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 .
Election/Restrictions
Applicant's election with traverse of Group II and Species A in the reply filed on February 04, 2026 is acknowledged. The traversal is on the ground(s) that examining two groups and two species would not present an undue burden for search and examination. This is not found persuasive because the holding of lack of unity of invention does not require a showing of a search and/or examination burden. As set forth in the original requirement, the requirement for unity of invention is fulfilled only when there is a technical relationship among the inventions involving one or more of the same special technical features. As set forth in the Office action of December 18, 2025, CN ‘559 discloses a composition that demonstrates that the claimed shared technical features are not special technical features.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-12 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group or Species, there being no allowable generic or linking claim.
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 14 and 15 are 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.
Claims 14 and 15 are dependent upon non-elected claim 1 and inherent the following indefinite issues from claim 1.
In lines 1, 11, and 15, the phrase “in particular” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP 2173.05(d).
In line 5, the term “the general formula (I)” lacks antecedent basis. This rejection can be overcome by changing the term “the” to “a”.
In line 9, a comma should be inserted after the term “alkyl”. See specification, page 3, line 19 and abstract.
In lines 9 and 10, improper Markush group terminology is used. See MPEP 2173.05(h). This rejection can be overcome by changing the term “or” to “and”.
In line 12, the term “the general formula (II)” lacks antecedent basis. This rejection can be overcome by changing the term “the” to “a”.
While the non-elected claims are not being examined in this Office action, a cursory review of these claims revealed that there are several indefiniteness issues with these claims. The Applicant is encouraged to review these claims and correct any obvious indefinite issues prior to the rejoinder of these claims. Some examples of these indefinite issues include the following:
Claims 2-6 and 9 contain improper Markush group terminology.
Claim 2, line 3, the term “the general formula (III)” lacks antecedent basis.
Claim 2 defines “R1” but there is no “R1” in general formula (III).
The use of “in particular” and “preferably“ in claims 4, 9, and 10.
Listing of claimed materials that do not contain an “or” or “and”, as appropriate, before the last component in claims 4, 5, and 7-9.
Claim Rejections - 35 USC § 103
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.
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 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 597 706 in view of CN 107903797. US Pub 2021/0324228 is a family member English language equivalent to EP ‘706 and is relied upon as a translation thereof. An English language machine translation of CN ‘797 is attached to this Office action. All citations below are to the ‘228 Pg Pub and CN ‘797 machine translation.
EP ‘706 discloses a composition for coating wood-based fiberboards comprising a polyurethane (claim 11), which by definition includes a polyol component, the claimed general formula (I), and the claimed general formula (II) (claim 1). The coating composition can be applied as a lacquer coating onto a wood-based fiberboard [0081]. EP ‘706 does not disclose including at least one antimicrobial active ingredient in the coating composition.
CN ‘797 discloses a similar coating composition useful for woodware that comprises a polyol and silane (Example 1). CN ‘797 discloses that the coating composition can contain a preservative, such as an octylisothiazolinone [0017], which is a known antimicrobial ingredient. It would have been obvious to one of ordinary skill in the art to have prepared the coating composition of EP ‘706 that further included an effective amount of octylisothiazolinone, i.e., an antimicrobial additive, as taught in CN ‘797, motivated by the desire to impart antimicrobial properties to the resulting coating.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 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, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781