Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Objection to Abstract
2. The abstract of the disclosure is objected to because the X and A variables of formula (I) have not been defined, since formula (I) as disclosed and claimed is fundamental with respect to the inventive concept. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objection
3. Objection is made to claim 8, because within line 1, the word, wherein< has been misspelled.
Claim Rejections - 35 USC § 112
4. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
5. Claim 7 is 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.
With respect to claim 7, the molar ratio range, as claimed, is confusing, because a clear ratio has not been set forth; if the ratio range is intended to be 1:1 to 2:1, then it should be so claimed. Clarification is required.
Double Patenting
6. 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.
7. Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/689,929 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each claim set encompasses an amine corresponding to applicants’ formula (I). Regarding instant claim 14, it has not been established that the process limitations yield a patentably distinct product.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
8. Applicants’ response has been considered; however, it is insufficient to overcome the provisional rejection. Firstly, though applicants’ arguments are directed to a composition of the reaction product of claim 14, claim 14 is directed to a reaction product, as opposed to a composition. As such, the claim is considered to be drawn to a compound that corresponds to the formula set forth within claim 12 of the copending application. Secondly, despite applicants’ argument with respect to the amine content, it is noted that the amine content may be zero or absent, therefore, in this context, it fails to be a distinguishing characteristic. Furthermore, there is no clear requirement that the argued amine content be present, since the language of the claim merely states that the amine in question was removed during production. The examiner again stresses that it has not been established that the process limitations yield a patentably distinct product.
Claim Rejections - 35 USC § 102
9. 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.
10. Claims 1-7, 9, 10, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ma et al. (US 2013/0302401 A1).
Ma et al. disclose the reaction of epoxy compounds with furfuryl diamines, corresponding to those instantly claimed. See paragraphs [0008], [0066], [0092], [0123], and [0125] and see especially the furfuryl diamine compounds of paragraph [0092] set forth within the second column of page 20. To the extent claimed, the disclosure is considered to be anticipatory. Furthermore, regarding claims 6, 7, and 14, it has not been established that the process limitations yield a patentably distinct product. Also, regarding claim 5, since the disclosed amine compound corresponds to that claimed, the position is taken that the RCI value is either inherent or it has not been established that this property of the amine yields a patentably distinct method of using a structurally identical compound.
11. Applicants’ response has been considered; however, it is insufficient to overcome the prior art rejection. Despite applicants’ argument, the reference is adequate to anticipate the contacting or reaction of an epoxy resin with an amine corresponding to that instantly claimed. Applicants’ argument that their invention is drawn to a two-component epoxy resin composition for curing in no way distinguishes the instant claims from the prior art. The prior art discloses that the composition constitutes a polymer and that it is adequate to produce coatings; accordingly, the position is taken that curing, to the extent instantly claimed, is met. Lastly, applicants’ argument that the reference does not disclose how the amine compound is produced does not distinguish the claims from the prior art, because the prior art discloses the claimed amine compound by structural formula. Furthermore, the instantly claimed reaction product, including its use in the method of contacting with the epoxy resin, constitutes a product by process, and there is nothing on the record to establish that the process limitations yield a patentably distinct product.
Allowable Subject Matter
12. Claim 16 is allowed.
13. Claims 8, 11, and 15 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.
Conclusion
14. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/ Primary Examiner, Art Unit 1765
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