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 .
Response to Amendment
In response to the Amendment received on 11/06/2025, the examiner has carefully considered the amendments.
Response to Arguments
Applicant’s arguments, see Remarks, filed 06/24/2025, with respect to the rejection(s) of claim(s) 1-6, 11-13, 17-19 and 20-21 under 35 U.S.C. 103 as being unpatentable over Oishi et al (US 11,673,983) have been fully considered and are persuasive. Applicant has properly invoked common ownership to disqualify a U.S. patent document, US 11,673,983, as prior art under 35 U.S.C. 102(a)(2) with statement found in the remarks on page 8. Therefore, the rejection has been withdrawn. However, upon further consideration, rejection under nonstatutory double patenting based upon on a judicially created doctrine grounded in public policy made in view of Saeki (11,987,658) still stand. It appears by definition the overall teachings of Saeki teaches away from the use of a urethane acrylate oligomer as the bifunctional oligomer—see column 11, lines 38-45. Please find below.
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,987,658. Although the claims at issue are not identical, they are not patentably distinct from each other because they overlap in subject matter. Both sets of claims set forth a curable resin composition comprising (A) an a-(unsaturated alkoxyalkyl) acrylic acid of an ester thereof represented by the formula (1):
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, wherein R1 represents a hydrogen atom or an organic group having 1 or more or 30 or less carbon atoms; R2 represents an alkylene group having 1 or more and 4 or less carbon atoms; any one of R3 and R4 represents an alkylene group having 1 or more and 4 or less carbon atoms and another thereof represents an oxygen atom; and R5 represent any one of a hydrogen atom, an alkyl group having 1 or more or 4 or less carbon atoms and an ester group; and wherein the compound (B) is a bifunctional radically polymerizable oligomer formed of an oligomer moiety in which two or more monomer units are linked together via any one of a carbonate group, an ester group, an ether group and two polymerizable functional groups.
Claims 1 and 4-6 in US’658 additionally requires: the total content of the component (A) and the component (C) is more than 70 parts by mass and less than 90 parts by mass with respect to 100 parts by mass in total of the component (A), the component (B), and the component (C); wherein a content of the component (D) is 5 parts by mass or more and 60 parts by mass or less with respect to 100 parts by mass in total of the component (A), the component (B), and the component (C), and wherein, when the curable resin composition comprises the component (C), the component (C) contains a monofunctional radically polymerizable compound at a content of more than 75 parts by mass with respect to 100 parts by mass in total of the component (C) which is not required in instant claim 1. However, it can be seen from instant claims 6-9, the instant claims are intended to comprise based on the total content of the component (A) and the component (C) is more than 70 parts by mass and less than 90 parts by mass with respect to 100 parts by mass in total of the component (A), the component (B), and the component (C); wherein a content of the component (D) is 5 parts by mass or more and 60 parts by mass or less with respect to 100 parts by mass in total of the component (A), the component (B), and the component (C), and wherein, when the curable resin composition comprises the component (C), the component (C) contains a monofunctional radically polymerizable compound at a content of more than 75 parts by mass with respect to 100 parts by mass in total of the component (C).
Claim 2-3 of US’658 overlap in scope with instant claims 2-3.
Claim 6-16 of US’658 directly overlap in scope with instant claims 4-5 and 11-18.
The method of instant claims 20-21 overlap in scope with US’658 claims 1 in combination with claims 15-16.
Thus, It is deemed that the instant claims, as written, cannot be infringed without literally infringing upon the claims of the co-pending application(s) as cited in the obviousness-type double patenting rejection(s).
Conclusion
THIS ACTION IS MADE FINAL. 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 SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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, Heidi Riviere-Kelley can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
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