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 .
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 1-11, 14-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/682,368 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each claims an insulating covering for a wire including a polymer with a side chain, a metal ion, and a component on the side chain which is capable of forming an ionic bond with the metal ion, wherein the metal ion is releasable by heating.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11, 14-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/682,344 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each claims an insulating covering for a wire including a polymer with a side chain, a metal ion, and a component on the side chain which is capable of forming an ionic bond with the metal ion wherein the metal ion is releasable by heating.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-11, 14-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2020002201A in view of Doumae et al, U.S. Patent Application Publication No. 2012/0258321.
JP ‘201 discloses a molded body which has excellent mechanical strength, adhesion to metal and is useful as electrical insulation. See abstract and page 18, fourth full paragraph. JP ‘201 discloses providing metal ions which can form ionic bonds with substituents on a polymer to provide a crosslinked structure. By doing so, the structure has improved mechanical and thermal properties. The polymer can include a diene carboxylate which can form the ionic bond with the metal ion. See page 3, paragraph 7. Suitable metal ions include alkaline earth mentals, zirconium, zinc, aluminum . See page 4, final paragraph 7. A suitable polymer can be a silicone rubber having a methyl substituent in the polymer chain such as polydimethylsiloxane. See paragraph 3 of page 9. The composition can further comprise filler such as those claimed in amounts of 0-55% by mass based on the mass of the resin. With regard to the particle size, it would have been obvious to have selected a particle size which provided the optimum reinforcement of the structure. See page 15, paragraph 4-6.
JP ‘201 differs from the claimed invention because it does not disclose employing the composition as insulation for a wire per se and does not disclose that the polysiloxane has a side chain as claimed, the softening temperature, or the proportions of the components.
However, Doumae discloses a metal crosslinked organopolysiloxane. See paragraph 0019. Tg of the organopolysiloxane is -50C to 60 C. See paragraph 0026. The metal is probably zinc, copper, cobalt, nickel, manganese, magnesium and calcium. See paragraph 0028. The carboxylic acid containing vinyl copolymer block A is present in the weight percent of 5-98.5, the organopolysiloxanethio block B is in the range of 1-80% and the metal is in the range of 0.5-16%. See paragraph 0029. The portion of the resin capable of forming the ionic bond with the metal can be present on the side chain of the polymer and can be connected to the main chain by an alkyl or alkylene group. See 0097. Since the structure includes the same material the metal ion would necessarily be able to be released by heat and capable of forming a metal complex as claimed in claims 12-13.
Therefore, it would have been obvious to one of ordinary skill in the art to have employed the particular types of organopolysiloxanes as taught by Doumae in the invention of JP ‘201, since JP ‘201 teaches employing such structures as electrically insulating materials which have good adhesion to metal. It further would have been obvious to have employed the composition of JP ‘201 as modified by Doumae as an insulating material for a wire and to have formed the crosslinked structure on a wire and wiring harness, in view of the teaching of JP ‘201 that the metal crosslinked polysiloxanes have good adhesion for metal and are useful as electrically insulating materials.
With regard to the claims as amended 2/26/26, the limitation “the metal ion can be released by heat as a metal ion capable of forming a metal complex with a beta-diketonato ligand or alkoxide ligand, and the metal ion can be released from the metal complex by heating at 50 degrees C or higher and 180 degrees C or lower”, does not appear to further limit the insulated wire structure but instead refers to a property of the metal ion. Since JP ‘201 teaches a structure including the metal ion which is capable of forming an ionic bond with the side chain of the silicone resin and forming a crosslinked product through the ionic bond between the substituent and the metal ion, the rejection is maintained because JP ‘201 teaches the same composition. Since Doumae teaches metal crosslinked polysiloxanes are useful as wire coatings for forming insulated wires, it would have been obvious to have used the composition of JP ‘201 to form an insulated wire coating.
With regard to new claims 20-22, JP ‘201 does not require the presence of radical generators, teaches the silicone resin can be polysiloxane, (see page 9), and does not require the presence of additional polymers.
Applicant's arguments filed 2/26/26 have been fully considered but they are not persuasive.
Applicant argues that JP ‘201 does not teach the limitation that the metal ion can be released by heat as a metal ion capable of forming a metal complex with a beta-diketonato ligand or alkoxide ligand, and the metal ion can be released from the metal complex by heating at 50 degrees C or higher and 180 degrees C or lower. However, as set forth above, this limitation does not appear to further limit the structure of the insulated wire having the claimed coating. JP ‘201 teaches the claimed crosslinked structure including the polysiloxane and the metal ion. Further, JP ‘201 teaches metal ions which would necessarily have the claimed properties of forming a metal complex and being released from the metal complex by heating, since JP ‘201 teaches the metal ions which are used in the instant invention such as zinc.
With regard to the obviousness-type double patenting rejections, since the other pending applications each claim a metal ion which is released by heating, it would have been obvious to have selected a suitable temperature through the process of routine experimentation which would release the metal ion.
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 ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
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/ELIZABETH M IMANI/Primary Examiner, Art Unit 1789
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