful ([0001], [0039]). Both Swaans ‘158 and Zhou ‘259 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘259, abstract, [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the aluminum substrate with a thickness of about 175 microns to 230 microns taught by Zhou ‘259 as the substrate used in the method taught by Swaans ‘158 because it is a particularly useful substrate, as taught by Zhou ‘259.
Further, it would have been a simple substitution that would have yielded predictable results.
Claims 8 and 22: With respect to claims 8 and 22, the modified teachings of Swaans ‘158 do not explicitly teach that the metal substrate is a tab stock.
Zhou ‘259 teaches a method of coating a metal substrate (abstract, [0008]) comprising providing an aluminum coil metal substrate ([0008]), applying a liquid coating composition to at least a portion of the substrate (abstract, [0001]) where the liquid coating composition comprises polymer (abstract) and water ([0001]), and curing the liquid coating composition to form an adherent coating (abstract, [0006]). Zhou ‘259 teaches that the aluminum metal substrate can for making beverage can tab stock ([0012]). Both Swaans ‘158 and Zhou ‘259 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘259, abstract, [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the aluminum coil metal substrate be for making beverage can tab stock as taught by Zhou ‘259 in the method taught by the modified teachings of Swaans ‘158 because it would have been a combination of prior art elements that would have yielded predictable results.
Claim 9: Swaans ‘158 teaches that the substrate can be an aluminum substrate ([0112], [0115]).
With respect to claim 9, the modified teachings of Swaans ‘158 does not explicitly teach that the aluminum coil substrate is for making beverage can ends with the coating applied to an interior or exterior surface or both.
Zhou ‘259 teaches a method of coating a metal substrate (abstract, [0008]) comprising providing an aluminum coil metal substrate ([0008]), applying a liquid coating composition to at least a portion of the substrate (abstract, [0001]) where the liquid coating composition comprises polymer (abstract) and water ([0001]), and curing the liquid coating composition to form an adherent coating (abstract, [0006]). Zhou ‘259 teaches that the aluminum coil metal substrate can for making beverage can ends where the coating is on an interior surface ([0012]). Both Swaans ‘158 and Zhou ‘259 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘259, abstract, [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the aluminum coil metal substrate be for making beverage can ends where the coating is on an interior surface as taught by Zhou ‘259 in the method taught by the modified teachings of Swaans ‘158 because it would have been a combination of prior art elements that would have yielded predictable results.
Claims 16, 19, and 23: Swaans ‘158 teaches that the curing can be curing using UV radiation ([0110]).
Claims 17, 20, and 24: Swaans ‘158 teaches that the metal substrate can comprise aluminum ([0112], [0115]).
Claim(s) 5 and 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swaans et al. ‘158 in view of Zhou et al. ‘259 and Hsieh et al. (U.S. Patent 9,976,055, hereafter Hsieh ‘055).
Claim 5: Swaans ‘158 teaches a method of coating a substrate (abstract, [0122]) where the substrate can be a metal substrate ([0115]) useful for packaging ([0006]), the method comprising:
providing an aluminum metal substrate ([0112], [0115]);
directing a liquid jet coating composition to at least a portion of the substrate ([0112], [0122], [0133]), the coating composition comprising:
polymer particles having a number average molecular weight of at least 100 kDaltons (abstract, [0012]) and an average particle size of 2 to 10 microns ([0022]); and
a liquid carrier comprising water (abstract, [0008], [0009]), where the liquid carrier comprises water in an amount of less than 85 wt% ([0010]); and
curing the coating to form a hardened continuous adherent coating on at least a portion of the substrate ([0110]) where the coating can have a thickness of 0.5 to 50 microns ([0013]).
With respect to claim 5, Swaans ‘158 does not explicitly teach that the water is in a major amount of the liquid carrier. However, the claimed water amount range of in a major amount is obvious over the water amount range of less than 85 wt% taught by Swaans ‘158 because they overlap. See MPEP 2144.05.
