DETAILED ACTION
Applicant’s reply, filed 10 November 2025 in response to the non-final Office action mailed 26 August 2025, has been fully considered. As per Applicant’s filed claim amendments claims 1-18 and 21-23 are pending under examination, wherein: claims 1-2, 5-8, 10-14, 16 and 21-22 have been amended, claims 3-4, 9, 15 and 17-18 are as previously presented, claim 23 is new, and claims 19-20 were withdrawn by previous restriction requirement.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 23 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 23, the recitation of “of than or equal to 1%” appears to be an incomplete recitation and is therefore unclear. For the purpose of this Office action it is assumed the claim intended to recite --of less than or equal to 1%--.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-17 and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lannuzel et al. (WO 2019/020906 A1; using US PGPub 2020/0157365 for English language citations).
Regarding claims 1-6 and 21-23, Lannuzel teaches crosslinkable fluorinated polymers comprising monomer units of VDF (present in remainder; 57 mol% exemplified), monomer units of TrFE present from 15-55 mol%, chlorinated monomers including CTFE and CFE present from 1 to 20 mol%, and further optionally additional monomers ([0020]-[0023])(instant units of formula (III); instant units of formula (IV); instant 0mol% to (20-N)mol% units of formula (V)). Lannuzle further teaches it is known to dehydrochlorinate a small amount of the CFE or CTFE monomers using from 0.1 to 2 molar equivalents (instant Nmol% ethylenic units) of triethylamine in order to form double bonds in the polymer and thus produce a polymer that is capable of crosslinking ([0044]-[0046]). Lannuzel further teaches the polymers are electroactive semicrystalline materials ([0014]) and are of a type known to be relaxor ferroelectric materials ([0001]-[0003]).
While Lannuzel does not specifically teach the presence or absence of conjugated carbon-carbon double bonds, it is noted that the instant recitation of a proportion of conjugated carbon-carbon double bonds is less than or equal to 10% (claim 1), or than or equal to 1% (claim 23), with respect to the total carbon-carbon double bonds, which is a recitation which includes zero i.e. none present. As such the resultant terpolymers of Lannuzel having been subjected to dehydrochlorination meets the instant claim, either by having none or by having ‘some’ of the double bonds falling within the rage of less than 10% of a total of at most 10 mol% (value of N), absent evidence to the contrary.
Regarding claims 7-11 and 13-14, Lannuzel teaches the polymers as set forth above (see also claim 12 below) and further teaches the copolymers will have coercive fields of less than 60 MV/m, high electrical permittivity of greater than 10 at 1kHz and 25°C, high saturation polarization of greater than 30 mC/m2, melting temperatures between 100 and 160°C, dielectric constant maximum of greater than 30, and molar masses of from 5,000 to 200,000 g/mol ([0014]; [0034]; [0059]; [0061]).
Further regarding the property recitations of claims 7-11 and 13-14, it is noted that 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 In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Regarding claims 12 and 15, Lannuzel teaches the polymer as set forth above and further teaches methods of copolymerizing the monomer units of VDF, TrFE and CTFE/CFE, followed by dehyrochlorination (examples). As the claim is a product-by-process claim, patentability of said claim is based on the recited product and does not depend on its method of production. Since the product in the claim is the same product disclosed by Lannuzel, the claim is unpatentable even though/if the Lannuzel product was made by a different process (See In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); see MPEP 2113).
Regarding claim 16, Lannuzel teaches the polymer as set forth above and further teaches compositions comprising a polar organic solvent ([0053]).
Regarding claim 17, Lannuzel teaches the polymer as set forth above and further teaches films ([0057]; [0064]).
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.
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 1-18 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Domingues Dos Santos et al. (US PGPub 2017/0298161) in view of Lannuzel et al. (WO 2019/020906; using US PGPub 2020/0157365 for English language citations).
