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.
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.
Claim(s) 1, 18, 21-24, 41-48, and 57-59 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al (US 20190329491; hereinafter Yu).
As regarding claim 1, Yu discloses the claimed invention for an amorphous ([0063]) copolymer ([0055]) produced by polymerizing, wherein a fluorinated ring monomer ([0054]-[0055] and [0063]) and (b) a comonomer in the amount of from 0.5 mol% to 99 mol% ([0055] and [0071]).
Yu does not disclose one or more fluorinated ring monomers in the amount of 1 mol% to 99.5 mol%. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide one or more fluorinated ring monomers in the amount of 1 mol% to 99.5 mol% in order to enhance control the properties of the manufactured materials, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Where patentability is said to be based upon particular chosen mol% ranges or upon another variable recited in the claim, the applicant must show that the chosen mol% ranges are critical and unexpected results.
Also, regarding claim 1, Yu as modified disclose wherein the fluorinated ring monomer comprises one or more of the following compounds:
PNG
media_image1.png
177
374
media_image1.png
Greyscale
or
a compound having the structure below that undergoes cyclopolymerization to produce a fluorinating ring
PNG
media_image2.png
171
170
media_image2.png
Greyscale
wherein
R1 and R2 are independently F, CF3, CF2CF3, CF2H, CF2CF2H, CFHCF3, CFHCF2H; R3 and R4 are independently F, CF3, or CF2CF3, CF2H, CF2CF2H, CFHCF3, CFHCF2H; R5, R6, R7, and R8 are independently F, CF3, or CF2CF3, CF2H, CF2CF2H, CFHCF3, CFHCF2H and R6 and R7 can be contained within a 5- or 6-membered ring; and R9 is F, CF3, or CF2CF3; and
the comonomer comprises one or more compounds having the following structure:
PNG
media_image3.png
132
428
media_image3.png
Greyscale
wherein n and m are independently 1, 2, or 3, and x is 1 or 2 ([0054]-[0055] and [0063]).
Although Yu as modified does not disclose a single working example or specific embodiment in which both the fluorinated ring monomer and the fluorinated vinyl ether comonomer are copolymerized simultaneously, the reference nevertheless clearly identifies each class of monomers as suitable building blocks for preparing fluorinated copolymers. In view of these explicit teachings, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the present application, to select one monomer from the fluorinated ring monomer list and one comonomer from the fluorinated vinyl ether list and to copolymerize them as part of routine experimentation in order to obtain a fluorinated copolymer having desired performance characteristics. The skilled artisan would have recognized that fluorinated copolymers commonly exhibit properties - such as processability, mechanical strength, permeability, and chemical resistance - that can be systematically tuned by adjusting the monomer composition, and that combining known monomers from known classes is a conventional and predictable way to modify such properties.
Furthermore, routine optimization of monomer selection is well within the ordinary skill level, and the Federal Circuit has consistently held that choosing particular species from a disclosed genus, absent teaching away or unexpected results, is an obvious matter of design choice. See In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003); In re Aller, 220 F.2d 454 (CCPA 1955). Here, Yu provides no teaching that discourages or criticizes copolymerizing the disclosed monomers; to the contrary, both monomer classes are expressly characterized as suitable for forming fluorinated polymer materials. Thus, a person of ordinary skill would have been motivated to combine monomers from these lists in order to enhance control over the resulting material properties, such as gas permeability, selectivity, thermal characteristics, or mechanical stability, through conventional copolymerization techniques.
Accordingly, the absence of a specific example in Yu does not negate the obviousness of the claimed copolymer, as the selection and combination of monomers from well-defined lists represents a straightforward application of routine polymer design practices that would have predictably yielded the claimed copolymer.
As regarding claims 18 and 58, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention for wherein the comonomer is in the amount of 1 mol% to 20 mol% or 1 mol% to 10 mol % ([0071]).
As regarding claim 21, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention for wherein the copolymer is produced by solution or aqueous emulsion polymerization ([0076]).
As regarding claim 22, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention for wherein the polymerization is conducted in the presence of an initiator ([0077]).
As regarding claim 23, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention for wherein the initiator comprises a hydrocarbon peroxide, a fluorocarbon peroxide, a hydrocarbon peroxydicarbonate, an inorganic fluorocarbon initiator, or any combination thereof ([0077]).
Claim 24 is likewise rejected for reasons analogous to those set forth for claim 1 above.
As regarding claims 41 and 59, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention for wherein the comonomeric unit is in the amount of 1 mol% to 20 mol% or 1 mol% to 10 mol % ([0071]).
As regarding claim 42, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention for wherein the copolymer has a glass transition temperature of from 0oC to 300oC ([0059]).
As regarding claim 43, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention except for wherein the copolymer has a Mn of from 10 kDa to 2,000 kDa. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the copolymer has a Mn of from 10 kDa to 2,000 kDa in order to enhance control the properties of the manufactured materials, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
As regarding claim 44, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention except for wherein the copolymer has a MW of from 10,000 g/mol to 3,000,000 g/mol. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the copolymer has a MW of from 10,000 g/mol to 3,000,000 g/mol in order to enhance control over the properties of the manufactured materials, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
As regarding claim 45, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention for an article ([0033]) comprising the copolymer.
As regarding claim 46, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention for wherein the article comprises a multi-layer structured article, wherein at least one layer of the structure comprises the copolymer ([0124]).
As regarding claim 47, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention except for wherein the article comprises a film, membrane, tube, or fiber. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the article comprises a film, membrane, tube, or fiber in order to enhance control over the properties of the manufactured materials, since it was known in the art as shown in Liu et al (US 20090277837; hereinafter Liu; [0008] and [0027]).
