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 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.
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.
Claims 1-19 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.
Claim 1 and 14’s “m=1” would not result in a polycarbonate.
The steps recited in claims 14-19 do not result in golf ball having a painted surface. Instead, the steps merely form the material itself.
Claim Rejections - 35 USC § 103
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.
Claims 1-5,8,14 and 15 rejected under 35 U.S.C. 103 as being unpatentable over Kamino 2009/0105012 in view of Konig 4808691 and Robinson 4463141 and Kawai 2025/0115710.
Kamino (paragraph 82) teaches two-pack golf ball paints made from polyol and polyisocyanate.
Preferably, this polyol is a urethane polyol (paragraph 83). The urethane polyol is made reacting a polyisocyanate with a molar excess of polyol (paragraph 83). The polyol used in making the urethane polyol is a polyether such as PTMG, polyhexamethylene carbonate etc or two or more in combination (paragraph 84).
This differs from applicant’s claim in that the urethane polyol made from a single polyol having both polycarbonate units and polyether units.
Such polyether carbonate polyols are known. Konig (abstract; examples 11-13) forms polyurethanes from polyether carbonate polyols. Konig recognizes polyether based polyurethanes are more resistant to micro-organisms. On the other hand, polycarbonate based polyurethanes have outstanding hydrolytic resistance (col 1 line 19-23). Konig (col 3 line 9-13) intends to overcome these problems by utilizing polyether carbonate polyols in making the urethane.
Similarly, Robinson (col 1 line 31-35) produces polyether carbonate polyols that are more color stable than polyether based polyurethanes.
Kawai also produces polyether carbonate polyols. Kawai (paragraph 2) recognizes that polycarbonate based polyurethanes have better scratch resistance than polyether based polyurethanes. Kawai (paragraphs 440, 442) actually produces urethane polyols from his polyether carbonate polyols. Kawai (paragraph 9) indicates the single polyether carbonate polyol overcomes the compatibility issues between polyether polyols and polycarbonate polyols.
It would have been obvious to utilize a urethane polyol derived from a single polyol having both polyether and polycarbonate units (ie a polyether carbonate polyol) as Kamino’s urethane polyol.
This would be expected to overcome compatibility problems between the polyether polyol and polycarbonate polyol while making a urethane polyol from separate polyether polyol and polycarbonate polyol.
It would also be expected to maintain the advantages of the individual polycarbonate polyol based urethane polyol and polyether polyol based urethane polyol suggested by Kamino.
Robinson’s (col 1 line 23) polyether carbonate diol overlaps applicant’s formula (A) in terms of repeating units and R1 and R2 being -CH2CH2CH2CH2-.
Konig’s polyether carbonate diol of example 4 must meet applicants formula (A) in terms of repeating units given its molecular weight of 1340 falls within applicant’s range of claim 3. Konig’s R1 and R2 of example 4 would be a mix of -(CH2)6- and -(CH2)9-.
In regards to applicant’s dependent claims:
Kamino’s NCO/OH ratio is 1.3:1 (paragraph 105) – meeting applicant’s claim 2.
Kamino (paragraph 84) teaches that the polyol in making the urethane polyol has a molecular weight of 50-2000 – meeting applicant’s claim 3 and 15.
Konig’s example 4 polyether carbonate diol has a molecular weight of 1340 – meeting applicant’s claims 3 and 15.
When Kamino uses isophorone diisocyanate (Mw 222g/mol) as the isocyanate and a polyol of Mw 1000 at a 1.3:1 molar ratio, the amount of polyol would be;
1mmol polyol 1000mg polyol 1mmol IPD 3.47 mg polyol
------------------ x -------------------- x --------------- = -----------------------
1.3 mmol IPD mmol polyol 222mg IPD 1 mg IPD
The weight ratio of polyol in the urethane polyol is 3.47/(3.47 + 1) =78% - meeting applicant’s claim 4.
Kamino’s paint may the outermost layer (paragraph 76) – meeting applicant’s claim 8.
Claims 1-5,7,8,14 and 15 rejected under 35 U.S.C. 103 as being unpatentable over Yoneyama 6210295 in view of Konig 4808691 and Robinson 4463141 and Kawai 2025/0115710.
