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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed July 21, 2025, with respect to the rejection(s) under 35 U.S.C. 102(a)(1) in view of Yamanaka (cited in the previous Office Action) have been fully considered and are persuasive. Applicant has amended the claims to change the scope of the claims outside the scope of the previous prior art, specifically, reciting wherein the claimed PTFE has a standard specific gravity of 2.175 or less. While Yamanaka does not disclose a standard specific gravity for the composition, Yamanaka does teach that the polytetrafluoroethylene is a low molecular weight polytetrafluoroethylene and exhibits a molecular weight of less than 600,000 g/mol (see [0002] of Yamanaka). Applicant provided evidence within the Remarks filed July 21, 2025 that shows standard specific gravity is calculated from the number-average molecular weight with the formula:
S
.
S
.
G
.
=
-
0.0579
log
(
M
n
)
+
2.6113
Thus, the upper limit for a molecular weight taught by Yamanaka yields a standard specific gravity of 2.276, which is outside of the claimed range. As the values of molecular weight and standard specific gravity are directly related, as demonstrated by Applicant, the structure of the PTFE taught by Yamanaka does not meet or fall within the limitation recited for the claimed polytetrafluoroethylene. Accordingly, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Yamanaka et al. (US20160289361, cited in the previous Office Action).
Applicant’s amendments and arguments, filed July 21, 2025, with respect to the rejection(s) under 35 U.S.C. 112 for failing to recite any structural or compositional features necessary to achieve the claimed properties have been fully considered and are persuasive. As noted in the Interview Summary Record mailed July 8, 2025, the Examiner indicated that a recitation of standard specific gravity would overcome this rejection as it recites an essential element or feature that would be necessary to achieve the claimed properties as the standard specific gravity and molecular weight are directly related as demonstrated within the Remarks filed July 21, 2025. The Examiner notes that the standard specific gravity recited within the claims is construed to be measured in the manner disclosed in the instant specification para. [0045] and to only correspond to the claimed polytetrafluoroethylene exclusive of additive materials.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka et al. (US 20160289361, hereinafter referred to as “Yamanaka”).
As to Claim 5: Yamanaka teaches a polytetrafluoroethylene (PTFE) fine powder (Abstract) which may have a breaking strength of 28 N or higher ([0022]) and a standard specific gravity of 2.155 or less (Abstract), which are within the claimed ranges. Yamanaka teaches that the content of fluorosurfactant is preferably 0.0001 to 10 mass% (wherein 0.0001 mass% = 1 ppm) based on the aqueous medium ([0092]), which overlaps with the claimed range. In the case where claimed ranges “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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Yamanaka suggests, that the overlapping portion is a useable range for an amount of fluorosurfactant/fluorine-containing surfactant to synthesize a polytetrafluoroethylene having, inter alia, high breaking strength ([0019] and [0022]).
Yamanaka does not measure or teach a value 0.1% mass loss temperature.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. 0.1 mass loss temperature, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 14: Yamanaka teaches the polytetrafluoroethylene of claim 5 (supra).
Yamanaka further teaches that the PTFE may exhibit a stress-relaxation time of 100 seconds or longer ([0072]), which is within the claimed range.
As to Claim 15: Yamanaka teaches the polytetrafluoroethylene of claim 5 (supra).
Yamanaka further teaches that the extrusion pressure may be 20.0 MPa or lower ([0020]), which is within the claimed range.
As to Claim 16: Yamanaka teaches the polytetrafluoroethylene of claim 5 (supra).
Yamanaka further teaches that the polytetrafluoroethylene is capable of providing a stretched body ([0034]) formed with a sintering step ([0135]). The limitation “…obtained by molding the polytetrafluoroethylene and heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours” is construed as a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Yamanaka teaches a polytetrafluoroethylene sheet capable of being sintered, and there is no evidence that the heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours would materially affect the structure of the final product.
Yamanaka is silent towards the lightness of the polytetrafluoroethylene.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. lightness, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 17: Yamanaka teaches the polytetrafluoroethylene of claim 5 (supra).
Yamanaka further teaches that the polytetrafluoroethylene is capable of providing a stretched body ([0034]) formed with a sintering step ([0135]). The limitation “…obtained by molding the polytetrafluoroethylene and heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours” is construed as a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Yamanaka teaches a polytetrafluoroethylene sheet capable of being sintered, and there is no evidence that the heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours would materially affect the structure of the final product.
Yamanaka is silent towards the thermal shrinkage rate of the polytetrafluoroethylene.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. thermal shrinkage rate, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 18: Yamanaka teaches the polytetrafluoroethylene of claim 5 (supra).
Yamanaka further teaches that the polytetrafluoroethylene is capable of providing a stretched body ([0034]) formed with a sintering step ([0135]). The limitation “…obtained by molding the polytetrafluoroethylene and heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours” is construed as a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Yamanaka teaches a polytetrafluoroethylene sheet capable of being sintered, and there is no evidence that the heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours would materially affect the structure of the final product.
Yamanaka is silent towards the contact angle of the polytetrafluoroethylene.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. contact angle, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 19: Yamanaka teaches the polytetrafluoroethylene of claim 5 (supra).
Yamanaka further teaches that the polytetrafluoroethylene may be a powder (Abstract).
Claims 6 and 21-26 are rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka et al. (US 20160289361, hereinafter referred to as “Yamanaka”).
