DETAILED ACTION
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 without traverse of Group I, claims 37-42, 48-50 in the reply filed on January 12, 2026, is acknowledged. Claims 43-47, and 51-53, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 37-42, and 48-50, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U. S. Patent Application Publication No. 2021/0048745 (hereinafter referred to as Meyers).
Meyers, in [0006], [0077], [0163], discloses a tin composition that comprises a tin cation and has the claimed formula [(RSn)12O14(OH)6]2+, wherein R is a hydrocarbon of at least 3-30 carbon atoms and wherein R can be R1, and R2, such that R1 and R2 are not the same and can be isopropyl and t-butyl groups respectively, i.e., the composition includes polyalkyl groups bonded to tin, and the composition can includes mixtures of different monoalkyltin oxo hydroxo hydrolysates mixed to form the composition ([0147]), and in [0057], [0067], Meyers discloses that the metal oxo/hydroxo cations includes polyatomic cation to form the tin coating composition. Meyers, in figure 15, and figure 33, discloses the NMR experimental data used to calculate the different hydrocarbon groups in the alkyl tin oxide hydroxide component. Meyers, in figure 16, and in [0134], discloses the use of electrospray ionization mass spectroscopy to characterize the solutions of the hydrolysate and as illustrated in figure 16 discloses a maximum point (peak top) (claimed single top distribution shape), such that the total value content of the tin cation (claimed P3AB) is not less than 80% (see [0132], [0134]), and as disclosed in [0132]-[0134], discloses the presence of tin cations wherein one of the tin cation has a stronger signal (greater content) than the other tin cation in the hydrolysate (claims 37-39). Meyers, in [0058], [0082], discloses that the tin composition can include mixed metal ions with distinct alkyl ligands wherein the alkyl ligands can include cyclic hydrocarbon groups, tertiary hydrocarbon groups such that the different R groups in the tin-oxo-hydroxo hydrolysate have different number of carbon atoms (t-butyl, isopropyl) (claims 48-50), and in [0133], Meyers, discloses the content of the dodecameric cluster that is predominantly that of one particular alkyl tin oxo hydroxo hydrolysate such as t-butyl i.e., the composition can have the claimed molecular weight distribution of approximately 1, Similarly, Meyers, discloses isopropyl tin oxide hydroxide prepared by method 2, see figure 24, such that the molecular weight distribution is approximately 1 (claim 40). Meyers, in [0133], discloses the two tin environments in the cationic dodecamer clusters such as the pentavalent (five coordinate tin atoms) and hexavalent (six-coordinate tin atoms) in the dodecameric tin cluster of the claimed composition that has same chemical shift values recited viz., -333.86 to -336.10pmm, and -520.33—521.48ppm and is the same k1 and k2 values respectively, and will inherently possess the claimed tin composition ratio recited in claim 41 and tin ratio recited in claim 42.
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 37-42, 48-50, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 23-29 of now allowed U. S. Application No. 18/821,070 (USPGPub. No. 20250179100). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13, 23-29 of now allowed U. S. Application No. 18/821,070 (USPGPub. No. 20250179100) discloses a tin compound and composition that has mixed organic groups (different hydrocarbons) as the R group bonded to the tin in the tin composition wherein the tin cation in the composition includes multiple tin cations (different tin cations) and discloses the same claimed peak integration values for the pentavalent tin and hexavalent tin in the tin composition, and discloses the same claimed dodecameric tin cation composition in claim 3, and in light of the specification, possess the same claimed molecular weight distribution.
Response to Arguments
Applicant’s arguments, see Amendment and Remarks, filed November 19, 2025, with respect to the rejection under 35 U.S.C. 102(a)(1) based on USPGPub No. 2017/0102612, have been fully considered and are persuasive. The 35 U.S.C. 102(a)(1) based on USPGPub No. 2017/0102612 of previous claims 21-23 (now cancelled) has been withdrawn. With respect to applicant’s argument that U.S. Patent Application Publication No. 2017/0102612 (Meyers) does not disclose the new claim 37 or the claims depending therefrom, USPGPub. No. 2017/0102612 is not longer dependent upon to disclose the limitations of pending claims 37-42, 48-50. Also, see paragraph nos. 4, and 6, above.
Conclusion
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 Daborah Chacko-Davis whose telephone number is (571) 272-1380. The examiner can normally be reached on 9:30AM-6:00PM EST Mon-Fri. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F. Huff can be reached on (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-272-8300. 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.
/DABORAH CHACKO-DAVIS/Primary Examiner, Art Unit 1737 April 10, 2026.
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