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 1-12) in the reply filed on May 18, 2026 is acknowledged. The traversal is on the grounds that examining all claims would not place an undue burden on the examiner. This is not found persuasive because, as set forth in the Requirement for Restriction (paragraph 6), there would be a serious search burden on the examiner because the inventions require a different field of search. For example, search different classes/subclasses and employing different search strategies or search queries. Additionally, the Groups are directed to inventions having separate classifications. The requirement is still deemed proper and is therefore made FINAL.
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/544,810 alone or in view of Conley et al. (US Pub 2022/0127491). The claims of US ‘810 disclose all of the claim limitations except for the tricyclopentadiene monomer. US ‘810 does generically claim “monomers capable of undergoing ring opening metathesis polymerization” (claim 1, line 3). As set forth in MPEP 804.II.B.1, “The portion of the specification of the reference that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim. In particular, when ascertaining the scope of the reference’s claim(s) to a compound, the examiner should consider the reference’s specification.” The specification of US ‘810 discloses that tricyclopentadiene is one of the preferred monomers [0006]. Thus, the generic claim to “monomers capable of undergoing ring opening metathesis polymerization” would render the instantly claimed specie to a tricyclopentadiene monomer obvious. Alternatively, Conley discloses that a tricyclopentadiene monomer is a known monomer capable of undergoing ring opening metathesis polymerization [0182].
This is a provisional nonstatutory double patenting rejection.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/544,853 alone or in view of Conley et al. (US Pub 2022/0127491). The claims of US ‘853 disclose all of the claim limitations except for the tricyclopentadiene monomer. US ‘853 does generically claim “monomers capable of undergoing ring opening metathesis polymerization” (claim 1, line 3). As set forth in MPEP 804.II.B.1, “The portion of the specification of the reference that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim. In particular, when ascertaining the scope of the reference’s claim(s) to a compound, the examiner should consider the reference’s specification.” The specification of US ‘853 discloses that tricyclopentadiene is one of the preferred monomers [0006]. Thus, the generic claim to “monomers capable of undergoing ring opening metathesis polymerization” would render the instantly claimed specie to a tricyclopentadiene monomer obvious. Alternatively, Conley discloses that a tricyclopentadiene monomer is a known monomer capable of undergoing ring opening metathesis polymerization [0182].
This is a provisional nonstatutory double patenting rejection.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Materia Inc. (WO 2022/036044).
Regarding Claim 1, Materia teaches a coating composition (para [0002], the use of the compositions of the invention as coatings…) comprising: an epoxy resin (para [0182], …compositions of this invention may be optionally formulated with other reactive chemistries to form co-cured coatings… co-cured epoxy can form from a bisepoxide and a hardener such as an anhydride, amine, or thiol); monomers capable of undergoing ring opening metathesis polymerization (para [0101], Examples of cyclic olefins thus include…tricyclopentadiene); an amine curing agent (para [0183], The coating compositions may also contain at least one curing agent; para [0182], …a hardener such as an anhydride, amine,…); and a metathesis catalyst (para [0002], at least one olefin metathesis catalyst). Materia provides coating compositions cured by ring opening metathesis polymerization comprising reacting at least one cyclic olefin with at least one metathesis catalyst but does not disclose a specific example or embodiment wherein each of the claimed components are formulated in a single embodiment. However, it would have been obvious to one of ordinary skill in the art to formulate each component into the coating composition through routine experimentation to form a co-cured coating with interpenetrating polymer networks, which is specifically suggested in paragraph [0182].
Regarding Claim 2, Materia teaches the coating composition can further comprise a solvent (para [0116], In addition to the reactive components, non-polymerizable components include, aromatic hydrocarbons such as xylene); a filler; an adhesion promoter; a rheology modifier; and at least one pigment (para [0157], Suitable additives include, but are not limited to… fillers, rheology modifiers,… pigments,… adhesion promoters,…).
Claims 3-12 are rejected under 35 U.S.C. 103 as being unpatentable over Materia Inc. (WO 2022/036044) in view of either Haag et al. (US Pub 2020/0140727) or Saito et al. (US Pub 2017/0130006).
