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 their response dated 8/5/2026 the applicants elected to prosecute claims 6-13 (group II), which is directed to a binder composition for fiber glass, wherein recitation “for fiber glass” is a recitation of intended use. The applicants traversed the restriction of group IV which is directed to fiber composite comprising fibers cured with a binder of claim 6, indicating that compositions overlap in scope.
Examiner disagrees, while claim 6 is drawn to composition, it does not require presence of fibers and binder being cured. Having said that if composition of claim 6 is found allowable, the examiner can rejoin the claims as long as rejoined claims all comprise allowable subject matter.
Claim Interpretation
Instant claim 6 is directed to a dedusting composition utilized with a binder. Claim is an open claim that includes any type of plant oil including its derivative. Polycarboxylic acid is interpreted based on instant claim 8 to include acid or anhydride which has at minimum to carboxylic acid group. Under broadest reasonable interpretation the dedusting oil composition can be pre-reacted before it is mixed with polycarboxylic acid, or it can be mixed in situ. The dedusting composition does not have to be called “dedusting” in the prior art as long as the prior art itself discloses use of all components of the dedusting composition.
Claim Rejections - 35 USC § 112
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 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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.
Claim 7 is defines aromatic amines. Included in the list are hydroquinoline, hydroxybenzothiazole and mercaptothiazole. These compounds are not amines.
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.
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.
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.
Claims 6-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wool (US 6,121,398).
With respect to claims 6 and 7, Wool discloses resin composition (claim 13) comprising plant or animal oil (claim 1), wherein this rejection will rely on plant oil which includes soybean oil (claims 3 and 4). The oil can be epoxidized.
Example 10 discloses epoxidized triglycerides (plant oil) is reacted with isophthalic acid and 2-methylimidazole.
Isophthalic acid meets the limitation of polycarboxylic acid,
Methylimidazole meets the limitation of aromatic amine of claim 7.
With respect to claims 8 and 9, Example 26 of Wool discloses plant oil (triglyceride) was mixed with diethanolamine and maleic anhydride, wherein diethanol amine also meets the limitation of claim instant claim 9.
In Example 38, obtained maleinized plant oils are then mixed with Bisphenol A and methylimidazole and glass fiber to form glass fiber reinforced composite. Example 38 teaches use of diethanol amine, additional monomers such as styrene along with dimethylaniline and peroxide.
Components disclosed in examples above meet the components of instant claims 6-9.
Furthermore, with respect to claim 9, specification of Wool discloses additional polyol compounds which include pentaerythritol (col. 8).
With respect to claim 10, while examples disclose use of maleic anhydride (two carboxylate groups), Wool teaches not only other anhydrides but also its acidic form. Diacids are disclosed in Wool (col. 8) as functional equivalents. Examples include succinic acid, formic acid (Example 17) polyacrylate based polymer (example 8), maleic acid (example 3). Wool further teaches that presence of carboxylic acid groups improves adhesion (col. 12) with, for example, fillers.
With respect to claim 11, the plant oil as mentioned above is derived from soybean oil (claims 3 and 4) of Wool. However, specification further defines other sources which are sunflower, safflower, corn, linseed (col. 4 and 6).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wool (US 6,121,398) or in alternative in view of Sonney (WO 2007/111834).
The discussion of Wool from paragraph 1 of this office action is incorporated here by reference. In addition to anticipation claims 6-11 as shown in paragraph 1, following aspects of the invention of Wool render instant claims 12 and 13 obvious.
With respect to claim 12, Wool discloses that the plant oil can be utilized in two different ways. First, it is utilized as a binder itself and therefore the major component of the composite article. Second, when the plant oil composition is added to another base polymer to form a composite article, which reads on the plant oil composition as an additive to the binder. Depending on how the plant oil composition is utilized its content will change.
Example 20 discloses use of 10 g of oil with 2 ml of benzylamine (contains aromatic group) 10 g of Epon 828 and 5 g of maleic anhydride, wherein content of the oil and amine add up to about 40%. Epon 828 is encompassed by the term “comprising”.
Additionally, since the composition is open to include other components such as fibers or fillers. Consequently, with additional fillers encompassed under broader reasonable interpretation the content of the oil and amine will be lower.
