DETAILED ACTION Summary This is a non-final office action for application 18/551,952 filed on 22 September 2023. The preliminary amendment filed on the same date is acknowledged. 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. Claim Objections Claim s 8, 16 and 18 are objected to because of the following informalities: In Claim 8 , please replace “end-cap-.” With “end-cap.” Claim 16 recites both azelaic acid and heptane dicarboxlic acid. These are synonyms for the same HOOC-(CH2)7-COOH compound . Please include compounds within the list only once. Claim 16 recites both sebacic acid and octane dicarboxylic acid . These are synonyms for the same HOOC-(CH2) 8 -COOH compound . Please include compounds within the list only once. In Claim 18 , please replace “ 1,6-hexanediol 1,3-propylene glycol ,” with “ 1,6-hexanediol , 1,3-propylene glycol ” to separate these two compounds which are disclosed separately in the instant specification (cur spec: p. 14, lines 18-22). Claim 18 recites both “ 1,4-bis(hydroxymethyl)cyclohexane ” and “ 1,4-cyclohexane-dimethanol ”. These are synonyms for the same compound. Please include compounds within the list only once. Appropriate correction is required. 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. Claim s 15-16 , 18 and 20 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. Regarding Claims 15-16 , Claim 15 recites a residue of a linear dicarboxylic acid having a carbon chain in the range of 4 to 12 carbon atoms. It is not clear whether the carbon count of the linear chain includes the carboxylic carbons or if it includes only the carbons in between. Claim 16 depends on Claim 15 and lists specific linear dicarboxylic acid. Claim 16 recites glutaric acid (HOOC-(CH2)3-COOH) and succinic acid ( HOOC-(CH2)2-COOH ) where the carboxylic carbon is needed to be included in the count for the carbon chain to be within the 4-12 range. Claim 16 also recites undecane dicarboxylic acid ( HOOC-(CH2)11-COOH ) and dodecane dicarboxylic acid ( HOOC-(CH2)12-COOH ) where the carboxylic carbon need s to be excluded from the count for the carbon chain to be within the 4-12 range. Please clarify which carbons in the linear dicarboxylic acid are included in the count so that skilled users can know which structures are within the scope of the claims. Regarding Claim 18 , the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claim 20 is also rejected because it depends upon, and therefore includes Claim 18. Regarding Claims 18 and Claim 20 , Claim 18 recites that component b) comprises a selection from a group of diols and Claim 20 recites that “said component b) polyols” comprises a selection from a group of triols and tetrols . These claims depend upon, and therefore include Claim 17 and Claim 1 . Claim 1 recite that b) is “at least one residue of” a group of diol s . This creates uncertainty about whether or not the polyester polyol somehow contains these alcohol moieties, or if it contains residues of the se moieties as i s recited in Claim 17 and Claim 1. Examiner suggests maintaining the “at least one residue” language throughout the dependent claims. 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 s 18 and 20 are 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 18 recites that component b) comprises a selection from a list which contains cyclic diols. Claim 18 depends upon and therefore includes, Claims 17 and Claim 1. Claim 1 recites that b) is at least one resid u e of a linear or branched C2 to C36 diacid or diol. A cyclic diol is not interpreted as being either cyclic or branched and therefore does not satisfy the b) limitation of Claim 1. Claim 20 recites that component b) comprises glycerol, pentaerythritol, or trimethylolpropane which are a triol, tetrol , and triol, respectively. Claim 20 depends upon, and therefore includes Claims 18, 17 , and 1. Claim 1 recites that b) is at least one residue of a linear or branched C2 to C36 diacid or diol. The compounds recited in Claim 20 do not satisfy the b) limitation of Claim 1. 