As regarding claim 48, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention for wherein the article comprises a layer or coating of the copolymer (Liu – [0027], [0032]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the layer or coating has a thickness of less than or equal to 1 mm in order to enhance control over the properties of the manufactured materials, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
As regarding claim 57, Yu as modified discloses all of limitations as set forth above. Yu as modified discloses the claimed invention for a separation membrane comprising a feed side and a permeate side, the separation membrane having a selective layer comprising the copolymer (Liu – [0027], [0033] and [0040]).
Response to Arguments
Applicant's arguments filed 09/23/25 have been fully considered but they are not persuasive.
Applicant contends that the present invention would not have been obvious to try under In re O’Farrell, arguing that Yu merely provides a “wish list” of monomers in paragraphs [0054]-[0070] without guidance that these monomers would yield materials capable of separating gaseous components. Applicant cites In re Kubin for the proposition that hindsight should not be used when evaluating combinatorial prior art.
Applicant’s argument that prior art merely provides a “wish list” of possible monomers/comonomers and therefore does not render the claimed invention obvious is not persuasive. As explained in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009), broad disclosures or enumerated lists can nonetheless support a finding of obviousness where the prior art identifies the target materials and provides routine, predictable methodologies for obtaining them. The court in Kubin reaffirmed that, post-KSR, “obvious to try” is sufficient when there are a finite number of identified, predictable options and routine techniques exits to pursue them.
Here, the Yu explicitly identifies both monomers and comonomers recited in claim 1 and describes the mas suitable for forming fluorinated copolymers. The selection of particular species from the disclosed monomer lists constitutes a finite number of predictable choices. A person, of ordinary skill in the art would have been motivated to combine these known monomers using routine polymerization methods to obtain predictable variation in polymer properties. As in Kubin, the claimed selection and combination do not require inventive ingenuity, only the application of conventional techniques to known starting materials.
Accordingly, consistent with In re Kubin, the fact that the reference discloses multiple monomer/comonomer options does not preclude obviousness. Rather, the present of known options, combined with routine and predictable methods for forming copolymers, supports the conclusion that the claimed invention would have been obvious to a person of ordinary skill in the art.
Applicant’s argument is not persuasive because it mischaracterizes Yu and fails to address the portions of the reference that directly correspond to the claimed monomers.
To begin, Applicant relies on Example 4 as evidence of unexpected results. Example 4 compares a PBVE/PFMPVE copolymer to a PBVE homopolymer and reports increased CO₂/N₂ selectivity for the copolymer. Applicant asserts that this improvement constitutes unexpected results attributable to the addition of PFMPVE. However, this comparison is fundamentally deficient. The claims encompass a broad genus of copolymers derived from numerous monomers disclosed in Yu, yet Applicant compares the claimed copolymer only against a single homopolymer. Applicant does not compare the claimed copolymer against any alternative copolymer within the monomer lists disclosed in Yu. As a result, the data is not commensurate in scope with the claims and cannot satisfy the evidentiary requirements for unexpected results. See In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003); In re Huai-Hsun (CCPA) (unexpected results must be commensurate in scope).
Further, Yu already teaches the copolymer of claim 1. Yu explicitly discloses fluorinated ring monomers in paragraphs [0054]-[0055], including those further exemplified in [0063]. For example, Yu teaches PDD, which is identical to the first monomer recited in amended claim 1. The reference also discloses the full range of substituents (R1–R9) recited in the application. Similarly, Yu teaches fluorinated vinyl ether comonomers of formula F2C=C(F)-O-((CF2)n-O-(CF2)m)xCF3 - including PFMPVE. Thus, both monomer classes relied upon by Applicant were already known for preparing fluorinated copolymers.
Applicant argues that Yu does not explicitly disclose copolymerizing these two monomer classes together. However, Yu presents each class as suitable for forming fluorinated copolymers and provides no teaching that discourages their combination. The lack of a specific example does not constitute teaching away. Selecting particular species from two disclosed monomer lists is a routine optimization step falling well within the ordinary skill in the art. The Federal Circuit has consistently held that selecting species from a known genus is ordinarily obvious. See In re Peterson, In re Aller, and MPEP §§ 2144.05, 2144.08.
Applicant also fails to articulate any reason why a person of ordinary skill would not have reasonably expected the disclosed monomers to be combinable, particularly when Yu itself identifies both classes as appropriate for fluoropolymer synthesis. Critically, Applicant has not provided any evidence that the claimed monomer combination is critical relative to other combinations from the same lists. Without demonstrating such criticality, Applicant cannot overcome the presumption that selecting specific species from known genera is merely a routine design choice.
Moreover, Applicant’s alleged unexpected results are inadequate. The comparison to a homopolymer does not address the full scope of the claims and cannot rebut a prima facie case of obviousness. See In re Klosak, 455 F.2d 1077 (CCPA 1972). Because Applicant has not compared the claimed copolymer to copolymers derived from other monomers disclosed by Yu, the evidence fails to establish that the claimed combination yields any unexpected results over the relevant prior art.
Accordingly, based on Yu’s explicit disclosure of the fluorinated ring monomers in paragraph [0055] and the comonomers in paragraph [0063], and considering that both classes were already known to be useful for producing fluorinated copolymers, it would have been obvious to a person of ordinary skill in the art to combine them as recited in claim 1. Applicant’s arguments and evidence do not overcome the prima facie case of obviousness.
Conclusion
THIS ACTION IS MADE FINAL. 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 DUNG H BUI whose telephone number is (571)270-7077. The examiner can normally be reached Monday-Friday 8:00 - 4:30 ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bobbly Ramdhanie can be reached on (571) 270-3240. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/DUNG H BUI/ Primary Examiner, Art Unit 1773