Regarding claims 1-6, 17-18 and 21-23, Domingues Dos Santos teaches terpolymers comprising 50 to 80% of vinylidene fluoride (VDF) monomer, 15 to 40% of trifluoroethylene (TrFE) monomer, and 1 to 15% of a third monomer (abstract; [0002]-[0005]; [0025]-[0031]), wherein the third monomer is preferably is 1,1-chlorofluorethylene (CFE) or chlorotrifluoroethylene (CTFE), most preferably CTFE ([0043]-[0044]). Domingues Dos Santos further teaches the polymer films thereof having thicknesses of 1-5µm ([0095]), and teaches the films have properties of relaxor materials and ferroelectric materials, which are suitable for a plurality of end uses including actuators, haptics, microfluidics, steerable catheters, braille keyboards, acoustic devices, loudspeakers, OFTFs, etc. ([0014]; [0102]).
Domingues Dos Santos exemplifies the terpolymer poly(VDF/TrFE/CTFE) having monomer amounts of 62.5/32.8/4.7 (example 1)(instant units of formula (III) present from 30 to 90 mol%, instant units of formula (IV) present from 1 to 59.9 mol%, instant 0 mol% to (20-N) mol% units of formula (V), where N is from 0.1 to 10.0).
Domingues Dos Santos teaches the polymer as noted and invites the inclusion of additional monomers beyond VDF, TrFE and the third monomer of CTFE or CFE ([0041]), but does not specifically teach N mol% of the ethylenic units as recited. However, Lannuzel teaches similar fluorinated polymers comprising monomers of VDF, monomers of TrFE, from 1 to 20 mol% of chlorinated monomers including CTFE and CFE, and further optionally additional monomers ([0020]-[0023]). Lannuzle further teaches it is known to dehydrochlorinate a small amount of the CFE or CTFE monomers using from 0.1 to 2 molar equivalents of triethylamine in order to form double bonds in the polymer and thus produce a polymer that is capable of crosslinking ([0044]-[0046]). Lannuzel and Domingues Dos Santos are analogous art and are combinable because they are concerned with the same field of endeavor, namely electroactive fluoropolymer film-forming terpolymers comprising monomers of VDF, TrFE and CTFE/CFE. At the time of filing a person having ordinary skill in the art would have found it obvious to dehydrochlorinate as taught by Lannuzel a portion of the CFE/CTFE monomer units of Domingues Dos Santos in order to introduce double bonds and render the polymer capable of crosslinking.
While Domingues Dos Santos does not specifically teach the presence or absence of conjugated carbon-carbon double bonds, it is noted that the instant recitation of a proportion of conjugated carbon-carbon double bonds is less than or equal to 10% (claim 1), or than or equal to 1% (claim 23), with respect to the total carbon-carbon double bonds, which is a recitation which includes zero i.e. none present. As such the terpolymer of Domingues Dos Santos meets the instant claim, at least by having none, absent evidence to the contrary. Further, the polymers of Domingues Dos Santos undergoing dehydrochlorination as rendered obvious by Lannuzel which introduces double bonds is similarly held to meet the claim limitation as Lannuzel does not teach that conjugation of double bonds occurs.
Regarding claims 7-11 and 13-14, Domingues Dos Santos in view of Lannuzel renders obvious the polymer as set forth above (see also claim 12 below) and Domingues Dos Santos further teaches the polymer and films thereof having dielectric constants at 1kHz and 25°C of less than 40, elastic modulus of at least 0.5 GPa, electro-restrictive strain at 25°C of at least 0.25%, melting point of greater than or equal to 130°C, and weight average molar mass Mw of at least 200,000 ([0087]-[0100]). Domingues Dos Santos further exemplifies the terpolymer having an enthalpy of fusion of 20 J/g (example 1). Additionally, Lannuzel teaches the copolymers will have coercive fields of less than 60 MV/m, high electrical permittivity of greater than 10 at 1kHz and 25°C, and high saturation polarization of greater than 30 mC/m2 ([0014]; [0061]).
