DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,751,107. Although the claims at issue are not identical, they are not patentably distinct from each other because they both require steps of providing a substrate (including a metal one, present Claim 8); providing a first powder composition with flow of no more than about 40 mm; providing a second powder composition with flow of at least about 40 mm; and heating the first powder coating composition and second powder coating composition in a single step to form a cured coating , wherein edge coverage is equal to at least 2% of face coverage (US’107, Claim 7), and the cured coating comprises a surface smoothness with a 20 degree gloss of at least 50% (present Claim 4) which must necessarily correspond to a smoothness of at least 4 on the PCI scale, since present Claim 4 depends from Claim 1 requiring the PCI range, which translates to gloss. Claim 1 of US’107 requires a continuous coating. Although the claims of US’107 fail to expressly recite that the second coating covers the entire first coating, Claim 1 implies it by the primer/topcoat relationship in addition to a continuous coating with a gloss. Additionally, an entire covering of the first by the second would have been an obvious modification to protect the substrate from corrosion. The claims of US’107 do not require a pigment or dye. US’107 fails to recite that the second coating is free of dye or pigment. A modification of the claimed invention(s) to omit a pigment or dye where none is required in the reference claim would have been obvious in order to omit a function of a pigment or dye, including changing a color of the coating, according to personal taste or aesthetic appealing to the inventor or a market, as a trade color, etc. MPEP 2144.04. I,II.A.
The dependent claims of US’107 correspond to dependent Claims 2-10 of the present application.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,940,505. Although the claims at issue are not identical, they are not patentably distinct from each other because they both require steps of providing a substrate(including a metal one, present Claim 8); providing a first powder composition with flow of no more than about 40 mm (compare the range of 20 mm about 35 mm in Claim 1 of US’505 with present Claim 2); providing a second powder composition with flow of at least about 40 mm (compare the range of “greater than 50 mm” with the range in present Claim 3); and heating the first powder coating composition and second powder coating composition in a single step to form a cured coating , wherein edge coverage is equal to at least 2% of face coverage (US’505, Claim 2), and the cured coating comprises a surface smoothness of at least 4 on the PCI scale.
Claim 1 of US’505 claims a primer/topcoat relationship between the first and second powder coating, a corrosion resistant coating and a surface smoothness of at least 4. Claim 2 requires an edge coverage of “the corrosion resistant coating” of at least 2%. Although the claims of US’505 fail to expressly recite that heating forms a continuous cured coating, wherein the second coating covers the entire first coating, at least the above relationships and properties imply a continuous cured coating wherein the second coating covers the entire first coating. Additionally, an entire covering of the first by the second would have been an obvious modification to form “a (singular) corrosion resistant coating” to protect the substrate from corrosion. The claims of US’505 do not require a pigment or dye. US’505 fails to recite that the second coating is free of dye or pigment. A modification of the claimed invention(s) to omit a pigment or dye where none is required in the reference claim would have been obvious in order to omit a function of a pigment or dye, including changing a color of the coating, according to personal taste or aesthetic appealing to the inventor or a market, as a trade color, etc. MPEP 2144.04. I,II.A.
The dependent claims of US’505 correspond to dependent Claims 2-10 of the present application.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,098,202. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a method of coating a substrate (including a metal one, present Claim 8), comprising: providing a substrate; providing a first powder composition with flow of no more than about 40 mm (see US’202, Claims 2-3); providing a second powder composition with flow of at least about 40 mm (see US’202, Claims 4-6); and heating the first powder coating composition and second powder coating composition in a single step to form a cured coating, wherein the cured coating comprises a surface smoothness of a surface smoothness of 25% to 90%, which is simply a different way of claiming smoothness of at least 4 on the PCI scale (“measured as 20-degree gloss, see present claim 4), and edge coverage equal of about 10% (US’202, Claim 17, which is also at 2% of face coverage). Claim 1 recites “a continuous corrosion-resistant coating” formed by curing the primer and topcoat; “primer” and “topcoat” suggest a relationship of the second powder coating on the first powder coating. Although the claims of US’202 fail to expressly recite that the second coating covers the entire first coating, at least the above relationships between primer and topcoat to form a continuous corrosion-resistant coating and properties of smoothness and gloss imply a continuous cured coating wherein the second coating covers the entire first coating. Additionally, an entire covering of the first by the second would have been an obvious modification to form “a (singular) corrosion resistant coating” with the recited properties to protect the substrate from corrosion.
