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 .
Claim Objections
Claims 3-9, 11-13, and 16-17 are objected to because of the following informalities:
Claims 3-8 and 16-17, “The Composition” should be “The composition”.
Claim 9, “A Process for the preparation of claim 1” should be “A process for the preparation of the composition of claim 1”.
Claim 11, “A Process” should be “A process”.
Claim 12, “The Process” should be “The process”.
Claim 13, “An Article” should be “An article”.
Appropriate correction is required.
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, 3-4, 6-8, 11-13, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/590,172. Although the claims at issue are not identical, they are not patentably distinct from each other because both encompass a composition comprising a polyamideimide, methyldiethanolamine, and water.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1:
Copending claim 1 discloses an aqueous composition comprising a polyamideimide polymer, a tertiary amine, and implicitly water. The polymer comprises at least 50.0 mol% of recurring units comprising an aromatic ring and one or more of an amic acid group or an imide group. Copending claim 4 further requires the polymer to have an acid number of 100 mg KOH/g. Copending claim 1 discloses the tertiary amine conforms to a formula (I) which encompasses methyldiethanolamine. Copending claim 8 further describes the tertiary amine is methyldiethanolamine. Features disclosed by the copending claims that are not specifically recited in the present claims are encompassed by the present use of inclusive language.
Regarding claims 3-4:
See copending claims 2-3.
Regarding claims 6-7:
Copending claim 1 discloses overlapping weight amounts. Also see copending claims 5 and 7. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 8 and 17:
Copending claim 1 discloses organic solvent in overlapping weight amounts. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 11-13:
See copending claims 13-15.
Claim Rejections - 35 USC § 103
Claim(s) 1-13 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ireland et al. (US 6,479,581) in view of Murray et al. (US 2007/0142616) or Ansari (US 2022/0102713).
Regarding claim 1:
Ireland discloses a composition comprising a polyamide-amic acid, an amine, and water (abstract; 1:8+; 2:30+). The polymer is formed from the reaction between one or more aromatic polycarboxylic acids and one or more aromatic diamines (i.e., more than 50 mol% of recurring units comprise an aromatic ring and an amic acid and/or imide group) (2:56+). Also see specific monomers and resulting polymers (4:21-64; 6:6+; 11:25+). The polymer has an acid number of at least 100 mg KOH/g (6:37+). The amine improves the solubility of the polymer in water and is a tertiary amine that is volatile and miscible in water, which can be removed during curing treatments (7:54+). Tertiary alkanol amines can be used (8:5+).
Ireland is silent with regard to methyldiethanolamine.
This amine was known to have utility in the art. For example, Murray discloses coating compositions comprising a polyamideimide having excess acid functionality, an amine, and water [abstract; 0003; 0113]. The amine improves solubility and includes methyldiethanolamine [0113; 0122].
Alternatively, Ansari discloses aqueous compositions comprising silicon, a water-soluble polymer, and a pH modifier [abstract; 0002-0006; 0044]. Suitable polymers include polyamideimide [0127]. The pH modifier includes methyldiethanolamine, which can also adjust the viscosity as well as allow the PAI to remain soluble in water [0103; 0105; 0114; 0160].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use amines known in the art to provide improved solubility properties to polyamideimide polymers, including methyldiethanolamine, as demonstrated by Murray or Ansari to provide such properties to the composition of Ireland.
Regarding claim 2:
Ireland does not require any additional components for its invention. The reference further teaches solvent can be used in an amount as little as 0.1% by weight (9:19+).
Regarding claims 3-4:
Ireland discloses polyamide-amic acid corresponding to present formulas (i-a) and (i-b) (6:6+). Also see additional teachings, which encompass additional claimed structures (5:20+).
Regarding claim 5:
Ireland teaches acid numbers greater than 120 mg KOH/g (6:37+).
Regarding claim 6:
Ireland teaches the amount of polymer is about 0.5-15% by weight (8:16+).
Regarding claim 7:
Ireland teaches the amount of tertiary amine will vary depending on the acid number of the polymer and the amount of polymer used, but generally lies in the range of about 0.5-50% by weight. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of amine, including over amounts falling within the claimed range, to provide the desired neutralization and solubility properties desired for a given end use.
Regarding claims 8 and 17:
Ireland teaches solvent can be used in an amount as little as 0.1% by weight (9:19+).
Regarding claim 9:
Ireland teaches any preparation method can be used including adding the solid polymer to a stirred mixture of amine and water or adding the amine to a stirred suspension of polymer and water, each stirring until the solid is dissolved (9:7+).
Regarding claim 10:
Ireland teaches process further includes the step of warming during stirring to completely dissolve the solid polymer in a reasonable time period (9:14+). Although the reference is silent with regard to a specific temperature range, the reference suggests heating the mixture to effect dissolution. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the temperature of the mixture, including over values falling within the claimed range, to decrease the time necessary to fully dissolve the polymer, and thereby arrive at the claimed invention.
Regarding claims 11-13:
Ireland teaches using the composition as a coating for a substrate (9:33+). After applying the composition, it is heated above 150°, generally in the range of 200-350° C (10:55+).
Regarding claim 16:
Ireland teaches the amount of polymer is about 0.5-15% by weight (8:16+). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the amount of polymer, including over amounts falling within the claimed range, to provide the desired viscosity and coverage properties desired for a given end use.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ireland et al. (US 6,479,581) in view of Murray et al. (US 2007/0142616) or Ansari (US 2022/0102713) as applied above, and further in view of McGregor et al. (US 4,374,221).
Regarding claim 14:
Ireland in view of Murray or Ansari discloses a composition and coated article as previously explained. Ireland teaches the coating can be applied to wires, including metal wires (1:23+; 10:34+).
Ireland is silent with regard to magnet wire.
Such material was known in the art to have utility. For example, McGregor discloses polyamideimide-based enamel for use with magnet wire (abstract; 1:5-22).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use the composition with substrates known to be useful in the art, including magnet wire, to provide the properties of such a substrate (e.g., magnetism) as desired.
Conclusion
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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