Regarding claim 3, Materia does not disclose a coating composition kit comprising a (A) first part comprising an epoxy resin and a metathesis catalyst; and (B) a second part comprising monomers capable of undergoing ring opening metathesis polymerization, i.e., tricyclopentadiene, and an amine curing agent. However, Materia does disclose that the composition of the monomers capable of undergoing ring opening metathesis polymerization, i.e., tricyclopentadiene, can be formulated with other reactive chemistries to form co-cured coatings, such as an epoxy resin [0182]. Haag discloses that it is known in the epoxy art to provide the composition components in two-parts such that there is a resin part (side A) and a curative part (side B) [0007]. Additionally, Saito discloses that it is known in the epoxy art to provide the composition components in two-parts wherein a first part includes the epoxy resin and a second part includes the curing components [0177]. These known two-part kits are useful for preventing the initiation of curing during storage and transportation of the coating composition. Thus, it would have been obvious to one of skill in the art to separate the catalysts and curing agent from the reactive monomers, i.e., tricyclopentadiene, and epoxy resin into a two-part kit, ensuring they remain stable until ready to use.
Regarding claims 4 and 5, Materia discloses that the composition can include an aromatic hydrocarbon solvent (para [0116], In addition to the reactive components, non-polymerizable components include, aromatic hydrocarbons such as xylene…); and optionally at least one additive selected from the group consisting of fillers, adhesion promoters, rheology modifiers, and pigments (para [0157], Suitable additives include, but are not limited to… fillers, binders, thixotropes, rheology modifiers,… pigments,… dyes, fibers, reinforcement materials,… adhesion promoters,…). However, Materia does not explicitly teach wherein the first part (A) further comprises a solvent; and optionally at least one additive selected from the group consisting of fillers, adhesion promoters, rheology modifiers, and pigments. It would have been obvious to one of skill in the art to test which part (A or B) should further comprises a solvent and optional components by routine experimentation.
Regarding claim 6, Materia teaches the coating composition kit of claim 3, further comprises at least one additive selected from the group consisting of fillers and rheology modifiers (para [0157], Suitable additives include, but are not limited to… fillers, binders, thixotropes, rheology modifiers,… pigments,… dyes, fibers, reinforcement materials,… adhesion promoters,…). However, Materia does not explicitly teach wherein the second part (B) further comprises at least one additive selected from the group consisting of fillers and rheology modifiers. It would have been obvious to one of skill in the art to test which part (A or B) should further comprises the additive by routine experimentation.
Regarding claims 7-9, Materia discloses overlapping amounts of the metathesis catalyst [0152], filler [0161], adhesion promoter [0165], pigments [0161], and rheology modifier [0157]. As set forth in MPEP 2144.05, “ In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). While Materia discloses that the composition can include an epoxy resin and solvent, Materia is silent as to the amounts of these materials. As set forth in MPEP 2144.05, “Generally, differences in concentration…will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration…is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’" In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present application, it would have been obvious to have discovered the workable ranges of the epoxy resin component, motivated by the desire to obtain a co-cured coating composition having desired properties associated with a composition containing monomers capable of undergoing ring opening metathesis polymerization and an epoxy resin that can form an interpenetrating polymer network [0182]. Additionally, it would have been obvious to have discovered the workable ranges of the solvent component, motivated by the desire to obtain a coating composition having desired viscosity or flow properties.
Regarding claims 10-12, Materia discloses overlapping amounts of monomers capable of undergoing ring opening metathesis polymerization, i.e., tricyclopentadiene, [0111], filler [0161], and rheology modifier [0157]. As set forth in MPEP 2144.05, “ In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). While Materia discloses that the composition can include an amine curing agent, Materia is silent as to the amount. As set forth in MPEP 2144.05, “Generally, differences in concentration…will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration…is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’" In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of skill in the art to test which part (A or B) should further comprises these components, and optimize their weight percentages by routine experimentation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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