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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/18/2025 has been entered. Claim 1 is amended; and claims 15-16 are cancelled. Accordingly, claims 1-14 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner acknowledges applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection as set forth in paragraphs 5-8, of office action mailed 6/18/2025. However, the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1): “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Double Patenting
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, 8-13, 21-25, and 27-29 of copending Application No. 17/628,807. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to a method of producing fluoropolymer comprising polymerizing a monomer to produce polytertrafluoroethylene. The polymerization of monomer is in an aqueous medium in the presence of hydrocarbon surfactant such as carboxylic acid type and in substantial absence of fluorine-containing surfactant.
Claims in copending application are silent with respect to modifying monomer, amount of hydrocarbon surfactant, polymerization temperature, and properties of polytetrafluoroethylene.
However, Applicant attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of copending application wherein it teaches that amount of hydrocarbon surfactant at the initiation of polymerization is more than 60 ppm based on aqueous medium (paragraph 0065). In the preparation of TFE polymer various known modifying monomers may be added in amounts of 1.0% by mass or less (paragraph 0392). Examples of modifying monomers include hexafluoropropylene (paragraph 0396). The modifying monomer has a functional group capable of reacting by radical polymerization and a hydrophilic group (paragraph 0421). Modifying monomer is preferably represented by
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(paragraph 0433). The polymerization temperature is from 100C to 1500C (paragraph 0074). The average polymer particle size is from 100 to 400 nm (paragraph 0349), tetrafluoroethylene polymer may be non-melt processible (paragraph 0381), polymer may have core-shell structure (paragraph 0384). In the PTFE, the aspect ratio is 1.40 or less (paragraph 0499). Therefore, in light of the teachings in general disclosure of copending application it would have been obvious to one skilled in art to include hydrocarbon surfactant and modifying monomer in presently claimed amounts in polymerization process conducted at a temperature of 100C to 1500C to obtain a modified polytetrafluoroethylene with presently claimed properties including non-melt processible, average particle size, aspect ratio, and core-shell structure. Additionally, given that the process of present claims is obvious based on the teachings in copending application one skilled in art would have a reasonable basis to expect the number of PTFE particles to be 0.6 * 1013 particles/mL or more, absent evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-8 and 10-12 of copending Application No. 17/424,715. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to a method of producing fluoropolymer comprising polymerizing a monomer to produce polytertrafluoroethylene. The polymerization of monomer is in an aqueous medium in the presence of hydrocarbon surfactant that is a carboxylic acid-type hydrocarbon surfactant, and in substantial absence of fluorine-containing surfactant.
Claims in copending application are silent with respect to modifying monomer, amount of hydrocarbon surfactant, polymerization temperature, and properties of polytetrafluoroethylene.
However, Applicant attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of copending application wherein it teaches that amount of hydrocarbon surfactant at the initiation of polymerization is more than 50 ppm based on aqueous medium and is added when the concentration of PTFE formed in the aqueous medium is less than 0.6% by mass (paragraph 0046). Modified PTFE contains 99% by mass or more TFE and 1.0% by mass or less of modifying monomer (paragraph 0315) and is non-molten processible (paragraph 0313). Examples of modifying monomers include hexafluoropropylene (paragraph 0343). The presence of modifying monomer makes it possible to obtain an aqueous dispersion in which PTFE particles have a small average primary particle size and a small aspect ratio (paragraph 0346). The modifying monomer has a functional group capable of reacting by radical polymerization and a hydrophilic group (paragraph 0352). Modifying monomer is preferably represented by
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(paragraph 0355). The polymerization temperature is from 50C to 1500C (paragraph 0045). The average polymer particle size is 100 to 500 nm (paragraph 0454). Therefore, in light of the teachings in general disclosure of copending application it would have been obvious to one skilled in art to include hydrocarbon surfactant and modifying monomer in presently claimed amounts in polymerization process conducted at a temperature of 100C to 1500C to obtain a modified polytetrafluoroethylene with presently claimed properties including non-melt processible, aspect ratio, and average particle size. Additionally, given that the process of present claims is obvious based on the teachings in copending application one skilled in art would have a reasonable basis to expect the number of PTFE particles to be 0.6 * 1013 particles/mL or more, have an aspect ratio of less than 1.45 or less, and a core-shell structure, absent evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,952,441 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to a method of producing PTFE comprising polymerizing TFE. The polymerization of monomer is in an aqueous medium in the presence of hydrocarbon surfactant in similar amounts, have similar particle size, similar number of polymer particles and polymerization is conducted at the same temperature.
