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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on 3/16/2026 is acknowledged.
Claims 15-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/16/2026.
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 19/240595 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because copending application ‘595 teaches a foam molding composition comprising a fluororesin (A) and a compound (B) having a pyrolysis temperature of 300ºC or higher and a solubility parameter (SP value) of 8 to 15 (claim 1). Copending application ‘595 recites that the compound (B) is a compound comprising at least one partial structure selected from the group consisting of aromatic rings, phosphoric acid ester groups, and amide groups (claim 2). Copending application ‘595 recites that compound (B) is a compound containing one or more C6-C14 aromatic rings, or a salt thereof (claim 3). Copending application ‘595 recites that compound (B) is at least one compound selected from the group consisting of phosphoric acid esters and salts thereof, phosphoric acid ester complex compounds, and compounds having two or more amide groups (claim 4). Copending application ‘595 recites that the salt of compound (B) is an alkali metal or an alkaline earth metal (claim 5). Copending application ‘595 recites that the compound (B) is at least one of compounds represented by the following formulae (1), (2), (3), and (4):
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356
578
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324
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Where R1, R2, R3, R4, R21, R22, R23, R24, R31, R32, R33, R34, R41, and R42 each represent a hydrogen atom, an alkyl group or cycloalkyl group having 1 to 8 carbon atoms, or an aryl group, alkylaryl group or arylakyl group having 6 to 12 carbon atoms, Ar41 represents an aryl group; R5 and R6 each represent a hydrogen atom or a methyl group; and n represents an integer 1 or 2, m represents an integer of 0 to 2, an X represents a m+n-valent metal (claim 6). Copending application ‘595 recites that R1, R2, R21, R22, R31, and R33 in the formula (1), the formula (2), and the formula (3) are an alkyl group having 1 to 8 carbon atoms (claim 7). Copending application ‘395 recites that X in the formula (1), the formula (2), and the formula (3) is at least one of sodium, potassium, rubidium, calcium, and barium (claim 8). Copending application ‘395 recites that compound (B) is an aromatic cyclic phosphoric acid ester salt represented by the formula (1) (claim 9). Copending application ‘395 recites that compound (B) is 2,2’-methylenebis (4,6-di-t-butylphenyl) sodium phosphate (claim 10). Copending application ‘395 recites that fluororesin (A) is a melt processible fluororesin (claim 11). Copending application ‘395 recites that fluororesin (A) is at least one selected from the group consisting of tetrafluoroethylene/hexafluoropropylene-based copolymers, tetrafluoroethylene/perfluoro(alkyl vinyl ether) copolymers and tetrafluoroethylene/ethylene-based copolymers (claim 12). Copending application ‘395 recites that fluororesin (A) is in a fluororesin having been subjected to a fluorination treatment (claim 13). Copending application ‘395 recites that the foam molding composition is substantially free from fluorine-based low-molecular weight compound (claim 14).
This is an anticipatory type Obvious Double Patenting rejection. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (US 2018/0065105).
Song et al. teach a polymeric composition comprising a matrix polymer, including polar monomers, with an expressly named example being poly(tetrafluoroethylene-co-perfluoropropylvinyl ether) (¶41) and further comprising a nucleating agent with an expressly named example being sodium 2,2’-methylenebis(4,6-di-tert-butylphenyl)-phosphate (¶64). It would have been obvious to produce a composition comprising poly(tetrafluoroethylene-co-perfluoropropylvinyl ether) and sodium 2,2’-methylenebis(4,6-di-tert-butylphenyl)-phosphate, given their express disclosure in ¶41 and ¶64, respectively, of Song et al., because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
It is noted that sodium 2,2’-methylenebis(4,6-di-tert-butylphenyl)-phosphate meets compound (B) of instant claims 1-10, including having a pyrolysis temperature of 300ºC or higher and a solubility parameter of 8 to 15. It is noted that poly(tetrafluoroethylene-co-perfluoropropylvinyl ether) meets the fluororesin (A) of instant claims 1 and 11-12.
Regarding the instant claim limitation which recites a “foam molding” composition, this is an intended use of the composition of the instant claims. As embodiments of the composition of Song comprise each of the components required for the instantly claimed invention, the compositions of Song et al. are capable of performing the intended use of “foam molding.” Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Claim 13 recites a product-by-process by using the language “wherein the fluororesin is a fluororesin having been subjected to a fluorination treatment.” Case law holds that:
Even 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. Because the fluororesin disclosed in Song et al. is the same as that of the instant claims, i.e. poly(tetrafluoroethylene-co-perfluoropropylvinyl ether) (¶41), this fluororesin meets instant claim 13, regardless of the method by which it was fluorinated, because the copolymer of Song is the same as that of the instant claims. Additionally, because the poly(tetrafluoroethylene-co-perfluoropropylvinyl ether) of Song et al. meets the instantly claimed fluororesin, when this is used as the matrix polymer, the composition is “substantially free from fluorine-based low-molecular weight compound.” This meets instant claim 14.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et al. Inoue et al. (JP 2001-049127). Because JP 2001-049127 is not in English, the machine-translated English equivalent is cited below and is attached.
Inoue et al. teach a polymer composition comprising thermoplastic resins, with an expressly named example being fluororesins (¶256), which meets fluororesin (A) of the instant claims, and further comprising a nucleating agent with an expressly named example being sodium 2,2’-methylenebis(4,6-di-t-butylphenyl) phosphate (¶304). It is noted that sodium 2,2’-methylenebis(4,6-di-t-butylphenyl) phosphate meets the compound (B) of instant claims 1-10, including having a pyrolysis temperature of 300ºC or higher and solubility parameter (SP value) of 8 to 15, as the instant specification teaches sodium 2,2’-methylenebis(4,6-di-t-butylphenyl) phosphate as a specific compound having the pyrolysis temperature and solubility parameter recited in instant claim 1. It would have been obvious to one of ordinary skill in the art, based on the teachings of Inoue et al., to produce a composition comprising a fluororesin and further comprising sodium 2,2’-methylenebis(4,6-di-t-butylphenyl) phosphate which meets compound (B) of instant claims 1-10, because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Regarding the instant claim limitation which recites a “foam molding” composition, this is an intended use of the composition of the instant claims. As embodiments of the composition of Inoue et al. comprise each of the components required for the instantly claimed invention, the compositions of Inoue et al. are capable of performing the intended use of “foam molding.” Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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