US’202 recites a “marker” in the first coating (primer), which is a pigment or dye (Claims 7-8). The claims of US’202 do not require a pigment or dye. US’202 fails to recite that the second coating is free of dye or pigment. A modification of the claimed invention(s) to omit a pigment or dye where none is required in the reference claim would have been obvious in order to omit a function of a pigment or dye, including changing a color of the coating. MPEP 2144.04. I,II.A.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,064,789. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a method of coating a substrate, comprising: providing a substrate (including a metal one, present Claim 8); providing a first powder composition with flow of no more than about 40 mm; providing a second powder composition with flow of at least about 40 mm (also present Claim 3); and heating the first powder coating composition and second powder coating composition in a single step to form a cured coating, wherein the cured coating comprises a surface smoothness of at least 4 on the PCI scale (Claim 12), and edge coverage equal to at least 2% of face coverage (US’789, Claim 6). Claim 1 expressly recites that the second coating covers the entire first coating, and Claims 1,12, and 13 require gloss and smoothness properties of a single cured coating comprised of the first and second coating. The claims of US’789 fail to expressly recite a continuous coating; however, the relationship between the first and second coating and the properties of a single cured coating would have suggested a continuous coating. Claim 1 also expressly recite one or more pigments in the second composition to provide a large permanent color change. US’789 fails to recite that the second coating is free of dye or pigment. A modification of the claimed invention(s) to omit a pigment or dye to omit its function of changing a color of the coating would have been obvious. (e.g. according to personal taste or aesthetic appealing to the inventor or a market, as a trade color, etc.). MPEP 2144.04. I,II.A.
Dependent claims recite limitations of present dependent claims.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,291,649. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a method of coating a substrate, comprising: providing a substrate (including a metal one, present Claim 8); providing a first powder composition with flow of no more than about 40 mm; providing a second powder composition with flow of at least about 40 mm; and heating the first powder coating composition and second powder coating composition in a single step to form a cured coating, wherein the cured coating comprises a surface smoothness of at least 4 on the PCI scale (corresponding to 20-degree gloss of at least 50%: compare present Claim 4 and US’649, Claim 7), and edge coverage equal to at least 2% of face coverage (US’649, Claim 6). ). Claim 1 expressly recites that the second coating covers the entire first coating, and Claims 6-8 require edge coverage, gloss, and smoothness properties of a single cured coating comprised of the first and second coating. Thus, although the word “continuous” is not used, the claims imply a continuous coating.
In addition, the claims of US’649 do not require a pigment or dye. US’649 fails to recite that the second coating is free of dye or pigment. A modification of the claimed invention(s) to omit a pigment or dye where none is required in the reference claim would have been obvious in order to omit a function of a pigment or dye, including changing a color of the coating, according to personal taste or aesthetic appealing to the inventor or a market, as a trade color, etc. MPEP 2144.04. I,II.A.
Claims 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,925,957. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite an article, including a metal substrate and cured coating formed by an identical or obviously similar method, including the PCI and edge coverage properties. Clam 1 requires a continuous cured coating wherein the second powder coating covers the entire first powder coating.
The claims of US’957 do not require a pigment or dye. US’957 fails to recite that the second coating is free of dye or pigment. A modification of the claimed invention(s) to omit a pigment or dye where none is required in the reference claim would have been obvious in order to omit a function of a pigment or dye, including changing a color of the coating, according to personal taste or aesthetic appealing to the inventor or a market, as a trade color, etc. MPEP 2144.04. I,II.A.
Response to Arguments
Applicant’s amendment to the claims, filed 11 November 2025, with respect to the rejections of Claims 1-20 under 35 USC 103 have been fully considered and are persuasive. The rejections of Claims 1-20 under 35 USC 103 have been withdrawn.
Applicant's arguments, filed 11 November 2025, with respect to the double patenting rejections have been fully considered but they are not persuasive.
In response to Applicant’s argument that amendments to the claims render the double patenting rejections of Claims 1-20 moot (Remarks, p. 6), the argument is not persuasive, because the claim amendment adds only obvious modifications which would result in unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees.
The public policy behind this doctrine is that: The public should . . . be able to act on the assumption that upon the expiration of the patent it will be free to use not only the invention claimed in the patent but also modifications or variants which would have been obvious to those of ordinary skill in the art at the time the invention was made, taking into account the skill in the art and prior art other than the invention claimed in the issued patent. In re Zickendraht, 319 F.2d 225, 232, 138 USPQ 22, 27 (CCPA 1963) (Rich, J., concurring).
MPEP 804
Conclusion
No claim is allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/ Primary Examiner, Art Unit 1712