Claims in US Patent are silent with respect to modifying monomer, and properties of polytetrafluoroethylene.
However, Applicant attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of copending application wherein it teaches that modified PTFE contains 99% by mass or more TFE and 1.0% by mass or less of modifying monomer (col. 15, lines 27-31). Examples of modifying monomers include hexafluoropropylene (col. 18, lines 19-20). The modifying monomer has a functional group capable of reacting by radical polymerization and a hydrophilic group (col. 18, lines 19-24). Modifying monomer is represented by
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(col. 20, lines 5-7). PTFE may have a core-shell structure (col. 31, lines 29-33). The aspect ratio of primary particles is 1.45 or less (col. 32, lines 30-31). The PTFE is usually non-molten processible (col. 33, lines 61-62). Therefore, in light of the teachings in general disclosure of copending application it would have been obvious to one skilled in art to include modifying monomer in presently claimed amounts to obtain a modified polytetrafluoroethylene with presently claimed properties including non-melt processible, an aspect ratio of less than 1.45 and a core-shell structure.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 8-11, 14-15, 17, 19 and 24-27 of copending Application No. 16/978,395. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to a method of producing fluoropolymer comprising polymerizing a fluoromonomer. The polymerization of monomer is in an aqueous medium in the presence of hydrocarbon surfactant in similar amounts, similar number of polymer particles and polymerization is conducted at the same temperature.
Claims in copending application are silent with respect to modifying monomer, primary particle size, and properties of PTFE.
However, Applicant attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of copending application wherein it teaches that modified PTFE contains 0.00001 to 1.0% by mass of modifying monomer (paragraph 0453). Examples of modifying monomers include hexafluoropropylene (paragraph 0461). The modifying monomer has a functional group capable of reacting by radical polymerization and a hydrophilic group. Modifying monomer is preferably represented by
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(paragraph 0462). PTFE may have a core-shell structure (paragraph 0438). The average primary particle size is 100 to 400 nm (paragraph 0668). The use of modifying monomer allows for obtaining an aqueous dispersion having a smaller average primary particle size and aspect ratio can be made smaller (paragraph 0462). The production method can provide non-melt processible TFE polymers (paragraph 0435). Therefore, in light of the teachings in general disclosure of copending application it would have been obvious to one skilled in art to include modifying monomer in presently claimed amounts to obtain modified PTFE with presently claimed properties including non-melt processible, core-shell structure, aspect ratio, and average primary particle size, absent evidence to the contrary. Additionally, given that the process of present claims is obvious based on the teachings in copending application one skilled in art would have a reasonable basis to expect the number of PTFE particles to be 0.6 * 1013 particles/mL or more, and an aspect ratio of less than 1.45, absent evidence to the contrary.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-8 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Toyoda et al (US 2016/0108225 A1) in view of Leffew et al (US 2010/0160490 A1).
