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 Amendment
Applicant’s claim amendments and remarks filed 8/19/2025 are entered and have
been fully considered. Applicant has amended the claims to overcome the objection and 112b rejections, therefore they are withdrawn.
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.
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 1-2, 5-6, 8-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Avantaneo et al, US8258090B2.
Regarding claims 1 and 5, Avantaneo teaches a perfluoropolyether polymer of formula (I) T-O-[A-B]z-[A-B’]z’-A-T’. Where A is –(X)a-O-A’-(X’)b- and A’ is a perfluoropolyether chain comprising one or more repeat units selected from (CF2O), (CF2CF2O), (CF2CF2CF2O), (CF2CF2CF2CF2O), Col. 2 lines 60-65. This corresponds to applicant’s formula (I) where (Rf) is a fully or partially fluorinated polyoxyalkylene chain.
X and X’ are selected from -CF2-, -CF2CF2-, or optionally – CF(CF3)-, Col. 3 lines 1-3, this corresponds to applicant’s X and X’.
Also in formula (I), a and b are equal to or different from each other, and are integers equal to 0 or 1, Col. 3 lines 4-5, this corresponds to applicant’s a and b.
Also, z is an integer higher than or equal to 2, and z’ is 0 or an integer, Col. 3 line 21, this corresponds to applicant’s z and z’.
The end groups T and T’ are selected from -CF3-, -C2F5, -C3F7-, -CF2H, -CF2CF2H, -CFHCF3, -CF2Cl, Col. 4, lines 13-15, this corresponds to applicant’s T and T’.
Each of B and B’ is a block of units having formula –[(CR1R2-CR3R4)j (CR5R6-CR7R8)j’]-, Col. 3 line 11. Where j is 1-5, and j’ is 0-4 with the proviso (j+j’) is greater than 2 but less than 5, Col. 3 line 14. B’ has the same formula but has at least one substituent different from B and (j+j’) is higher than or equal to 2 and lower than 5, Col. 3 Lines 25-28. This corresponds to applicant’s B and B’, c, d, and e, and satisfies the limitation they are statistically distributed. Avantaneo exemplifies B blocks being a mixture of tetrafluoroethylene (TFE) and hexafluoropropene (HFP), Col. 4 lines 2-3.
Avantaneo does not explicitly state the TFE units are in an amount from 15-28 wt.% in the polymer and the co-monomer units are in an amount from 4-20 wt.%. But Avantaneo states that the total weight of blocks B and B’ is less than 70%, preferably less than 40%, of the total weight of the polymer, Col. 4 lines 9-10. The B’ blocks are optional, because z’ can be zero, therefore with only B blocks made of TFE and HFP, for example, using the mole ranges for j and j’ in the formula stated above, the minimum and maximum molar ratios are 1:3 and 3:1 for TFE: HFP. This has a total of j+j’ = 4, which Avantaneo states the total must be less than 5. If this molar ratio is converted to a mass ratio, based on TFE is 100 g/mol and HFP is 150 g/mol, the ratios convert to 0.22:1 at the minimum and 2:1 at maximum. Comparing this to the claimed amounts in (2a) of claim 1, the minimum mass ratio is 0.75:1 TFE to the co-monomer unit (this is calculated from 15/20), and a maximum ratio of 7:1 (calculated from 28/4). Therefore the mass ratio for Avantaneo overlaps with the mass ratio required by (2a) of claim 1, and with the total B units required to be less than 70 wt.%, this encompasses the claimed percent ranges of (2a) because the range of the claimed total is from 19-48 wt.% (which corresponds to the total B units). In the case where the 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).
And because Avantaneo teaches using HFP (CF2CFCF3) as the other unit with TFE, this satisfies option (2b) of claim 1 and claim 5.
Regarding claims 2 and 12, Avantaneo further teaches that in the polymer formula (I) T-O-[A-B]z-[A-B’]z’-A-T’, the z and z’ are such that the number average molecular weight of the polymer is in the range of 500-500,000 and preferably in the range of 5,000- 60,000 g/mol, Col. 3 lines 23-24, which overlaps with the claimed ranges. And the number average molecular weight is measured using 19F-NMR spectroscopy for the examples, Col. 13 lines 21-24.
Regarding claims 6 and 13, Avantaneo further teaches that A’ (which corresponds to applicant’s Rf) is a perfluoropolyether chain comprising one or more repeat units selected from (CF2O), (CF2CF2O), (CF2CF2CF2O), (CF2CF2CF2CF2O), and optionally comprising (CF(CF3)O), (CF(CF3)CF2O), (CF2CF(CF3)O) units, Col. 2 lines 60-67.