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. Claim Rejections - 35 USC § 102 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 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 1-2 , 6-9 , 11-12 , 15-18 , 20 -21, 25-2 7 and 3 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DEITCH (US-20030083436-A1). Regarding Claim 1 , DEITCH teaches an acetoacetate terminated polyester or polyamide ([0021]). DEITCH teaches that its polyester before modification with acetoacetate is terminated with hydroxyl radicals ([0021]). The presence of a hydroxyl radical at each end satisfies the requirement that the polyester is a polyester polyol. DEITCH teaches that its polyester can be formed from alcohols condensed with carboxylic acids and teaches meany specific linear or branched diols and diacids which have between 2 and 36 carbon atoms including ethylene glycol, propylene glycol, 1,4-butanediol, diethylene glycol, 1,6-hexanediol, neopentyl glycol, 2-methyl-1,3-propanediol ([0021]) and adipic acid, azelaic acid, sebacic acid and others ([0021]). This satisfies the b) requirement of the claim. The claim recites “and/or”, so the a) component is optional and not required. DEITCH exemplifies acetoacetate terminated polyesters formed from methylpropane diol, 1,6-hexane diol and adipic acid (Table 1). The presence of any one of those in acetoacetate-terminated polyester satisfies the claim. Regarding Claim 2 , DEITCH teaches the invention of Claim 1. DEITCH generally teaches weight average molecular weights of 1200-10,000 ([0021]) but does not have a general teaching for number average molecular weight. DEITCH exemplifies number average molecular weights of 1200-2800 (Table 2) which is within the recited range of 500-5000 . Regarding Claim 6 , DEITCH teaches the invention of Claim 1. DEITCH teaches that its acetoacetate modifying reagents include methyl acetoacetate, ethyl acetoacetate, isopropyl acetoacetate, isobutyl acetoacetate, t-butyl acetoacetate , diketene, and others , which matches what is recited. DEITCH exemplifies ethyl acetoacetate. Regarding Claim 7 , DEITCH teaches the invention of Claim 6 where DEITCH generally teaches t-butyl acetoacetate and exemplifies ethyl acetoacetate. While DEITCH does not exemplify the recited t-butyl acetoacetate, this compound is a modifying reagent not a substructure of the claimed end-capped polyester. The t-butyl acetoacetate and ethyl acetoacetate each react with a hydroxyl-terminated polyester via a transesterification reaction to add the same acetoacetate group to the end of a polyester chain. The recitation of reagents rather than chemical structure makes this a product-by-process claim. The patentability of a product-by-process claim is determined by the end product. See MPEP 2113. The acetoacetate-end-capped polyester formed using ethyl acetoacetate in the examples of DEITCH is considered equivalent to that which is formed using t-butyl acetoacetate. Regarding Claim s 8 -9 , DEITCH teaches the invention of Claim 1. DEITCH generally teaches 1.6-3 acetoacetate groups per chain ([0021]) and a weight average molecular weight of 1200-10000 ([0021]). The acetoacetate group has a molecular weight of 101.08 g/mol, so the contribution from the acetoacetate groups is generally 162-303 g/mol which would overlap the required 10wt% recited by the claim. DEITCH teaches number average molecular weights and number average of acetoacetate groups in the example (Table 1) with Examples 3, 5, 7 and 8 having 15.7wt%, 13.1wt%, 13.1wt% and 16.5wt%, respectively , which satisfies the requirement that the acetoacetate end cap is at least 10 wt% which satisfies Claim 8 . Note that these are all under 95wt% along with Examples 4 and 6 being 9.5wt% and 6.2 wt%, respectively which satisfies Claim 9 . Regarding Claim 11 , DEITCH teaches the invention of Claim 1 where DEITCH teaches a polyester polyol which does not include a dimer fatty residue ([0021], Table 1). The absence of an a) component satisfies the requirement that component a) is 30 wt% or less. Regarding Claim s 12 , DEITCH teaches the invention of Claim 1 where DEITCH teaches that its polyester polyol comprises a) and/or b), so only one of the two is required. Claim 12 recites a limitation on the optional component a). Since DEITCH teaches the invention of Claim 1 using a b) residue, then Claim 12 is automatically satisfied. Regarding Claim 15 -16 , DEITCH teaches the invention of Claim 1 where DEITCH generally teaches several linear dicarboxylic acids including adipic acid, azelaic acid, and sebacic acid ([0021]) and exemplifies adipic acid (Table 1) which satisfies Claim 15 and Claim 16 . Regarding Claim 17-18 , DEITCH teaches the invention of Claim 1 where DEITCH teaches several diols having 2-10 carbon atoms including ethylene glycol, propylene glycol, 1,4-butanediol, diethylene glycol, 1,6-hexanediol, neopentyl glycol, 2-methyl-1,3-propanediol, triethylene glycol, 1,4-cyclohexanedimethanol, and others ([0021]) and exemplifies diethylene glycol, neopentyl glycol and 1,6 hexanediol which satisfies Claim 17 and Claim 18 . Regarding Claim 20 , DEITCH teaches the invention of Claim 1 where DEITCH generally teaches trimethylol prop ane, pentaerythritol, glycerin ([0021]) and exemplifies trimethylolpropane (Table 1) which satisfies the claim. Regarding Claim 21 , DEITCH teaches the invention of Claim 1. The acetoacetate terminated polyester synthesized by DEITCH in the examples (Table 1, Table 2) can be interpreted as a polymeric composition. DEITCH further teaches mixing its polyester (component (A)) with a polyacrylate ([0019], [0031]). Regarding Claim 25 , DEIT CH teaches the invention of Claim 21. DEITCH teaches that its acetoacetate-terminated polyester preferably contains no isocyanates ([0021]). DEITCH exemplifies polyester polyols which contain no isocyanate groups (Table 1) which satisfies the requirement of a polymeric composition substantially free of isocyanate. Also, note that when the polyester is further mixed with the polyacrylate ([0031]), the examples do not specifically include isocyanates (Table 5) and many of the examples are also free of urethane groups (Table 5). Regarding Claim 26 , DE I TCH teaches the invention of Claim 21. DEITCH teaches mixing its acetoacetate- endcapped polyester with a polyacrylate ([0019], [0031], Table 5) . Regarding Claim 27 , DEITCH teaches the invention of Claim 26. DEITCH teaches that invention is a reaction between an α,β-unsaturated multicarboxylic acid ester and compound (A) ([0005]). DEITCH teaches that acetoacetate-terminated polyester is its component (A)([0021]) and α,β-unsaturated multicarboxylic acid ester may be polyacrylates ([0019]) and exemplifies this reaction mixture ([0031], Table 5). DEITCH teaches that reactive equivalent functionality ratio between these two components is 0.67:1 to 1.75:1. This can be interpreted as a molar ratio between the functionality groups. Because DEITCH exemplifies acetoacetate functionality in its polyester chains of 1.82 to 2.41 (Table 1) and diacrylates (Table 5). The molar ratio between functional groups is also roughly the molar ratio between the two reactive components. The 0.67:1 to 1.75:1 ratio is with in the 1:0.25 to 4 range recited by the claim. Regarding Claim 36 , DEITCH teaches the invention of Claim 21. DEITCH teaches that its invention is particularly useful as an adhesive (Title, Abstract) and also teaches that it is contemplated to be also applicable to coatings, sealants and elastomers ([0025]). 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. 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. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over DEITCH (US-20030083436-A1). Regarding Claim 7 , DEITCH teaches the invention of Claim 6 above where DEITCH generally teaches tert-butyl acetoacetate end-capping reagent ([0021]). DEITCH does not exemplify using a tert-butyl acetoacetate reagent, exemplifying ethyl acetoacetate instead ([0027]). To the extent that the two reagents would not result in the same acetoacetate end-capped polyester polyol, it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of DEITCH and use a tert-butyl acetoacetate end-capping reagent based on the teachings of the specification. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over DEITCH (US-20030083436-A1) in view of SAITO ( JP-2001055555-A ). Regarding Claim 14 , DEITCH teaches the invention of Claim 1 above. DEITCH generally teaches that its acetoacetate-terminated polyester may be prepared by any known process where the polyester can be formed from a group containing diols and triols, di/tri-carboxylic acids which are later modified to form an acetoacetate-terminated polyester ([0021]). DEITCH teaches that its polyester may contain up to 10wt% urethane radicals by reacting the hydroxy- terminated polyester with a diisocyanate ([0021]). DEITCH teaches many specific components of its polyester which not result in residues that satisfy b) in Claim 1 including triols, tetrols , aromatic and cyclic dicarboxylic acids, trimellitic acid and hydroxycarboxylic acids such as caprolactone, but DEITCH does not exemplify b) residues of 15 wt% or less. SAITO, in an invention of a two-package adhesive composition containing an acetoacetate-terminated polyester polyurethane (Abstract), teaches that its polyester polyol may be formed from a reacting a polybasic acid with a polyhydric alcohol ([0014]). SAITO teaches many specific polybasic acids which do not result in b) residues as recited in Claim 1, including cyclic diacids, aromatic diacids, hydroxycarboxylic acids and dimer acids including polybasic acids such as dimer acid alone ([0015]). SAITO teaches that its dimer acid is a product of a dimerization reaction of C18 unsaturated fatty acids such as oleic acid and linoleic acid ([0016]) . Polyesters using this unit would satisfy Claim 1 using the a) residues instead of the b) residues . SAITO fu r ther teaches many polyhydric alcohols including many which would not result in b) residues including cyclic diols, aromatic diols and dimer diols ([0017]) where the dimer diol is a reduced form of the dimer acid ([0018]). SAITO teaches that its compositions including a cured acetoacetyl -terminated polyester polyurethane prevents contamination of the environment due to free isocyanate, allows for providing a laminating adhesive that does not deteriorate due to the effects of water and humidity ([0061]). SAITO exemplifies dimer acid ([0038]) . SAITO does not exemplify polyesters with less than 15wt% b) units, but not in a composition with less than 15wt% of the aliphatic b) residues recited in Claim 1, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of DEITCH with the teachings of SAITO and form its acetoacetate-terminated polyester polyol using a combination of polybasic acids and polyhydric alcohols which do not result in the b) units and includes dimer acid and/or dimer diols, for the purpose of preventing free isocyanate contamination and preventing deterioration of the adhesive due to water and humidity. 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 1 -2, 6 , 15 -16 and 36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over C laim 2 , 5, 7 , 17 -18 and 38 of copending Application No. 18/551,956 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims contain all of the limitations of the instant claims. The mapping between the instant claims and the copending claims is as follows: Regarding Claim 1 , copending Claim 2 recites an acetoacetate end-capped polyol comprising the same a) dimer fatty residue and/or b) linear or branched C2-C36 diacid/diol as recited by instant C laim 1. Regarding Claim 2 , copending Claim 5 adds the same number average molecular weight limitation to copending Claim 2 (through copending Claim 3) that instant Claim 2 adds to instant Claim 1. Regarding Claim 6 , copending Claim 7 adds the same acetoacetate end-cap limitation to copending Claim 5 that instant Claim 6 adds to instant Claim 1. Regarding Claim 15 , copending Claim 17 adds the same C4-12 linear dicarboxylic acid residue limitation to copending Claim 5 that instant Claim 15 adds to instant Claim 1. Regarding Claim 16 , copending Claim 18 adds the same dicarboxylic acid limitation to copending Claim 17 that instant Claim 16 adds to instant Claim 15. Regarding Claim 36 , copending Claim 38 adds the same coating, adhesive, sealant or elastomer composition requirements to copending Claim 5 that instant Claim 36 adds to instant Claim 1 (through instant Claim 21). That instant Claim 1 is directed to a polyester polyol satisfies the requirement that Claim 38 includes a polymer composition. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT DAVID R FOSS whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-4821 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday - Friday 8:00 - 5:00 . 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, FILLIN "SPE Name?" \* MERGEFORMAT ARRIE L REUTHER can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571)270-7026 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /D.R.F./ Examiner, Art Unit 1764 /KREGG T BROOKS/ Primary Examiner, Art Unit 1764