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 .
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4, line 1-2, recites “the composition”. The claim should instead read “the compression molding composition”.
Appropriate correction is required.
Claim Analysis
Summary of Claim 1:
A compression molding composition comprising:
an emulsion-polymerized polytetrafluoroethylene;
a heat-processible fluoropolymer;
And a filler;
wherein:
a melt flow rate (MFR) of the heat-processible fluoropolymer is from 0.01 to 100 g/10 min; and
a content of the heat-processible fluoropolymer is from 1 to 40 mass% relative to a total of the emulsion-polymerized polytetrafluoroethylene and the heat-processible fluoropolymer.
Claim Rejections - 35 USC § 102
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 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 1-5 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsumoto (EP 3246583 as listed on IDS dated March 17, 2023).
Regarding claim 1, Matsumoto discloses in Example 2 a composition comprising 65 wt% of a modified polytetrafluoroethylene (PTFE), 25 wt% of a tetrafluoroethylene-perfluoroalkyl vinyl ether (PFA), and 15 wt% of carbon fiber ([0057-0063], Table 1), thereby reading on the polytetrafluoroethylene, heat-processible fluoropolymer, and filler. The amount of the heat-processible fluoropolymer is calculated to be a content of 23 mass% of relative to the total of the polytetrafluoroethylene and heat-processible fluoropolymer, thereby lying within the claimed range. Matsumoto disclose the PFA resin is ACX21, which has a MFR of 6 g/10 min as evidenced by the datasheet provided in this Office Action and thereby lying within the claimed range.
Matsumoto is silent on if the polytetrafluoroethylene is emulsion-polymerized.
However, the present claim is a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).) If the prior art teaches the same product as the product formed by the process recited in the claims at issue, the claims are unpatentable. However, if the process of the claims at issue results in a product that is different from the product taught by the prior art, then the prior art does not teach the invention recited in the claims at issue.
Regarding claim 2 and 3, Matsumoto discloses in Example 2 the heat-processible fluoropolymer is a tetrafluoroethylene-perfluoroalkyl vinyl ether copolymer [0057-0063], thereby reading on the instant claim.
Regarding claim 4 and 5, Matsumoto discloses the composition of Example 2 was molded to form a bearing [0057-0063], thereby reading on the molded product of claim 4 and the sliding material of claim 5.
Regarding claim 8, Matsumoto discloses the composition of Example 2 is formed by mixing the polytetrafluoroethylene, heat-processible fluoropolymer, and filler together in a mixer and compression molded [0057-0063], thereby reading on the method for producing the compression molding composition as recited in the instant claim.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto (EP 3246583 as listed on IDS dated March 17, 2023).
The compression molding composition of claim 1 is incorporated herein by reference.
Regarding claim 7, Matsumoto discloses the composition of Example 2 is formed by mixing the polytetrafluoroethylene, heat-processible fluoropolymer, and filler together in a mixer and compression molded [0057-0063].
Matsumoto do not teach the emulsion-polymerized polytetrafluoroethylene and heat-processible are mixed first as recited in the instant claim.
However, Matsumoto broadly teaches any blending methods as long as three elements are maintained in a good dispersion state [0033]. Therefore, it would have been obvious to one of ordinary skill to change the order of the blending method as recited in the instant claim.
Furthermore, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. (In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).)
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto (EP 3246583 as listed on IDS dated March 17, 2023) in view of Echizen (JP 2018109149 as listed on IDS dated July 12, 2018).
The examiner refers to the machine English translation of Echizen provided in this Office Action.
The molded product of claim 4 is incorporated herein by reference.
Regarding claim 6, Matsumoto is silent on the molding product is a sealing material.
Echizen teaches a polytetrafluoroethylene composition used to form a molded article that is a sliding material or a sealing material (claim 3). Matsumoto is also concerned with molded articles formed from a polytetrafluoroethylene composition (claim 1). Therefore, it would have been obvious to one of ordinary skill in the art to use the composition of Matsumoto to form a molded article that is a sealing material as taught by Echizen since both are related to molded polytetrafluoroethylene compositions and it is well known in the industry to use polytetrafluoroethylene compositions to form a sealing material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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, Joseph Del Sole can be reached at (571) 272-1130. 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.
/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights