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 .
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.
Interview Summary
A voicemail was left for Nicole Hackett, Applicant’s representative, on August 27, 2026 to request a terminal disclaimer be filed to obviate the below double patenting rejection and allow the case to pass to issue but no response has been received as of the posting of this action on September 1, 2026.
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 8, 13-14, 15-20 of U.S. Patent No. 12,215,205. Although the claims at issue are not identical, they are not patentably distinct from each other because the recite more specific version of the claimed invention for the following reasons.
Claim 15 of 12,215,205 recites a coated elastomeric article that otherwise has the limitations of instant Claim 1 but in the form of a product while the instant claims are to a method. The recited elastomeric article with a first latex is provided which reads over the first step of instant Claim 1 but the coating of Claim 15 of 12,215,205 is simply recited as a coating and not a process of coating.
However, as the coating of Claim 15 of 12,215,205 must have been placed by some method, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Claim 15 of 12,215,205 such that the coated formed from a coating composition of Claim 15 of 12,215,205 was done using any kind of coating process. This read the coating process step of instant Claim 1.
Instant Claim 2-5 and 8-10 are read over by the coating composition of Claim 15 of 12,215,205 and Claims 16-20 of 12,215,205.
With respect to instant Claims 6-7, Claim 15 of 12,215,205 recites a generic source of sulfur and a generic metal oxide but does not recite the specific species of instant Claims 6-7.
Claims 8 and 13-14 of 12,215,205 recite a coating composition with the same composition as that of Claim 15 of 12,215,205 and also further limit the metal oxide and sulfur source to specific species in Claims 13-14 of 12,215,205.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Claim 15 of 12,215,205 using the sulfur sources and metal oxide species of Claims 8/13-14 of 12,215,205 because 12,215,205 recites these species for the generic sulfur and metal oxide of the same composition of Claim 15 of 12,215,205. This reads over instant Claims 6-7.
Allowable Subject Matter
Claims 1-10 would be allowable upon resolution of the non-statutory double patenting rejections of record.
These claims all require an aldehyde-aniline condensate or specific version thereof.
The closest prior art is Chen (U.S. 2012/0021155) which teaches the components of the claims but for the aldehyde-aniline condensate. Chen does not teach or suggest the use of an aniline-aldehyde in any way such as an accelerator. (See ¶[0012])
The closest prior art that teaches such a condensate for rubber materials is Baur (U.S. 4,396,756) which teaches condensation products of aniline and aldehydes which are useful as tackifiers for rubber articles. Baur does not teach or suggest gloves such as those of Chen or the instant application and the exemplified amounts are 5 parts per hundred rubber of the aniline-aldehyde condensate which is in far excess to that of the instant invention. (Column 4 line 10-15) This suggests the rubber compound compositions of Baur and Chen would be tacky, which is not reasonably suggested to be a property of any of the end uses or compositions of Chen. Further Baur does not teach or suggest the use of the aniline-aldehydes in latex formulations which is the main thrust of the disclosure of Chen and also the instant application. Williams (U.S. 4,258,105) further suggests in Table 1 the tackifying effect of butraldehyde-aniline as taught by Baur. Baur also suggest the aniline-aldehyde compositions are useful as anti-aging agents even where a tackifying effect is not required at all, however, it is entirely unclear how to achieve this effect without adding some amount of tackifying effect.
Cadwell (U.S. 1,417,970) teaches rubber compositions free of bad odor and poisonous qualities with an improvement in tensile strength (Column 2 lines 55-70; page 3 line 110-115). Cadwell does not teach other vulcanization accelerators used such as xanthogen polysulfides and does not teach or suggest latexes such as those preferred by Chen.
Further, Stevenson (U.S. 4,695,609) teaches xanthogen polysulfide for use in latex glove manufacture (skin contact areas) (Column 3 lines 25-40) which have an improvement to the environment, (Column 8 lines 10-15), but also eliminate the need for amine type secondary accelerators (Column 4 lines 50-55). This suggests the use of an amine-aldehyde in Chen is not required or useful as Chen already uses xanthogen polysulfides as accelerators.
Anna, Chemical Protective Clothing pg 15, teaches amine aldehydes are considered allergens. Aniline is a primary amine. This would suggest the use of such a condensate would add a potential allergen to the compositions which Chen, Stevenson and the instant application appear to be strongly against considering their titles and each of the references / application being drawn to skin contact.
Based on the above evidence, while aniline-aldehydes are known as vulcanization accelerators or useful as tackifying agents as taught by Cadwell and Baur, there is no reasonable expectation of success achieving the their taught benefits as they are not taught or suggested to be used in the primarily latex driven processing of Chen. Further, it is not reasonable to conclude that the tackiness of Baur would be a desirable characteristic to have in the rubber composition of Chen and there is no way to know how the alternative anti-aging effect would happen, if at all, considering the differences with Chen.
Finally, Anna suggests the use of aniline-aldehydes introduces a potential allergen to the composition of Chen which does not desire allergens and Stevenson suggests amines, of which aniline-aldehyde condensates are species thereof, are unnecessary in combination with a xanthogen polysulfide.
In regards to non-skin contact art as a basis, Sisco (U.S. 3,626,052) teaches rubber formulations for meteorological balloons which comprises heptaldehyde-aniline reaction products and zinc dibenzyl dithiocarbamate. (Example I) Sisco does not appear to be analogous to the instant application and does not teach or suggest alternatives or reason to use heptaldehyde-aniline in the formulations. Considering the teachings of Stevenson, this use of xanthogen polysulfide for some reason in Sisco would suggest the removal of the heptaldehyde-aniline as it would be considered unnecessary.
The above evidence suggests to one of ordinary skill in the art that aniline-aldehyde, while known in the art as a vulcanization accelerator, in practicing the invention of Chen is only arrived at via improper hindsight and/or without a reasonable expectation of success in the benefit of specifically an aniline-aldehyde accelerator taught by the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached on 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/Primary Examiner, Art Unit 1766
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