Regarding claims 1 and 8, Toyoda et al disclose a method for producing an aqueous fluorinated polymer dispersion, which comprises subjecting a monomer comprising at least one fluorinated monomer to emulsion polymerization in the presence of a hydrocarbon anionic emulsifier (i.e., reads on hydrocarbon surfactant at the initiation of polymerization in present claim 1) to produce an aqueous dispersion of a fluorinated polymer (abstract). See example 1, wherein the reaction mixture includes TFE, sodium polyoxyethylene alkyl ether sulfate (i.e., reads on the hydrocarbon surfactant in present claim 1), and polymerization is conducted in aqueous medium (paragraphs 0095-0096) which reads on polymerizing tetrafluoroethylene in an aqueous medium in the presence of hydrocarbon surfactant in present claim 1. The amount of hydrocarbon anionic surfactant is preferably from 0.001 to 5 parts by mass per 100 parts by mass of the aqueous medium (paragraph 0036) which is equivalent to 10 to 50,000 ppm and overlaps with the amount of hydrocarbon surfactant at the time of initiation in present claim 1. The fluorinated elastomer may be a TFE/HFP copolymer (paragraph 0065) and HFP reads on the modifying monomer in present claims 1 and 8. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Toyoda et al fail to disclose a copolymer comprising modifying monomer in amounts of 0.50% mass or less and polytetrafluoroethylene is non-melt processible; and aspect ratio.
However, regarding copolymer comprising modifying monomer in amounts of 0.50% mass or less and polytetrafluoroethylene is non melt-processible, Leffew et al in the same field of endeavor teach that PTFE and modified PTFE typically have a melt creep viscosity of at least about 1*108 Pa.s and with such high melt viscosity, the polymer does not flow significantly in the molten state and therefore is not a melt-processible polymer. Modified PTFE refers to copolymers of TFE with such small concentrations of comonomer that the melting point of the resulting polymer is not substantially reduced below that of PTFE. The concentration of such comonomer is preferably less than 0.5 wt% (i.e., reads on the amount of modifying monomer in present claim 1). The modified PTFE contains a small amount of comonomer modifier which improves film forming capability during baking, such as HFP (paragraph 0021). Therefore, in light of the teachings in Leffew et al in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application to include a modifying monomer in amounts of less than 0.5% by weight for obtaining a non-melt processible fluoropolymer, with above mentioned advantages.
Regarding aspect ratio, Toyoda et al teach that the aqueous fluorinated polymer dispersion contains particles of the fluorinated polymer (paragraph 0058) and has a solids content of from 10 to 45% by mass (paragraph 0060). Given that process of preparing the modified PTFE is obvious based on the disclosure in Toyoda et al combined with the teachings in Leffew et al, and the aqueous dispersion has an overlapping solids content (see paragraph 0961 of specification of present application), one skilled in art prior to the filing of present application would have a reasonable basis to expect the primary particles to have an aspect ratio of 1.45 or less, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 2, see example 1, in Toyoda et al, wherein the comonomer is added before initiation of polymerization (paragraphs 0095-0096).
Regarding claim 3, see example 1, in Toyoda et al, wherein the comonomer is added before initiation of polymerization (paragraphs 0095-0096). Leffow et al teach that comonomer such as HFP is added in amounts of preferably less than 0.5 wt% (paragraph 0021).
Regarding claims 5 and 6, see example 8, of Leffew, wherein the hydrocarbon surfactant SOS is added continuously (paragraph 0137). Toyoda teach that the amount of hydrocarbon anionic surfactant is preferably from 0.001 to 5 parts by mass per 100 parts by mass of the aqueous medium (paragraph 0036).
Regarding claim 7, see example 1, of Toyoda et al, wherein the polymerization temperature was maintained at 250C (paragraph 0097) which reads on the polymerization temperature in present claim 7.
Regarding claim 11, Toyoda et al teach that the hydrocarbon anionic emulsifier may be polyoxyethylene lauryl ether carboxylate (paragraph 0028) which reads on carboxylic acid type hydrocarbon surfactant in present claim 11.
Regarding claim 12, see example 1, of Toyoda et al, wherein the polymerization mixture does not include a fluorine-containing surfactant (paragraphs 0095-0097)
Claims 4, 9-10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Toyoda et al (US 2016/0108225 A1) in view of Leffew et al (US 2010/0160490 A1) and Yamanaka et al (US 2010/0204345 A1).
The discussion with respect to Toyoda et al and Leffew et al in paragraph 13 above is incorporated here by reference.