Regarding claim 8, Avantaneo does not mention if the polymers are rubber-like, but applicant has stated in ¶[0009] of the instant specification that the rubber-like polymers are formed by reacting a PFPE with TFE, and at least one non homo-polymerizable olefin in the presence of UV light. Avantaneo reacts PFPE with TFE and HFP, in Example 7 Col. 21-22, as stated above, and suggests reactions can be carried out in UV light, Col. 7 lines 9-10 and 32-35. Avantaneo therefore satisfies the limitation of rubber-like polymers.
Regarding claims 9 and 10, Avantaneo teaches a method for manufacturing the perfluoropolyether polymer by contacting a peroxidic perfluoropolyether, TFE, and a second co-monomer, HFP, under heating in example 7, Col. 21 lines 20-34. It is also suggested that the reaction can be carried out in UV radiation, Col. 7 lines 9-10 and lines 32-35. Other co-monomers are selected from (per)fluorovinyl ethers.
Claims 3-5, 7, 11, and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Avantaneo et al, US8258090B2 in view of De Patto et al, US20180051226.
Regarding claims 3 and 4, Avantaneo teaches the invention according to claim 1 as explained above. Avantaneo states that the block B olefins can also be derived from (per)fluorovinylethers, Col. 3 line 62, but does not go into further detail as to what those monomers are.
De Patto discloses a highly viscous perfluoropolyether polymer for damping fluids that follows the same structural formula as Avantaneo, ¶[0030]. De Patto further discloses that block B and B’ are recurring units derived from TFE, HFP and/or (per)fluorovinylethers ¶[0062], preferably perfluoromethylvinylether (PMVE), perfluoroethylvinyl ether (PEVE), perfluoropropylvinylether (PPVE), or mixtures thereof ¶[0063]. They can also be of the formula where Rf1 ¶[0062] is selected from -CFORf2 where Rf2 is a linear or branched C1-C6 perfluoroalkyl, cyclic C5-C6 perfluoroalkyl, a liner or branched C2-C8 perfluorooxyalkyl group ¶[0064].
Example 10, ¶¶[202-210] is a polymer containing a segment from TFE and PMVE, where the final polymer comprises 10.8 wt.% of TFE and 8.4 wt.% of PMVE.
De Patto discloses that the polymer is used as a damping fluid in damping devices that are used in applications where high pressures and workloads and high temperatures are involved ¶[0071] and the polymer retains its viscous properties at higher temperatures ¶¶[0017-0018]. The polymer is used in damper devices in industrial settings such as wheeled vehicles, work boats, aircrafts and spacecrafts, power transmission lines, wind turbines, consumer electronics, off-shore rigs, compressors, and buildings ¶[0073].
Avantaneo and De Patto are analogous to the claimed invention because Avantaneo is in the related field of fluorinated lubricants and De Patto is in the related field of viscous fluorinated fluids for industrial fields.
Therefore it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the polymer of Avantaneo with the co-monomers of De Patto with the motivation of improving the polymer’s viscosity retention at high temperatures and its damping properties for industrial use.
Regarding claim 5, Avantaneo teaches the invention according to claim 1, as explained above. Avantaneo states that the total weight of blocks B and B’ is lower than 70% of the total weight of the polymer, Col. 4 lines 9-10. De Patto states that the total weight of B and B’ is lower than 50 wt.% of the total weight of the polymer ¶[0059]. With the upper limit of 69.9 wt.% or 49.9 wt.%, it is obvious that TFE can be used in amount to achieve the 15-28 wt.% limitation. Both Avantaneo and De Patto use HFP as a co-monomer, which satisfies the recurring unit of (CF2CFRx)d where Rx is CF3 and d is an integer of 1 to 500.
Regarding claims 7, 14, 15, and 16, Avantaneo teaches the invention according to claim 1, as explained above, but does not disclose the additional claimed representations for Rf.
De Patto discloses that Rf is a fully or partially fluorinated polyoxyalkylene chain, ¶[0032], which corresponds to applicant’s Rf. It is further disclosed that Rf preferably complies with formulae Rf-I and Rf-II, ¶¶[0045-0048]:
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Where X1 is independently selected from -F and -CF3 ¶[0046], X2 and X3 are equal or different from each other and are independently -F, CF3, with the proviso that at least one X is F ¶[0047]. Also, that g1, g2, g3, and g4, equal or different from each other, are independently ≥0, such that g1+g2+g3+g4 is in the range from 2 to 300, preferably from 10 to 250, even more preferably from 15 to 200; should at least two of g1, g2, g3 and g4 be different from zero, the different recurring units are generally statistically distributed along the chain ¶[0048].
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Where X1, X2, and X3 are defined as above ¶[0050], and g1, g2, g3, g4, g5 and g6, equal or different from each other, are independently ≥0, such that g1+g2+g3+g4+g5+g6 is in the range from 2 to 300, preferably from 10 to 250, with the proviso that at least one of g5 and g6 are different from 0 ¶[0051].
