Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
The amendment of 8/11/25 has been entered. Claims 1-18 and 20-21 are pending.
Rejections
Double Patenting
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. 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.
3. Claims 1-18 and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10907012 Kusaka et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the majority of the scope of the patented claims falls within the scope of the instant claims such that one practicing the full scope of the patented claimed invention would practice the instantly claimed invention.
Patented claim 1 encompasses the instant claims 1, 4, 6, 8, and 9 and the number average molecular weights of the instant claims 4, 6, and 7. Where the diol (i) is isosorbide in the patented claims, the instantly claimed amount of the instantly claimed formula (A) is necessarily present in the patented polycarbonate diols.
Patented claim 2 gives the instant claim 2.
Patented claim 3 gives the instant claims 3 and 10.
Patented claim 4 gives the instant claims 5 and 11.
Patented claim 6 gives the instant claims 12, 13, and 15.
Patented claim 7 gives the instant claim 14.
Patented claim 8 gives the instant claim 16.
Patented claim 9 gives the instant claim 17.
Patented claim 10 gives the instant claim 18.
Patented claim 11 gives the contents of alkyloxy terminal groups or aryloxy terminal groups of the instant claims including the instant claims 1, 6, and 12.
Patented claim 12 gives the instant claim 20.
Where the diol (i) is isosorbide in the patented claims, the instantly claimed amount of the instantly claimed formula (A) is necessarily present in the patented polycarbonate diols.
The patented claims do not require any unreacted diol to remain which falls within the scope of the instant claim 21. Furthermore, it is not seen that the polymerization conditions required to give the terminal (A) ratio (I) of the patented claims, particularly as discussed at the patent specification, column 10, lines 40-44, do not necessarily inherently give the amounts of unreacted diol of the instant claim 21. See MPEP 2112.
It is not seen that the amendments to the instant claims distinguish the instantly claimed inventions over those of the instant claims.
Response to Applicant’s Arguments
4. The following response is in reply to the applicant’s arguments regarding the rejection of paragraph 3 above:
In their arguments of 8/11/25:
The applicant argues “Applicant respectfully submits that this ground of rejection is rendered moot by the amendments herein.” The examiner disagrees for the reasons stated in the above rejection and for the content of the patented claims. The applicant does not distinctly and specifically point out any supposed errors in the examiner’s action. See MPEP 714.02.
The applicant argues “In the event that the Office does not agree, Applicant respectfully requests the double-patenting rejections be held in abeyance until the application is otherwise in condition for allowance. If necessary, Applicant will consider filing a terminal disclaimer at that time.” There is no mechanism to hold the above rejection in abeyance. See MPEP 714.02, noting that the applicant’s response must reply to every ground of objection and rejection in the prior Office action. See MPEP 804 paragraphs I.B.1., particularly “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Conclusion
5. 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.
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number (571)272-1121. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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.
/PATRICK D NILAND/Primary Examiner, Art Unit 1762