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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-19, drawn to polymer comprising reaction product of components A, B and C as claimed, classified in C08G 59/184.
II. Claim20, drawn to a dispersion comprising solvent, particles and polymer of claim 1 classified in C09D 11/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the formed polymer does not have to be utilized in a dispersion but with addition of photoinitator the polymer can form a film or coating.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Specifically, exemplified composition cured by UV light results in product that is entirely different in both use, chemical structure and properties. Such composition will require not only an entirely different search but also additional components such as solvents, and particulate that can be organic or inorganic.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Michael McKee on August 14, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-19. Affirmation of this election must be made by applicant in replying to this Office action. Claim 20 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Interpretation
Applicant’s claims are directed to a polymer which is a reaction product of polyepoxide, carboxylic acid terminated acrylate polymer or polyester and either primary amine, secondary amine or monocarboxylic acid.
Claim does not include any specific content of each component. Claim also utilize term “comprising” which is open to components such as initiator or other components that can crosslink or cure polymers.
Claim does not provide any order of steps, consequently all components can be mixed at once or either component B or component A can form an adduct with an amine before the rest of the composition is added.
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.
Claim Rejections - 35 USC § 102
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, 3 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reich (US 6,500,878) and in view of evidence in EP 279,303 (US 5,096,938 will be utilized as English translation).
With respect to claim 1, Reich discloses first a reaction product of acrylic resin with primary or secondary amine (col 2. l. 30-32, 55-60). The acrylate polymer includes that discloses US 5,096,938, which is incorporated by Reich as a reference to a polymer utilized in his teachings. The polymer discloses therein comprises dihydric alcohol with dibasic carboxylic acid and excess if acrylic or methacrylic acid.
While Reich does not explicitly state that the carboxylic acid terminate the component B, based on the content of acids alone, such is inevitable and therefore inherent.
In any event the polymer of the referenced EP patent (or its US equivalent) is then reacted with primary or secondary amine which meets the requirement of reaction product where A is first mixed with component C.
Examples 10-12 (Table 3) utilized amine modified polymer with Epikote 828 which is unmodified bisphenol A -epichlorohydrin epoxy resin.
With respect to claims 2 and 3, as evidenced in ‘938 the polymer comprises acrylic or methacrylic acid, which are monocarboxylic acid, wherein it is already well established in the art that monofunctional compounds terminate the polymerization.
With respect to claim 12, Epikote 828 is a tradename has following properties: Epoxy equivalent in a range of 184-190 g/eq which corresponds to 5.26-5.42 mmol of epoxide per gram, which comprises 2 epoxy group per one bisphenol A. Based on typical molecular weight the degree of polymerization is between 4-5.
Allowable Subject Matter
Claims 4-11, 13-19 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.
Specifically, the examiner was not able to find prior art which utilized monocarboxylic acid as component C, which is separate from carboxylic acid of component B. The primary and secondary amines are aliphatic amines, and although utilizing aromatic amines may be view as obvious modification, the applicants disclose very specific amines where the genus cannot anticipate species. Additionally, while choice of acrylates may be obvious here applicants again claim a very specific monomers which are reacted with either thioglycolic acid or thiomalic acid. Use of the two acids renders dependent claims 6 and 7 distinct from the prior art of record.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 August 14, 2026
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