Regarding claim 11, Avantaneo teaches the invention according to claim 1, explained above, but does not teach where Rf2 is the formula -OCF2ORf2 is -CF2CF3,
-CF2CF2OCF3 or -CF3. De Patto discloses these additional functional groups for Rf2, ¶[0064].
Regarding claim 17, Avantaneo teaches the method according to claim 10, as explained above, but does not teach the additional functional groups for Rf2 in the formula CF2=CFOCF2ORf2. De Patto discloses the additional functional groups for Rf2, CF2CF3 (MOVE1), -CF2CF2OCF3 (MOVE2), or -CF3 (MOVE3) ¶[0064].
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-6 and 11-13 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 4, 6, 7, 11, 12, 13, 14, and 15 of co-pending Application No. 17/802,103.
Although the claims at issue are not identical, they are not patentably distinct from each other because practicing the invention of 17/802,103 creates the polymer of instant claim 1.
Claim 1 of 17/802,103 is directed to a composition (C) comprising at least one polymer (P) of formula (I) T-O-[A-B]z-[A-B’]z’-A-T’ and lists the same definitions for each variable as stated in instant claim 1. The difference is that co-pending claim 1 does not include part of the limitation 2(a) that is in instant claim 1; this states that the recurring units of formula –(CF2CFRx)d amount from 4-20 wt.% based on 100 wt.% of said polymer (P). This limitation is found in the co-pending claim 6. Additionally, in the amended co-pending claim 1, it claims 15-30 wt.% of recurring TFE units, whereas in the instant claim 1, it claims 15-28 wt.% of TFE units, but co-pending claim 13 has the limitation 15-28 wt.% TFE units. Therefore it would have been obvious to one of ordinary skill in the art to practice the invention of claim 1 of 17/802,103 by incorporating claims 6 and 13 of 17/802,103 because 17/802,103 recites these as variants of claim 1.
Claim 4 of 17/802,103 states the composition (C) according to Claim 1, wherein said polymer (P) has a number average molecular weight from 5000 to 150000 g/mol as determined by 19F-NMR spectroscopy, this reads on instant claim 2.
Claim 7 of 17/802,103 states the same selection of repeating units for Rf and reads on instant claim 6.
Claim 11 of 17/802,103 states the composition (C) according to Claim 1, wherein Rf2 is -CF2CF3, -CF2CF2OCF3, or -CF3 which reads on instant claim 11.
Claim 12 of 17/802,103 states the composition (C) according to Claim 1, wherein said polymer (P) has a number average molecular weight from 10000 to 100000 g/mol as determined by 19F-NMR spectroscopy, which reads on instant claim 12.
Claim 14 of 17/802,103 states the composition (C) according to Claim 1, wherein polymer (P) comprises recurring units of formula -(CF2CFRX)d- in an amount from 6 to 18 wt.% based on 100 wt.% of said polymer (P), which reads on instant claim 4.
Claim 15 of 17/802,103 states the same selection of repeating units for Rf and reads on instant claim 13.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see page 8, filed 8/19/2025, with respect to the rejection(s) of claim(s) 1-2,6, 8-10, 12, 13 under §102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Avantaneo under §103.
In response to applicant’s argument of unexpected results related to the amount of TFE in the final polymer and the effect of it resulting in a rubber-like polymer on page 10 of remarks, the data is not convincing because of the following reasons. There is no analytical definition given for the difference between a rubber-like polymer and a liquid polymer, nor how the example 1 differs from the comparative examples, other than the TFE amount, to give it the designation of rubber-like. Applicant states in the remarks it is not related to molecular weight, but it is unclear what other physical properties resulted from the 24% TFE units to define it as rubber-like. It is also unclear if the total –(BO)- units or PMVE units have an effect on the rubber-like result, because there are no additional examples with a different unit than PMVE or varying total –(BO)- units.
Additionally, the unexpected results are not commensurate in scope with the claims. The data shown in table 1, page 10, of the remarks shows the only example with 24% TFE and 10% PMVE and the PFPE reacted is a specific polymer (described in ¶[0045] of the instant specification), whereas the amended claim 1 has a range of 15-28 wt.% for the TFE units, other comonomer units besides PMVE are claimed, and the contributing PFPE polymer is not limited to only the one used in the example. The scope of the claims encompasses more options than the inventive example 1 provides.
For these reasons, the §103 rejection over Avantaneo in view of DePatto is maintained.
The non-statutory double patenting rejection is maintained because the limitation of 15-28 wt.% of the TFE units is found in co-pending claim 13, which is a variant of claim 1.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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