Further regarding the property recitations of claims 7-11 and 13-14, it is noted that 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 In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)).
Regarding claims 12 and 15, Domingues Dos Santos in view of Lannuzel renders obvious the polymer as set forth above. Lannuzel further teaches methods of copolymerizing the monomer units of VDF, TrFE and CTFE/CFE, followed by dehyrochlorination (examples). As the claim is a product-by-process claim, patentability of said claim is based on the recited product and does not depend on its method of production. Since the product in the claim is the same product disclosed by Domingues Dos Santos in view of Lannuzel, the claim is unpatentable even though/if the Domingures Dos Santos in view of Lannuzel product was made by a different process (See In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); see MPEP 2113).
Regarding claim 16, Domingues Dos Santos in view of Lannuzel renders obvious the polymer as set forth above and Domingues Dos Santos further teaches powders thereof may be dissolved in DMF to form a solution ([0094]) and Lannuzel also teaches polar organic solvents ([0053]).
Response to Arguments/Amendments
The objections to claims 1-2, 5-8, 10-14, 16 and 21-22 are withdrawn as a result of Applicant’s filed claim amendments.
The 35 U.S.C. 112(b) rejection of claims 1-18 and 21-22 are withdrawn as a result of Applicant’s filed claim amendments. Note the new rejection set forth above as a result of said claim amendments.
The 35 U.S.C. 102(a)(1) rejection of claims 1-17 and 21-22 as anticipated by Lannuzel (WO 2019/020906 A1; see PGPub 2020/0157365 for English citations) is maintained. Applicant’s arguments (Remarks, pages 9-11) have been fully considered but were not found persuasive.
Applicant argues that Lannuzel ‘immediately consumes the C=C cites by reacting with a crosslinking agent” and therefore the resultant crosslinked film is ‘effectively devoid of any double bonds’. This argument is not found persuasive. Firstly, Lannuzel can be relied upon for the teaching of the crosslinkable fluorinated polymers, i.e the obtained polymer prior to their being subjected to a crosslinking method/process, into which Lannuzel specifically introduced double bonds ([0044]). While crosslinking is an end-goal of Lannuzel, the polymer obtained which is capable of being crosslinked, but which has not yet been crosslinked, meets the instant claims and is not ‘devoid’ of ‘any’ double bonds. Secondly, Lannuzel teaches the amount of the crosslinker in a range of 0.1 to 2 molar equivalents ([0046]; [0051]) which is range that allows for incomplete crosslinking. As such even a crosslinkable fluorinated polymer of Lannuzel which has been subjected to crosslinking is readable over the instant claim, absent an objective showing by Applicant that all C=C sites are, or must be, consumed such the polymer is necessarily devoid of double bonds as asserted by Applicant.
Thirdly, Applicant’s assertion of ‘with a limited number of conjugated carbon-carbon double-bond sequences’ is not persuasive. It is noted that the range of conjugated carbon-carbon double-bonds is “less than or equal to 10%” of all double-bonds, which is a range that includes zero i.e. no conjugated carbon-carbon double-bonds need be present to meet the claim. Applicant’s argument of ‘with a limited number’ is not reflective of the instant claims.
Applicant generally asserts that the claimed properties are not inherent. This is not persuasive. Lannuzel teaches the claimed polymer, having the claimed monomers present in the claimed amounts, and teaches a substantially similar method. It has long been held that 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 In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)). Outside of asserting that the properties would not be present, Applicant has provided no evidence or arguments in support of said assertion.
The 35 U.S.C. 103 rejection of claims 1-18 and 21-22 as unpatentable over Domingues Dos Santos (US PGPub 2017/0298161) in view of Lannuzel (WO 2019/020906; see PGPub 2020/0157365 for English citations) is maintained. Applicant’s arguments (Remarks, page 12) have been fully considered but were not found persuasive. Applicant’s argument to the obviousness rejection is substantially directed to the argument set forth with respect to Lannuzel, which has been responded to by the Examiner above.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767