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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/13/2026 has been entered.
DETAILED ACTION
This Office Action is responsive to the amendment filed on 5/13/2026. Claims 6, 7 have been canceled. Claims 1-5, 8-17 are pending. Claims 8, 12-16 are withdrawn from further consideration as being drawn to a non-elected invention, in accordance with 37 CFR 1.142(b). Claim 1 has been amended. Applicant’s arguments have been considered. Claims 1-5, 9-11, 17 are finally rejected for reasons of record and for reasons necessitated by applicant’s amendment.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 is of U.S. Patent No. 11,990,610. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 11,990,610 contains all the limitations of claim 1 of the instant application.
Allowable Subject Matter
Claims 1-5, 8-11, 17 would be allowable if the rejection under Double Patenting is overcome, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is Awano (US 2021/0193993). Awano discloses all the elements of claim 1, except “wherein the organic compound includes a catechol-based compound” as recited in claim 1. Awano discloses a metal-substituted poly(acrylic acid) based compound, and not a catechol-based compound, as a shell. Awano discloses
[0030] When the PAA is dissolved in an aqueous solvent for coating, polymers are aggregated by hydrogen bonding, and therefore, when a polymer coating layer is formed using the PAA, the uniformity of the coating layer may be degraded. However, when hydrogen atom(s) in carboxyl groups of the PAA chain is(are) substituted with one or more metals selected from the group consisting of K, Na and Li, the polymer chain is transformed into a stretched polymer chain due to a repulsive force in-between the polymer, and thus the aggregation issue is resolved. As a result, a uniform polymer coating layer may be formed.
The second closest prior art is Ruan (US 2019/0177570). Ruan discloses a silica substrate having a crosslinked catechol coating [0012, 0014], but does not disclose that the catechol coating is substituted with a metal. Ruan discloses:
[0004] After a long-term investigation, the limitations of surface modification based on dopamine polymerization have been recognized. The stability of the polydopamine in organic solvents (or aqueous solutions containing organic solvents) and acidic/alkalic environments is poor, which is an bottleneck restricting polydopamine modification in practical application. This instability can be attributed to the low-molecular-weight oligomers of dopamine, which are variable in solubility in the polymerization process and could deposit on the substrate materials more or less along with the precipitation of high-molecular-weight polydopamine for modification. Under the environment of organic solvent or acidic/alkalic solution, the dopamine oligomers could be dissolved gradually in the long-term utilization, which would seriously impair the dense degree and the continuity of the polydopamine coating layer for surface modification, and thereby affect the long-term stability, limit the application scope.
[0005] Given all that, with the intent to further expand the application scope of surface modification technology based on dopamine polymerization, it is necessary to enhance the long-term stability of polydopamine coating layer in organic solvents (or aqueous solutions containing organic solvents) and acidic/alkalic environments. Accordingly, the procedure about cross-linking solidification is proposed in the present invention to convert the soluble low-molecular-weight dopamine oligomers into their insoluble three-dimensional networks, which can greatly reduce the dissolution of coating layer in organic solvents and acidic/alkalic environments, and thereby enhance the stability and the service life of polydopamine coating layer for surface modification. Such a procedure is established reliably on the basis including the polymerization principle of dopamine, the formation process of coating layer, as well as the failure mechanism of polydopamine coating in severe environments. In order to realize the cross-linking solidification, the crucial matter is to screen an eligible cross-linking agent which can react with the active functional groups of polydopamine.
The Examiner notes that substituting metal to the crosslinking polydopamine would hinder crosslinking, and hence polymerization of the polydopamine, and ultimately contribute to the instability of the polydopamine coating layer. It would frustrate Ruan’s objective of crosslinking the polydopamine to form a stable layer. Hence, the Applicant’s limitation of a catechol-based compound that is “metal-substituted” would not have been obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA KYUNG SOO WALLS whose telephone number is (571)272-8699. The examiner can normally be reached M-F until 5pm.
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/CYNTHIA K WALLS/ Primary Examiner, Art Unit 1751
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