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 .
Response to Arguments
In their response dated 6/16/2026 the applicants argued following:
Identified in the office action [0085] of Achten teaches that the aqueous dispersion is filtered and dried before grinding which results in coarse grain having residual moisture content of less than 2% and grinding the precipitate occurs at a temperature of above 0oC.
In [0084] of Achten the particulates are ground at -80oC which is below the glass transition temperature of the polymer used in the examples. Therefore, the process of Achten is different from the process of instant invention.
The applicants are correct. Consequently, all prior art rejections of record are withdrawn.
And this could have been an allowance, if a phone call was made to the examiner asking about issues with the Double Patenting rejection. Instead, applicants will be receiving 2nd non-final rejection thereby unnecessarily extending prosecution of this application.
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 1-6, 8-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2-7, 13 of copending Application No. 17/997,571 (‘571) because:
Claim 1 of ‘571 discloses a process which recites following steps:
-providing an aqueous polymer particle dispersion,
-storing the dispersion until precipitate is formed,
-isolating the precipitate (meets instant concentrating or filtration)
Depleting water step meets the limitation of concentrating the polymer particles, in much broader sense, because it is open to any concentration of the particulates including those claimed by instant claim 2.
Claim 1 of ‘571 is open to any content of water in step II which is done at the same temperature as instant process and results in precipitate. Consequently, claims further encompass instant claim 8.
Claim 1 of ‘571 further states that the water content in dispersion is 0.05-5%, which further means that before concentration water content was higher than 5% meeting instant claim 4.
Claim 1 further states that the polymeric particles in the dispersion have a diameter of less than 500 nm, which meets limitations of instant claim 14.
Claim 3 of ‘571 further teaches grinding the concentrated or isolates particles
Both claims meet the limitation of instant claims 1, 5 and 6 because grinding of ‘571 is broader in scope and encompasses the grinding temperatures of the instant invention.
Claim 4 requires solids content in raw dispersion of step 1 to be in a range of 20-60% which would overlap with the instant invention before the composition is concentrated and meets instant claim 12.
Claim 5 of ‘571 recites that the precipitate is formed in negative temperature which further meets instant claim 1.
Claim 6 of ‘571 requires step II to undergo filtration or decanting which would meet the limitation of claim 2 reciting concentrating of the dispersion.
Claim 7 of ‘571 states that the grinding is done at a temperature of less than or equal to 2oC, which meets the limitation of instant claim 5.
Claim 10 of ‘571 discloses polymer having molecular weight of at least 30,000 g/mol measures via gel permeation chromatography which meets instant claim 11.
Claim 13 of ‘571 states that the particulates are polyurethane particles meeting instant claim 10, which is much broader in scope with respect to the particle size of the polyurethane. Wherein polyurethane can be thermoplastic or thermosetting and reads on instant claim 9. The claims of ‘571 are also open to any polymeric component with glass transition temperature that is not limited by co-pending claims, consequently, the requirement of instant claim 16 is also met.
Claim 15 of ‘571 discloses use of composition as an adhesive meeting instant claim 15.
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 July 8, 2026
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