As to Claim 6: Yamanaka teaches a polytetrafluoroethylene fine powder (Abstract) which may have a breaking strength of 28 N or higher ([0022]) and a standard specific gravity of 2.155 or less (Abstract), which are within the claimed ranges. Yamanaka teaches that the content of fluorosurfactant is preferably 0.0001 to 10 mass% (wherein 0.0001 mass% = 1 ppm) based on the aqueous medium ([0092]), which overlaps with the claimed range. In the case where claimed ranges “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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Yamanaka suggests, that the overlapping portion is a useable range for an amount of fluorosurfactant/fluorine-containing surfactant to synthesize a polytetrafluoroethylene having, inter alia, high breaking strength ([0019] and [0022]).
Yamanaka does not measure or teach a value 0.1% mass loss temperature.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. 0.1 mass loss temperature, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 21: Yamanaka teaches the polytetrafluoroethylene of claim 6 (supra).
Yamanaka further teaches that the PTFE may exhibit a stress-relaxation time of 100 seconds or longer ([0072]), which is within the claimed range.
As to Claim 22: Yamanaka teaches the polytetrafluoroethylene of claim 6 (supra).
Yamanaka further teaches that the extrusion pressure may be 20.0 MPa or lower ([0020]), which is within the claimed range.
As to Claim 23: Yamanaka teaches the polytetrafluoroethylene of claim 6 (supra).
Yamanaka further teaches that the polytetrafluoroethylene is capable of providing a stretched body ([0034]) formed with a sintering step ([0135]). The limitation “…obtained by molding the polytetrafluoroethylene and heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours” is construed as a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Yamanaka teaches a polytetrafluoroethylene sheet capable of being sintered, and there is no evidence that the heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours would materially affect the structure of the final product.
Yamanaka is silent towards the lightness of the polytetrafluoroethylene.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. lightness, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 24: Yamanaka teaches the polytetrafluoroethylene of claim 5 (supra).
Yamanaka further teaches that the polytetrafluoroethylene is capable of providing a stretched body ([0034]) formed with a sintering step ([0135]). The limitation “…obtained by molding the polytetrafluoroethylene and heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours” is construed as a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Yamanaka teaches a polytetrafluoroethylene sheet capable of being sintered, and there is no evidence that the heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours would materially affect the structure of the final product.
Yamanaka is silent towards the thermal shrinkage rate of the polytetrafluoroethylene.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. thermal shrinkage rate, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 25: Yamanaka teaches the polytetrafluoroethylene of claim 6 (supra).
Yamanaka further teaches that the polytetrafluoroethylene is capable of providing a stretched body ([0034]) formed with a sintering step ([0135]). The limitation “…obtained by molding the polytetrafluoroethylene and heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours” is construed as a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP § 2113. Yamanaka teaches a polytetrafluoroethylene sheet capable of being sintered, and there is no evidence that the heat treating at 100 ˚C for 2 hours, at 200 ˚C for 4 hours, and at 370 ˚C for 5 hours would materially affect the structure of the final product.
Yamanaka is silent towards the contact angle of the polytetrafluoroethylene.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. contact angle, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 26: Yamanaka teaches the polytetrafluoroethylene of claim 6 (supra).
Yamanaka further teaches that the polytetrafluoroethylene may be a powder (Abstract).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka et al. (US 20160289361, hereinafter referred to as “Yamanaka”).
As to Claim 20: Yamanaka teaches a polytetrafluoroethylene (PTFE) fine powder (Abstract) which may have a breaking strength of 28 N or higher ([0022]) and a standard specific gravity of 2.155 or less (Abstract), which are within the claimed ranges. Yamanaka teaches that the content of fluorosurfactant is preferably 0.0001 to 10 mass% (wherein 0.0001 mass% = 1 ppm) based on the aqueous medium ([0092]), which overlaps with the claimed range. In the case where claimed ranges “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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Yamanaka suggests, that the overlapping portion is a useable range for an amount of fluorosurfactant/fluorine-containing surfactant to synthesize a polytetrafluoroethylene having, inter alia, high breaking strength ([0019] and [0022]).
Yamanaka does not measure or teach a value 0.1% mass loss temperature.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. 0.1 mass loss temperature, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Yamanaka teaches that the polytetrafluoroethylene may form a stretched body (Abstract).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka et al. (US 20160289361, hereinafter referred to as “Yamanaka”).
As to Claim 27: Yamanaka teaches a polytetrafluoroethylene (PTFE) fine powder (Abstract) which may have a breaking strength of 28 N or higher ([0022]) and a standard specific gravity of 2.155 or less (Abstract), which are within the claimed ranges. Yamanaka teaches that the content of fluorosurfactant is preferably 0.0001 to 10 mass% (wherein 0.0001 mass% = 1 ppm) based on the aqueous medium ([0092]), which overlaps with the claimed range. In the case where claimed ranges “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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Yamanaka suggests, that the overlapping portion is a useable range for an amount of fluorosurfactant/fluorine-containing surfactant to synthesize a polytetrafluoroethylene having, inter alia, high breaking strength ([0019] and [0022]).
Yamanaka does not measure or teach a value 0.1% mass loss temperature.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. 0.1 mass loss temperature, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Yamanaka teaches that the polytetrafluoroethylene may form a stretched body (Abstract).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767