DETAILED ACTION
Status of Application
This action follows a reply filed on 05/28/2026. Per the reply, claims 1 and 16 have been amended and claim 6 has been cancelled. No new claims have been added. Accordingly, claims 1-5 and 7-19 remain pending and under examination herein.
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 .
Withdrawn Rejections
The outstanding rejections under 35 U.S.C. §§ 102(a)(1) and 103 have been mooted by the amendment to claim 1 to include the subject matter of claim 6, indicated as allowable in the previous Office action, and the amendment rewriting in independent form previously dependent claim 16, also indicated as allowable in the previous Office action.
The outstanding provisional statutory double patenting rejection of claim 10 has been obviated by the amendment to parent claim 1, but the claim is now subject to provisional rejection on non-statutory double patenting grounds as detailed below.
Claim Rejections – Nonstatutory 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 10-11 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/546,197 (reference application; published as US 2024/0132646 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because of the substantial overlap in scope of the mutually claimed subject matter.
In particular, pending claim 10/1 recites a composition comprising Chemical Formula (1), Chemical Formula (2) and Chemical Formula (3), where Chemical Formula (2) corresponds identically to Chemical Formula (3) in copending claim 10 and Chemical Formula (3) corresponds identically to Chemical Formula (2) in copending claim 1 (upon which copending claim 10 directly depends); furthermore, Chemical Formula (1) is generic to Chemical Formula (1) in copending claim 1 (as amended on 05/26/2026) in that R13, defined herein as representing “a divalent group having a polyoxyalkylene chain,” reads on “the polyoxyalkylene chain is a copolymer chain representing an oxyethylene group and an oxypropylene group” of R13 in copending claim 1, and the conflicting claims now recite coextensive ranges for weight-average molecular weight (“5000 or more”) of the respective compounds represented by Chemical Formula (1) in the instant and reference applications.
Further as to pending claim 11/10, recited Chemical Formula (3), wherein R³¹ and R³² are bonded to each other to form a ring, expresses a subgenus of compounds fully embraced by Chemical Formula (2) of copending claim 10/1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Argument
Applicant’s arguments filed 05/28/2026 with respect to the continued provisional non-statutory double patenting rejection have been fully considered but they are not persuasive.
Contrary to the Applicant’s assertion (see page 8, filed 05/28/2026), the non-statutory double patenting rejection over claim 10 of copending Application No. 18/546,197 has not been mooted by the amendment to independent claim 1 herein to include the limitation previously recited in dependent claim 6. This is because a parallel amendment has been made to copending claim 1, which recites an identical limitation re: weight-average molecular weight of the corresponding compound of Chemical Formula (1), and a specific species of “polyoxyalkylene chain” embraced by the R13 definition recited in pending claim 1, as discussed above. As copending claim 10 incorporates via dependency all the limitations of copending claim 1, the Office maintains that it would have been obvious to one of ordinary skill in the art at the time of effective filing to practice invention of pending claims 10-11 when in possession of the copending application claims. Furthermore, in view of the fact that both the instant and reference applications have the same patent term filing date (i.e., 02/26/2021 under 35 USC § 119(b)), the continued provisional rejection on non-statutory double patenting grounds is deemed proper even though this is the only unresolved issue. See MPEP 804(I)(B)(1)(b)(ii) (where both application under examination and reference application have same patent term filing date, provisional non-statutory double patenting rejection made in each application should be maintained until overcome).
Allowable Subject Matter
Claims 1-5 and 7-19 are deemed free of the prior art. Claims 1-5, 7-9 and 12-19 are allowed. Claims 10-11 would be allowable upon resolution of the non-statutory double patenting rejection supra.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/07-06-26
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