DETAILED ACTION
Summary
This is a non-final office action for application 17/858,414. The amendment in the RCE dated 4 December 2025 is acknowledged.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4 December 2025 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on 4 December 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US App. Seri. No. 17/858,381 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 4 December 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US App. Seri. No. 17/858,450 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 4 December 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US App. Seri. No. 17/858,431 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 103
Claims 1-9 and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over KASHIWAGI (US-20110105686-A1).
Regarding Claim 1, KASHIWAGI teaches an electret coating film formed by dissolving a fluoropolymer in an aprotic fluorine-containing solvent ([0096]). KASHIWAGI teaches that its fluoropolymer can be based on unit (c) (Abstract, [0007]):
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where each of Z1-Z4 is a fluorine atom, a chlorine atom, fluorinated alkyl group or a fluorinated alkoxy group ([0007]). This overlaps the definition of formula (1) which is recited by the claim. KASHIWAGI exemplifies a polymerization of perfluoro(2-methylene-4-methyl-1,3-dioxolane) ([0180]), a structure with Z1=Z2=Z4=F, Z3=CF3 (Example 5, [00180]) which satisfies formula (1) as recited by the claim. Note that this creates the is the same repeat unit as “unit (1-11)” disclosed in the instant specification (cur. spec: [0038]). KASHIWAGI teaches that each of its fluoropolymers is soluble in an aprotic fluorine-containing solvent ([0019]) meaning that it can be made into a solution ([0020]). KASHIWAGI exemplifies dissolving the polymer in perfluorotributylamine solvent ([0184]) which being is an aprotic solvent due to the lack of any polar hydrogens due to the nitrogen being fully substituted.
KASHIWAGI teaches that the concentration of the fluoropolymer in its composition is usually 0.1-30 mass% ([0134]), which is just outside the recited range of more than 30 mass% or more and 65 mass% or less, but does not teach away from concentrations above 30 mass%. KASHIWAGI teaches that the fluoropolymers of its invention are soluble in an aprotic fluorine-containing solvent ([0019]). KASHIWAGI teaches selecting the molecular weight from the viewpoint of solubility in the solvent or the film-forming property ([0095]). KASHIWAGI teaches selecting the aprotic solvent based on features that would improve solubility ([0105])-[0109]). KASHIWAGI also teaches selecting co-monomers for its fluoropolymer with solubility in solvents and film-forming property in mind ([0065]). KASHIWAGI teaches drying the coating film after application ([0137], [0166])) which presumably increases the concentration of the fluoropolymer in the composition as it forms the resultant film. Since the 0.1-30 mass% concentration taught by KASHIWAGI is not limiting and is so close to the recited lower bound of more than 30mass%, then it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of KASHIWAGI and use concentrations of fluoropolymer which are above the recited 30 mass% for the purpose of obtaining a film by evaporation.
Regarding Claim 2, modified KASHIWAGI teaches the invention of Claim 1. KASHIWAGI further teaches that its fluoropolymer may contain another repeat unit (d) which is different than (c)([0062]). KASHIWAGI teaches that this monomer is not particularly limited so as it is copolymerizable with monomer (c)([0063]) and is preferably a fluoroolefin ([0063]). KASHIWAGI does not exemplify a fluoroolefin monomer, but it would be obvious to modify the examples of KASHIWAGI and include a fluoroolefin monomer, which would create fluoroolefin units, based on the teachings of the specification.
Regarding Claims 3-4, modified KASHIWAGI teaches the invention of Claim 2 where KASHIWAGI teaches fluoroolefins such as tetrafluoroethylene and chlorotrifluoroethylene, which are fluorine-containing perhaloolefins, and vinylidene fluoride ([0063]) which all satisfy Claim 3. The teaching of tetrafluoroethylene and chlorotrifluoroethylene satisfies Claim 4.
Regarding Claim 5, modified KASHIWAGI teaches the invention of Claim 2 where KASHIWAGI teaches fluoroolefins such as tetrafluoroethylene and chlorotrifluoroethylene ([0063]).
Regarding Claim 6, modified KASHIWAGI teaches the invention of Claim 1. KASHIWAGI teaches that its fluoropolymer may be formed by polymerizing a perfluoro(2-methylene-1,3-dioxolane) ([0060]) which satisfies formula (M1) where R1-R4 are fluorine atoms. KASHIWAGI teaches this as a class of monomers including substituted variants such as perfluoro(2-methylene-4-methyl-1,3-dioxolane) or perfluoro(2-methylene-4-propyl-1,3-dioxolane) ([0060]) which also satisfy formula (M1) with fluoroalkyl groups added at one of the positions. KASHIWAGI exemplifies polymerizing perfluoro(2-methylene-4-methyl-1,3-dioxolane) ([0180]).
