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 .
This action contains both statutory and non-statutory double patenting rejections
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 5 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 5 of prior U.S. Patent No. 11,702,562. This is a statutory double patenting rejection.
Claim 5 of 11,702,562 recites the same scope as instant claim 5 when considering it includes all the limitations of the claim from which it depends.
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 1-4, 6-7 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,186,744 in view of Wamprecht (U.S. 20050075451).
Claim 1 of 11,186,744 recites the composition of instant Claim 1 except for the substantially free/essentially free/completely free limitation.
Additionally, Claim 7 of 11,186,744 recites the composition of instant Claim 1 prior to the reaction of 11,186,744 except for the substantially free/essentially free/completely free limitation. Therefore, it is obvious a composition which reads over instant Claim 1 must be present for Claim 7 of 11,186,744 such that a reaction product of that same composition is made according to Claim 7 of 11,186,744.
Wamprecht, working in the field of polyester can coatings for food contact, teaches BADGE is suspected of being carcinogenic and, therefore, it is advantageous to use BADGE free coating compositions for the interior coating of cans with foodstuff contact. (¶[0011])
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of 11,186,744 such that the coatings were free from BADGE for the advantage of having interior coatings of cans with food contact which are free from a suspected carcinogen such as BADGE.
This reads over the substantially free/essentially free/completely free limitation of instant Claim 1 in the case of both Claim 1 of 11,186,744 and Claim 7 of 11,186,744.
Instant Claim 2 is read over by Claim 1 and 7 of 11,186,744.
Instant Claim 3-4 are read over by Claims 3-4 of 11,186,744.
Instant Claim 6-7 is read over by Claim 6 and 7 of 11,186,744.
Instant Claim 10 is read over by a combination of Claim 5 and Claim 1 of 11,186,744 (or simply Claim 5 or 11,186,744),
Allowable Subject Matter
Claims 1-7, and 10 would be allowable upon resolution of the double patenting and §112 rejections of record.
Claims 8-9 and 11-20 are 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 or resolution of the double patenting rejections of record.
The Examiner agrees with the previous determination of allowable subject matter made in the parent cases indicating that Stapperfenne, Michel and Kraft are the closet prior art of record. In addition, List (U.S. 20120301646) teaches polyester coating compositions for the interior of can used in the food industry curable with aminoplasts. The polyesters involved do not meet the limitation of (a) of the instantly claimed composition as the hydroxyl values are too high (¶[0043]) and further do not reasonably suggest a polyanhydride with an active hydrogen in the composition. The prior art appears silent on the polyanhydride with an active hydrogen claimed in combination with prior art teaching the recited polyester claimed. Therefore, one of ordinary skill in the art would only arrive at the claimed composition through the benefit of hindsight.
Response to Arguments
Applicant’s claim amendments and remarks filed January 22, 2026 have been fully considered but are not sufficient to move the application to allowance. The §112 over Claim 8 is withdrawn based on Applicant’s amendment. The terminal disclaimer filed January 22, 2026 over 11,702,562 has been fully considered and is accepted. The non-statutory double patenting rejection over U.S. 11,702,562 is withdrawn. The non-statutory double patenting rejection over U.S. 10,472,538 is withdrawn as the 60 to 90 limitation is not present in the co-pending claim set.
The remaining rejections are:
Claim 5 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 5 of prior U.S. Patent No. 11,702,562. This is a statutory double patenting rejection.
Claims 1-4, 6-7 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,186,744 in view of Wamprecht (U.S. 20050075451).
Applicant’s remarks filed January 22, 2026 have been fully consider but are not persuasive.
Applicant argues the statutory double patenting rejection over Claim 5 of U.S. 11,702,562 is not proper as there are extra words in the copending claim. This argument is not persuasive. Evaluation of any claim is not based simply on the words but the scope the words require. As previously put forth, the scope of Claim 5 of 11,702,562 when considering its parent limitation is exactly the same as instant Claim 5. Applicant has not identified what claim scope is different between Claim 5 of 11,702,562 and instant Claim 5. Therefore, the statutory rejection is maintained.
Applicant argues with respect to the non-statutory double patenting rejections over U.S. 11,186,744 the copending 11,186,744 recites a higher Mn and specific anhydride by Claim 1 of 11,186,744 that is not recited by instant Claim 1. This argument is not persuasive. A higher Mn and a specific anhydride are permitted by the instant Claim 1. If 11,186,744 was prior art, it would anticipate and/or read over the instant claim 1 as it is within the scope recited by instant claim 1. Therefore, this argument is not persuasive.
Applicant argues with respect to the non-statutory double patenting rejection over U.S. 11,186,744 that Claim 7 of the co-pending application is distinct from the instant Claim 7. This argument is not persuasive. Applicant does not include any detail into what constitutes this distinctiveness when the rejection of record specifically address why the reaction product of two polyesters renders obvious the individual polyesters as recited by instant Claim 7.
From the rejection of record:
“Additionally, Claim 7 of 11,186,744 recites the composition of instant Claim 1 prior to the reaction of 11,186,744 except for the substantially free/essentially free/completely free limitation. Therefore, it is obvious a composition which reads over instant Claim 1 must be present for Claim 7 of 11,186,744 such that a reaction product of that same composition is made according to Claim 7 of 11,186,744.”
Therefore, the rejection against Claim 7 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/Primary Examiner, Art Unit 1766