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 .
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 15 and 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2,7-10, 12, and 13-14 of U.S. Patent No. 11,920,058 in view of WO2019/145472.
Although US’058 uses different terminology and recites a wide number of preferable limitations, the limitations are considered optional. Furthermore, although the claims of US’058 fails to teach hexamethylene diisocyanate (HDI), WO’472, the 102(b) priority document for US’058, teaches an HDI reactant for the production of a donor component [00112]. Thus, it would be an obvious substitution. Additionally, WO’472 teach compounds and reactions involving multiple isocyanate and multiple hydroxyl groups.
Claim 1-6, 9, 11-15, and 17-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9,11,14-23 of copending Application No. 18/567133 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the coating compositions with the same or obviously similar components, including obvious modifications (e.g. HDI).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 7-8 and 10 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 1, Brinkhuis (WO’472) teaches a powder coating composition comprising a crosslinkable composition and a catalyst system, wherein the crosslinkable composition is formed by a crosslinkable donor component A and a crosslinkable acceptor component B that are crosslinkable by a Real Michael Addition (RMA) reaction via the catalyst system, and which catalyst system is able to catalyze the RMA crosslinking reaction at a curing temperature below 140°C [0004,0084], wherein the crosslinkable composition comprises a) crosslinkable donor component(s) A having at least 2 acidic C-H donor groups in activated methylene or methine and b) crosslinkable acceptor component(s) B having at least 2 activated unsaturated acceptor groups C=C, which react with component A by Real Michael Addition (RMA) to form a crosslinked network [0009]; wherein at least part of the crosslinkable donor component A and/or a crosslinkable acceptor component B are (semi) crystalline and comprise a polyurethane backbone formed by: reacting a polyisocyanate, which is substantially hexamethylene diisocyanate (HDI), with a compound (i) comprising at least two isocyanate reactive groups and a compound (iia) comprising at least one isocyanate reactive groups to form a (semi) crystalline donor component A; or a compound (iib) comprising at least one isocyanate reactive groups [0072,00112]. WO’472 fails to teach a compound (1), which is a connecting chain between hydroxyl groups containing -CH(CH3)-unit or a CH(CH2CH3)-unit. While Klinkenberg et al. (WO 01/92363) was cited in the rejection of Claim 3 in the previous Office Action, WO’363 fails to provide sufficient reason to react HDI with diols, specifically with the recited connecting chains in the context of (semi)crystalline cross-linkable compounds. (See, also, Applicant’s Remarks, p. 9, last paragraph, through p. 10, first paragraph).
Response to Arguments
Applicant’s arguments, see Remarks, pp. 9-10, filed 12 December 2025, with respect to the objection to Claim 15 and to the rejections of Claims 1-15 and 17-18 under 35 USC 102, 103, and 112(b) have been fully considered and are persuasive. The objection to Claim 15 and the rejections of Claims 1-15 and 17-18 under 35 USC 102, 103, and 112(b) have been withdrawn.
While Klinkenberg et al. (WO 01/92363) was cited in the rejection of Claim 3 in the previous Office Action, WO’363 fails to provide sufficient reason to react HDI with diols, specifically with the recited connecting chains in the context of (semi)crystalline cross-linkable compounds. (See, also, Applicant’s Remarks, p. 9, last paragraph, through p. 10, first paragraph).
Applicant's arguments, filed 12 December 2025, with respect to the double patenting rejections, have been fully considered but they are not persuasive.
While the amendment to the claims incorporates Claim 3 into Claim 1 to overcome the double patenting rejection of Claims 1-14 over US Patent No. 11,920,058, the same language was not incorporated into Claim 15. Therefore, the double patenting rejection of Claims 15-18 over US’058 is maintained.
In response to Applicant’s argument that the elements of the claims are not specifically recited in the copending Application 18/567,133, Applicant has not challenged any specific aspect of the rejection which rejected Claim 3, whose language is now substantially incorporated into Claim 1. Therefore, it is not clear on what grounds Applicant challenges the double patenting rejection.
Conclusion
No claim is allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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, Michael Cleveland can be reached at 571-272-1418. 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.
ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
Prosecution Insights