Yoneyama exemplifies (#4,5) golf ball paints made from urethane polyol I, urethane polyol II, acrylic polyol III, hexamethyene diisocyanate derivative, solvents etc.
Hexamethylene diisocyanate derivative qualifies as applicant’s polyisocyanate.
Urethane polyol I (col 7 line 1) is made from a polycarbonate polyol. Urethane polyol II (col 7 line 9) is made from a polyether polyol.
This differs from applicant’s claim in that a single urethane polyol made from a polyol having both polycarbonate units and polyether units is required.
Such polyether carbonate polyols are known. Konig (abstract; examples 11-13) forms polyurethanes from polyether carbonate polyols. Konig recognizes polyether based polyurethanes are more resistant to micro-organisms. On the other hand, polycarbonate based polyurethanes have outstanding hydrolytic resistance (col 1 line 19-23). Konig (col 3 line 9-13) intends to overcome these problems by utilizing polyether carbonate poyols in making the urethane.
Similarly, Robinson (col 1 line 31-35) produces polyether carbonate polyols that are more color stable than polyether based polyurethanes.
Kawai also produces polyether carbonate polyols. Kawai (paragraph 2) recognizes that polycarbonate based polyurethanes have better scratch resistance than polyether based polyurethanes. Kawai (paragraphs 440, 442) actually produces urethane polyols from his polyether carbonate polyols. Kawai (paragraph 9) the single polyether carbonate polyol overcomes the compatibility issues between polyether polyols and polycarbonate polyols.
It would have been obvious to utilize a single urethane polyol derived from a polyether carbonate polyol in place of Yoneyama’s combination of two separate urethane polyols. This would be expected to overcome compatibility problems between the separate urethane polyols while maintaining the advantages of the individual polycarbonate polyol based urethane polyol and polyether based polyol used by Yoneyama.
Robinson’s (col 1 line 23) polyether carbonate diol overlaps applicant’s formula (A) in terms of repeating units and R1 and R2 being -CH2CH2CH2CH2-.
Konig’s polyether carbonate diol of example 4 must meet applicants formula (A) in terms of repeating units given its molecular weight of 1340 falls within applicant’s range of claim 3. Konig’s R1 and R2 of example 4 would be a mix of -(CH2)6- and -(CH2)9-.
In regards to applicant’s dependent claims:
Yoneyama’s NCO/OH ratio is 1.1 (table 1) – meeting applicant’s claim 2.
Konig’s example 4 polyether carbonate diol has a molecular weight of 1340 – meeting applicant’s claims 3 and 15.
Yoneyama’s urethane group concentration in the urethane polyol is 1-5mmol/g (col 5 line 4). Given that a urethane group -NHC(O)O- has a molecular weight of 58g/mol, the total amount (in grams) of urethane groups would be:
1-5mmol/g x 58mg/mmol x 1g/1000mg = 0.05 to 0.29g NCO/g urethane polyol
This means 5-29wt% of the urethane polyol could not be from the polyol in the polyol + polyisocyanate reaction that makes the urethane polyol. Some additional weight for the linking group between the isocyanate groups in said polyisocyanate (eg OCN-R-NCO) would also necessarily lessen the amount of polyol in the urethane polyol. This makes applicant’s 20-80wt% polyether carbonate polyol in the urethane polyol of claim 4 obvious.
Yoneyama’s hexamethylene diisocyanate derivative is an isocyanurate (col 7 line 47) – meeting applicant’s claims 7.
Yoneyama’s paint (abstract) is the outermost layer – meeting applicant’s claim 8.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1,6 and 13 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 13-15 of copending Application No. 18-634169 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 3-5,7-12 and 14-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18-634169 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application (see copending claim 13) also clams golf balls coated with a urethane polyol/polyisocyanate paint. The urethane polyol was made from the polyethercarbonate pictured in claim 1.
Applicant’s claims 3-5 and 7-12 mirror claims 2-12 of the copending application in describing the polyether carbonate.
Applicant’s method claims 14-19 require nothing more than forming the polymer itself – which is obvious from claims directed to the golf ball coated with the poymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 3/6/26