It would have been obvious to one having ordinary skill in the art at the time instant invention was filed to adjust the content of the epoxy and aromatic amine in the binder composition, depending on intended use and if the plant oil and amine is to be utilized as an additive. Such modification would allow one of ordinary skill in the art to tailor the properties of the composition which can be made into fiber reinforced composites. The resulting articles can be also toughened thermoset articles, rigid articles thermoset articles, articles having specific surface properties as well as composition with varying mechanical properties all of which are exemplified by Wool.
With respect to claim 18, the exotherm is not explicitly taught by Wool, however this property is obvious for following reason. This property is attributed to the composition of claim 6, where under broadest reasonable interpretation, the plant oil can be any plant oil, polycarboxylic acid can be any acid which has at least two carboxylic groups and amine can be any aromatic amine. Each of the two components can be utilized in any amount.
Wool teaches exactly according to claims a plant oil which is a soybean oil, which is reacted with maleic anhydride (claims 1, 3, 4, 6 ) and amine the mixture then is crosslinked with glycerol (claims 10 and 11), while amines can be selected from any amine, especially those utilized in the examples such as imidazoles or those explicitly named in the specification (col. 8) which include alkylated anilines.
The examiner would like to note that while instant invention discloses preferred embodiments with respect to the type and content of each component, the examiner cannot read specification into the claims. Furthermore, instant specification does not provide any guidance as to what component actually contributes to increased exotherm and what the actual content of that component is. Consequently, the same components as disclosed in Wool under broadest reasonable interpretation will also meet the limitation of the exotherm.
In the event the applicants do not agree with examiner’s interpretation directed to claim 12 and content of the plant oil and amine, Sonny is further proof as to how choice of components can influence the properties of the final article. Specifically, Sonney discloses composition (claim 1) comprising polyisocyanate (also contemplated by Wool) which is reacted with combination of one polyol (also contemplated by Wool) in an amount of up to 99 wt.%, which polyol meets the definition of crosslinker and 1-100 wt.% of natural oil (claim 1 and 13-14). Natural polyol of Sonney can also be epoxidized (claim 16). The additional component is chain extender which is a phenylene diamine (p. 13). Content of chain extenders is 3-25 parts based on the content of the polyol.
It is clearly evident that the content of the plant oil and amine can utilized within rather broad range, wherein content and type of the components can further adjust viscoelastic properties of the composition or product semi-rigid composition (Abstract, p. 15). This can be achieved by utilizing various types of polyols which impart flexibility. Tables of Sonney show composition having 100 parts of oil resulting in density higher than the content of the plant oil at 40 parts (see Tables 1 and 2). At 20 and 30 parts of oil and altered amounts of polyol the composition has improved flexibility, consequently, the content of the plant oil is one of the key components which is adjusted to tailor physical properties of the composition.
Consequently, one of ordinary skill in the art would readily understand that in order to tailor properties of the composition, the content of the plant oil can be adjusted. Higher content leads to more rigid composition while lower content imparts flexibility.
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.
Claim 6-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-14 of copending Application No. 18/442997 (‘997). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 6 is broader in scope than claim 7 of the co-pending ‘997. While instant claims are open to any plant oil and its derivative, it encompasses in scope the epoxidized oil of ‘997.
Instant claim 7 is the same as co-pending claim 8 (including 112).
Instant claim 8 is the same as co-pending claim 9.
Instant claim 9 is the same as co-pending claim 10.
Instant claim 10 is the same as co-pending claim 11.
Instant claim 11 reciting plant oil encompasses the epoxidized oils of co-pending claim 12 as they are derived from the same plants.
Instant claim 12 is the same as co-pending claim 13.
Instant claim 13 is the same as co-pending claim 14.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Relevant Art
US 3,291,764 to Findley discloses oil composition comprising mixing plant oil with phenylene diamine (Table in col. 3-4) wherein compounds which are alkanol amines or glycols can be utilized (col. 2)
US 3,979,270 to Trecker discloses acrylic acid dimer which has up to 3 repeat units (polycarboxylic compound) is reacted with epoxidized plant oil (soybean oil) and an amine such as diphenyl amine. The compound can be utilized as a binder alone of in admixture with known components in the coating applications. Reactive solvent can be utilized in an amount of 0-100 parts the balance being the epoxide composition.
WO 2007/111834 to Sonney or US 2012/0216952 to Bushendorf disclose composition comprising polyol (claim 1), natural oil (claim 13) and and an amine chain extender which includes phenylenediamine. The composition is mixed with an isocyanate to form urethane foam for insulation.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 August 18, 2026
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