With respect to claim 5, Swaans ‘158 does not explicitly teach that the substrate has an average thickness of up to 635 microns, that the method provides multiple liquid jet coating compositions wherein at least two of the multiple liquid jet coating compositions are different, or that at least one coating composition is deposited on another different coating composition.
Zhou ‘259 teaches a method of coating a metal substrate (abstract, [0008]) comprising providing an aluminum metal substrate ([0008]), applying a liquid coating composition to at least a portion of the substrate (abstract, [0001]) where the liquid coating composition comprises polymer (abstract) and water ([0001]), and curing the liquid coating composition to form an adherent coating (abstract, [0006]). Zhou ‘259 teaches that the aluminum metal substrate can be an aluminum substrate with a thickness of about 175 microns to 230 microns (abstract, [0008], [0039]). Zhou ‘259 teaches that this provides a substrate that is particularly useful ([0001], [0039]). Both Swaans ‘158 and Zhou ‘259 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘259, abstract, [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the aluminum substrate with a thickness of about 175 microns to 230 microns taught by Zhou ‘259 as the substrate used in the method taught by Swaans ‘158 because it is a particularly useful substrate, as taught by Zhou ‘259.
Further, it would have been a simple substitution that would have yielded predictable results.
With respect to claim 5, the modified teachings of Swaans ‘158 do not explicitly teach that the method provides multiple liquid jet coating compositions wherein at least two of the multiple liquid jet coating compositions are different, or that at least one coating composition is deposited on another different coating composition.
Hsieh ‘055 teaches a method of coating a metal coil substrate applying a liquid jet coating composition (abstract, col 2 ln 32-41, col 30 ln 47-62). Hsieh ‘055 teaches that applying the liquid jet coating composition can comprise applying multiple liquid jet coating compositions where at least two are different and at least one coating composition is deposited on another different coating composition (col 3 ln 59-col 4 ln 10). Hsieh ‘055 teaches that this method improves adhesion of the coating to the substrate (col 3 ln 59-col 4 ln 10). Both Swaans ‘158 and Hsieh ‘055 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘055, abstract, col 2 ln 32-41, col 30 ln 47-62).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the step of applying the liquid jet coating composition can comprise applying multiple liquid jet coating compositions where at least two are different and at least one coating composition is deposited on another different coating composition as taught by Hsieh ‘055 in the method taught by the modified teachings of Swaans ‘158 because it improves adhesion of the coating to the substrate, as taught by Hsieh ‘055.
Claim 26: With respect to claim 26, the modified teachings of Swaans ‘158 do not explicitly teach that the metal substrate is a tab stock.
Zhou ‘259 teaches a method of coating a metal substrate (abstract, [0008]) comprising providing an aluminum coil metal substrate ([0008]), applying a liquid coating composition to at least a portion of the substrate (abstract, [0001]) where the liquid coating composition comprises polymer (abstract) and water ([0001]), and curing the liquid coating composition to form an adherent coating (abstract, [0006]). Zhou ‘259 teaches that the aluminum metal substrate can for making beverage can tab stock ([0012]). Both Swaans ‘158 and Zhou ‘259 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘259, abstract, [0008]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the aluminum coil metal substrate be for making beverage can tab stock as taught by Zhou ‘259 in the method taught by the modified teachings of Swaans ‘158 because it would have been a combination of prior art elements that would have yielded predictable results.
Claim 27: Swaans ‘158 teaches that the curing can be curing using UV radiation ([0110]).
Claim 28: Swaans ‘158 teaches that the metal substrate can comprise aluminum ([0112], [0115]).
Claim(s) 7 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swaans et al. ‘158 in view of Zhou et al. ‘259 as applied to claims 3 and 4 above, and further in view of Scott (U.S. Patent Application Publication 2019/0112100, hereafter Scott ‘100).
The modified teachings of Swaans ‘158 teach the limitations of claims 3 and 4, as discussed above. With respect to claims 7 and 21, they do not explicitly teach that the substrate is a drawn and redrawn substrate.