KASHIWAGI teaches that its fluoropolymer is dissolved in the aprotic solvent ([0096], [00165]) and not that it is the product of monomers polymerized in the aprotic solvent. Claim 1, from which Claim 6 depends, is directed to a coating comprising a fluoropolymer and an aprotic solvent. The process steps of forming a fluoropolymer from monomer(s) in an aprotic solvent make Claim 6 a product-by-process claim. The patentability of a product-by-process claim is determined by the end product. See MPEP 2113. The fluoropolymer dissolved in aprotic solvent taught by KASHIWAGI is considered equivalent to that which is produced by polymerizing in an aprotic solvent.
Regarding Claims 7-9, modified KASHIWAGI teaches the invention of Claim 6. The fluoroolefin limitation in Claim 6 is in an optional limitation. KASHIWAGI satisfies the Claim 6 with the (M1) monomer only, so Claims 7-9 are automatically satisfied by the invention of Claim 6. Also, KASHIWAGI teaches that additional monomers can be used such as the fluoride-containing perhaloolefins tetrafluoroethylene and chlorotrifluoroethylene or vinylidene fluoride ([0063]).
Regarding Claim 12, KASHIWAGI teaches the invention of Claim 1. KASHIWAGI teaches many aprotic fluorine-containing solvents ([0098]) including perfluoroaromatic compounds ([0099]), perfluoroalkylamines ([0099]), perfluoroalkanes ([0099]), perfluorocyclic ethers ([0099]), hydrofluorocarbons ([0099]), and hydrofluoroethers ([0102]). KASHIWAGI exemplifies perfluorotributylamine ([0184]) which is a perfluoroalkylamine.
Regarding Claim 13, modified KASHIWAGI teaches the invention of Claim 1. KASHIWAGI teaches that hydrofluoroether (HFE) is a preferred fluorine-containing solvent ([0102]). KASHIWAGI does not exemplify hydrofluoroether, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of KASHIWAGI and use a hydrofluoroether solvent based on the teachings of the specification.
Regarding Claim 14, KASHIWAGI teaches the invention of Claim 1. KASHIWAGI teaches that the films of its invention have a thickness of 1-200 µm ([0143]) and exemplifies 15 µm which satisfies the requirement that the composition is for forming a film with an average thickness of 10 nm or more.
Regarding Claims 15-17, KASHIWAGI teaches the invention of Claim 1. KASHIWAGI does not measure the indentation hardness, indentation elastic modulus and total light transmittance of its cured films, but KASHIWAGI teaches compositions which are very close to those disclosed in the examples of the current invention. KASHIWAGI teaches in example 5, films created from a homopolymer of perfluoro(2-methylene-4-methyl-1,3-dioxolane)([0180]) which is the same as monomer (M1-11) used in the current application (cur. spec: [0065]). In the current application, Examples 1 and 2 both disclose fluoropolymers only containing the (M1-11) monomer (cur. spec: [107][0108]) and measures an indentation hardness of 420 N/mm2 (cur. spec: [0115]), indentation elastic modulus of 3.5 GPa (cur. spec: [0115]) and a total light transmission of 96% (cur. spec: [0113]). One would inherently expect that the coating composition taught by KASHIWAGI in its example 5 ([0180]) can be used for forming films having the same indentation hardness, indentation elastic modulus and total light transmission as those disclosed in the current application because KASHIWAGI teaches the same fluoropolymer.
Regarding Claim 18, modified KASHIWAGI teaches the invention of Claim 1. KASHIWAGI teaches that its fluoropolymer has a glass transition temperature of 100-350°C (Abstract). In Example 5 cited above, KASHIWAGI teaches a fluoropolymer with a glass transition temperature of 131°C ([0182]) which satisfies the claim.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over KASHIWAGI (US-20110105686-A1) in view of SELMAN (US-3308107-A).
Regarding Claim 10, KASHIWAGI teaches the invention of Claim 1. KASHIWAGI teaches a polymerization of perfluoro(2-methylene-4-methyl-1,3-dioxolane)([0180]), but does not specifically disclose the polymerization conditions. KASHIWAGI cites a Japanese-language version of SELMAN (JP-B-43-29154) for the procedure to polymerize perfluoro(2-methylene-4-methyl-1,3-dioxolane)([0180]). See the IDS dated 11 October 2022, entries BN and AC, for the link between the JP and US publications of SELMAN. SELMAN, in an invention of polymers of 2-methylene-4-methyl-1,3-dioxolane (Title, Col 2: 28-35), which are known to be soluble in certain fluorinated aprotic solvents (Col 2: 47-50), teaches the polymerization 2-methylene-4-methyl-1,3-dioxolane and tetrafluoroethylene, which is a fluoroolefin, in the presence of aprotic solvents such as perfluorodimethylcyclobutane (Table 1) and trichlorotrifluoroethane (CCl2FCF2Cl)(Examples 3-5 and 7). SELMAN teaches cases there the polymerization is performed in the presence of an aprotic solvent and where the resultant mixture is used directly without a purification step in compression molding step to create a film (Col 6: 9-22; Col 6: 37-75). This suggests that the polymerization reaction liquid, including any residual monomers is part of the resultant mixture taught by SELMAN. It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of KASHIWAGI, if needed, with the teachings of SELMAN, and obtain the input fluoropolymers of its examples using a method which involves polymerization in aprotic solvents where the polymerization mixture can be used directly to create films.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over KASHIWAGI (US-20110105686-A1) in view of SAZAKI (JP-2005319661-A).