Toyoda et al and Leffew et al are silent with respect to modifying monomer having a functional group capable of reacting by radical polymerization and a hydrophilic group; average primary particle size, and number of polytetrafluoroethylene particles.
However, Yamanaka et al in the same field of endeavor teach an aqueous dispersion of low molecular weight PTFE (abstract). The emulsion polymerization is preferably conducted in the presence of a reactive compound having a functional group capable of reaction in radical polymerization and a hydrophilic group (paragraph 0073). Because the reactive compound has a functional group that is capable of reaction in radical polymerization, when used in emulsion polymerization it reacts with fluoromonomer at early stage of the polymerization reaction thereby forming highly stable particles which have hydrophilic groups from the reactive compound. Carrying emulsion polymerization in the presence of reactive compound results in increased number of emulsified particles (paragraph 0082). The reactive compound is used in amounts of from 100 ppb to 200 ppm (i.e., 0.00001% to 0.02%) (paragraph 0099). Examples of reactive compounds include
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wherein X1 is F, n3 is 1 to 10 and Y1 is -COOM or -SO3M, M being H, NH-4 or alkali metal (paragraph 0086 and 0091) which read on the modifying monomers in present claims 9 and 10. The average primary particle size in examples is less than 500 nm (Table 1) which reads on the average primary particle size in present claim 14. Therefore, in light of the teachings in Yamanaka et al, it would have been obvious to one skilled in art prior to the filing of present application to include the reactive compound of, Yamanaka et al, in the polymerization process, of Toyoda et al in view of Leffew et al, in overlapping amounts, for above mentioned advantages. Additionally, given that Yamanaka et al teach that inclusion of functional monomer in small amounts as in present claims, results in increased number of particles, one skilled in art prior to the filing of present application would have a reasonable basis to expect the polymerization, of TFE in combination with small amounts of functional monomer to yield number of PTFE particles in amounts of 0.6 * 1013 particles/mL or more, absent evidence to the contrary.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Toyoda et al (US 2016/0108225 A1) in view of Leffew et al (US 2010/0160490 A1) and Dadalas et al (US 2016/0347966 A1).
The discussion with respect to Toyoda et al and Leffew et al in paragraph 13 above is incorporated here by reference.
Toyoda et al and Leffew et al are silent with respect to PTFE having a core-shell structure.
However, Dadalas et al in the same field of endeavor teach advantage of tetrafluorethylene polymers of the core-shell type is that it allows the formation of polymers with a more controlled and narrow particle size distribution. It also allows for the controlled preparation of polymer particles having a particle size greater than 170 nm (paragraph 0042) to about 275 nm (paragraph 0046). Therefore, in light of the teachings in Dadalas et al in the same filed of endeavor, it would have been obvious to one skilled in art prior to the filing of present application to prepare modified polytetrafluoroethylene, of Toyoda et al in view of Leffew et al, having the core-shell structure, for above mentioned advantages.
Response to Arguments
It is noted that applicant arguments relating to obviousness-type double patenting rejection are addressed in office action mailed 4/15/2024 and incorporated here by reference.
Applicant's arguments and Declaration under 37 CFR 1.132, filed 11/18/2026, have been fully considered but they are not persuasive. Specifically, general thrust of applicant’s argument is that production method of claim 1 is capable of producing a polytetrafluoroethylene containing a small amount of a modifying monomer unit and having a small average primary particle size (see inventive examples A and B, and (comparative examples 1 and C) when hydrocarbon surfactant is used in presently claimed amounts of more than 60 ppm to 5000 ppm.
In response, the showing of unexpected results is for a perfluorotetraethylene comprising a species of modifying monomer and species of hydrocarbon surfactant in specific amounts, while the claims are drawn to polytetrafluoroethylene comprising any modifying monomers in amounts of 0.50% by mass or less, and hydrocarbon surfactant in amounts of more than 60 ppm to 5000 ppm. Hence, showing of unexpected results is not commensurate with scope of present claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764