Scott ‘100 teaches a method of coating a metal substrate ([0011]). Scott ‘100 teaches that the metal substrate can be drawn and redrawn ([0013]). Scott ‘100 teaches that this provides a substrate with a desired height and thickness ([0013]). Both Scott ‘100 and Swaans ‘158 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘100, [0011]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the substrate be drawn and redrawn as taught by Scott ‘100 in the method taught by the modified teachings of Swaans ‘158 because it provides a substrate with a desired height and thickness, as taught by Scott ‘100.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swaans et al. ‘158 in view of Zhou et al. ‘259 as applied to claim 1 above, and further in view of Savas et al. (U.S. Patent Application Publication 2013/0334511, hereafter Savas ‘511).
The modified teachings of Swaans ‘158 teach the limitations of claim 1, as discussed above.
With respect to claim 18, they do not explicitly teach that the coil metal substrate is cryogenically cleaned.
Savas ‘511 teaches a method of coating a metal substrate (abstract, [0085]). Savas ‘511 teaches that the method can include cryogenically cleaning the metal substrate before coating (abstract, claim 5, [0038], [0173]). Savas ‘511 teaches that this removes particulate contamination while not exposing the substrate to high electrostatic charge, moisture, oxygen, or other contaminations ([0061]). Both Savas ‘511 and Swaans ‘158 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘511, abstract, [0085]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the step of cryogenically cleaning the metal substrate before coating taught by Savas ‘511 to the method taught by the modified teachings of Swaans ‘158 because it removes particulate contamination while not exposing the substrate to high electrostatic charge, moisture, oxygen, or other contaminations, as taught by Savas ‘511.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swaans et al. ‘158 in view of Zhou et al. ‘259 and Hsieh et al. ‘055 as applied to claim 5 above, and further in view of Scott ‘100.
The modified teachings of Swaans ‘158 teach the limitations of claim 5, as discussed above. With respect to claim 25, they do not explicitly teach that the substrate is a drawn and redrawn substrate.
Scott ‘100 teaches a method of coating a metal substrate ([0011]). Scott ‘100 teaches that the metal substrate can be drawn and redrawn ([0013]). Scott ‘100 teaches that this provides a substrate with a desired height and thickness ([0013]). Both Scott ‘100 and Swaans ‘158 teach methods of coating a metal substrate (‘158, abstract, [0115], [0122]; ‘100, [0011]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the substrate be drawn and redrawn as taught by Scott ‘100 in the method taught by the modified teachings of Swaans ‘158 because it provides a substrate with a desired height and thickness, as taught by Scott ‘100.
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, 3-5, 7, 16-21, 23-25, and 27-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3-6, 11-16, and 18-27 of copending Application No. 18/290567 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application teach a method of coating a coil metal substrate (claim 16) comprising providing a coil metal substrate with a thickness of 5 mm or less (claim 16), directing a liquid jet or aerosol jet coating composition to at least a portion of the coil metal substrate (claim 16), the coating composition comprising polymer particles having a number average molecular weight of at least 2000 Daltons and a particle size distribution having a D50 of less than 10 microns (claim 16) and a liquid carrier comprising water in a major amount of the liquid carrier (claim 16), and providing conditions effective for the coating composition to form a hardened continuous adherent coating on at least a portion of the metal substrate (claim 16) where the coating has a thickness of up to 100 microns (claim 25).
The claimed metal substrate thickness of up to 635 microns is obvious over the metal substrate thickness of 5 mm or less in the copending application because they overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 8-9, 22, and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3-6, 11-16, and 18-27 of copending Application No. 18/290567 in view of Zhou et al. ‘259.
With respect to claims 8, 22, and 26, the copending application does not teach that the metal substrate is tab stock. With respect to claim 9, the copending application does not teach that the coil metal substrate is an aluminum coil for making beverage can ends with the hardened coating applied to an interior or exterior surface.
However, those limitations are obvious in view of the teachings of Zhou ‘259, as discussed above.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/JOSHUA L ALLEN/Supervisory Patent Examiner, Art Unit 1713