Regarding Claims 15-16, KASHIWAGI teaches the invention of Claim 1 above. KASHIWAGI does not measure the indentation hardness and elastic modulus of its films. Claims 15-16 are rejected above using an inherency argument based on the similarity of the compositions taught by KASHIWAGI and the exemplary compositions in the instant specification. To the extent that KASHIWAGI does not teach the indentation hardness and modulus properties recited by Claims 15-16, SAZAKI, in an invention of a plastic film having a hard coat layer (Abstract) which includes fluoroolefin monomers (p. 7, par. 4), teaches that in order for the hard coat layer to have excellent scratch resistance that it is preferable that it has a storage elastic modulus of 4 GPa or more and less than 10 GPa to avoid brittleness (p. 8, 3rd from bottom) which is within the 2.5-10 GPa range that is recited by Claim 16. SAZAKI further teaches that when the surface elastic modulus is represented by universal hardness the value is 250 N/mm2 or more preferably 300 N/mm2 (p. 8, 3rd from bottom) which satisfies the lower bound of Claim 15. SAZAKI uses an indentation method for measuring the surface elastic modulus and hardness (p. 8, last paragraph) and exemplifies storage moduli from 5.9-6.6 GPa (Table 4). It would be obvious to one or ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of KASHIWAGI with the teachings of SAZAKI and create coating films with an indentation hardness of above 250 N/mm2 and a storage modulus within the range of 4-10 GPa for the purpose of creating a scratch-resistance hard coat layer film.
Claims 17 is rejected under 35 U.S.C. 103 as being unpatentable over KASHIWAGI (US-20110105686-A1) in view of MATSUKURA (US-6284379-B1).
Regarding Claim 17, KASHIWAGI teaches the invention of Claim 1 above. KASHIWAGI teaches that adhesion additives are selected so as not to impair the transparency of its fluoropolymer composition ([0124]) but KASHIWAGI does not specifically teach a light transmittance for its composition. To the extent that transparency on not an inherent property of the compositions taught by KASHIWAGI, MATSUKURA, in an invention of a fluorine-containing polymer (Abstract) for protecting coatings in the field of optical or electric fields (Col 7: 19-25 and 36-42), including fluoropolymers obtained from monomers in the present invention (Col 5: structures (7),(17),(18), teaches transparent compositions (Col 7: 43-50) with light transmittance values as high as at least 95% (Col 8: Ex. 1-2). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of KASHIWAGI, if needed, with the teachings of MATSUKURA, and obtain fluoropolymer coatings with a light transmittance as high as at least 95% for the purpose of obtaining a film with high transparency.
Response to Arguments
Applicant's arguments filed 4 December have been fully considered but they are not persuasive.
The terminal disclaimers filed have overcome the rejections on the grounds of non-statutory double patenting set forth in the previous office action. These rejections have been withdrawn.
Following the amendment to Claim 1 and the arguments and evidence presented in the Declaration under 37 CFR 1.132, the rejections under USC 102 under the argument that the specific exemplary compositions taught by KASHIWAGI inherently have a concentration within the recited range while they are drying is withdrawn. New rejections under USC 103 are adding over KASHIWAGI on the basis that the concentration range taught by KASHIWAGI is right up against the edge of the recited range and is not limiting and also because KASHIWAGI repeated teaches the improved solubility and film-forming capabilities of its compositions.
Applicant argues that they achieve high solubility including a polymerization reaction liquid containing the recited monomer, fluoroolefins and other monomers in an aprotic solvent compared to a normal aprotic solvent. In response, the evidence presented is solely for homopolymers having the recited monomer and is not commensurate with the scope of the invention which recites comonomers.
Even if the monomer unit is hard to dissolve, the broader teaching of KASHIWAGI teaches solubility. KASHIWAGI teaches selection of its monomers, comonomers, molecular weight and aprotic solvents and co-solvents on the basis of improving solubility and film forming capability. SELMAN teaches that its polymers are soluble in certain fluorinated aprotic solvents and that solutions of its composition are useful in adhesives paints, dip-coating and films (Col 2: 47-53). A composition with a fluoropolymer concentration above 30 mass% is an obvious modification of the invention of KASHIWAGI and KASHIWAGI in view of SELMAN for the purpose of obtaining a film by evaporation.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764