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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group 1 Claims 1-16 and PEI as the species of non-fluoropolymer in the reply filed on February 20, 2026 is acknowledged.
Claims 9-10, 14-15 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 20, 2026.
Applicant’s response indicates Claim 15 in the elected claims, however, PEI is not recited as the non-fluoropolymer in Claim 15. Therefore, it is withdrawn.
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 1-8, 11-13 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (U.S. 20170226389).
Wang teaches compositions comprising a fluoropolymeric material (PFA exemplified), a functionalized fluoropolymer and a thermoplastic material (PEI exemplified)
In ¶[0020] Wang teaches the functionalized fluoropolymer can have epoxy or anhydride end groups specifically which react with amine end groups of PEI. Therefore, one of ordinary skill in the art is reasonably suggested a block copolymer of the functionalized fluoropolymer (PFA) and the PEI is formed along with excess PFA (fluoropolymer) and PEI which does not react with the functionalized PFA.
Additionally, the broadest reasonable interpretation of the as-filed specification along with Applicant’s remarks filed in response to the restriction requirement February 20, 2026, indicate the monomers used to make component (C) of the claims can also read over or be considered to be component (a) of the claim. Considering the product by process nature of the block copolymer of Claim 1 (which is different than the block copolymer of Claim 11 as this does not include any mention of functionalization), one of ordinary skill in the art is reasonably suggested the functionalized fluoropolymer (PFA) with epoxy or anhydride end groups reacted with amine from the PEI anticipates the block copolymer of Claim 1 and also Claim 11 for the following reasons:
Functionalized fluoropolymer (a) of Claim 1 is anticipated by the functionalized PFA (epoxy or anhydride) of Wang as above.
First functional monomer (b) of Claim 1 is anticipated by the diamine monomer of the PEI of Wang.
Second functional monomer of Claim 2 is anticipated by the anhydride monomer which reacts with the diamine above to form PEI of Wang.
Functional non-fluoropolymer (c) of Claim 1 is anticipated by the rest of the amine-functionalized PEI chain of Wang.
The epoxy anticipates the functional group of the functional fluoropolymer of Claim 3.
The amine of the PEI as discussed above anticipates the amine of Claim 4.
The amine of the PEI end as taught by Wang must be a diamine to make a PEI chain and, therefore, one of ordinary skill in the art is reasonably suggested there is a diamine anticipating (b) of Claim 5 (i.e. difunctional).
Claim 6 is a product by process claim. The functional fluoropolymer is made by a process of mechanical shearing. As the examples of Wang create compositions which include functionalized PFA added to PEI/PFA compositions, one ordinary skill in the art is reasonably suggested this must involve mixing (i.e. shearing) of the components, thereby, anticipating the shearing of the functionalized fluoropolymer of Claim 6.
Alternatively, and in addition, Wang also teaches the same benefit (increased miscibility and compatibility between the immiscible polymers) in ¶[0020] that Applicant attributes to the block copolymer (reactive compatibilizer) made with sheared PFA and PEI (¶[0086] of the as-filed specification). Examples 292A and Examples 292B also appear to be in-situ formed reactive compatibilizer substantially similar to Wang’s compatibilizer. There does not appear to be any examples in the as-filed specification demonstrating a significant structural difference between a commercial functionalized PFA (for instance used by Wang) compared to a sheared PFA when reacted to an already formed PEI-Amine as in Wang (and in Examples 292A, 292B). Table 15 of the as-filed specification only discloses potential effects on shearing when forming PEI in-situ. However, the claims are not limited to in-situ formation of the non-fluoropolymer block.
Therefore, alternatively, as there is no evidence in a structural difference between the resulting reactive compatibilizer of Wang (PFA-PEI block copolymer made by reacting the PFA and PEI blocks in-situ) compared to the shear PFA copolymer reacted with PEI of the above examples in the as-filed specification.
The functionalized PFA of Wang anticipates Claim 7.
The functionalized PEI (as discussed above PEI-amine) of Wang anticipates Claim 8.
Claim 11 is anticipated as the amount of PEI in the examples is 20 % but the examples also only have 8-16 % of the reactive functional PFA along with PFA. In other words, one of ordinary skill in the art reasonably suggested based on Wang’s disclose as a whole and the examples which do not have a 1:1 correspondence of PEI-amine to react with all the functionalized PFA, that Wang’s compositions comprise PFA, PFA-PEI block copolymer compatibilizer and PEI separately. This anticipates the composition of Claim 11, the PFA of Claim 12 and the PEI of Claim 13.
The exemplified compositions of Wang (See Table 2 for instance) have 8 vol % of functionalized PFA and 20 vol % of PEI and the balance is PFA according to Table 2. This is 80 vol % of PFA (8 + 72 = 80 vol % PEI). The claims do not require a specific type of % PFA and the as-filed specification does not define % to be weight percent. Additionally, the reactive compatibilizer of Claim 11 contains fluoropolymer (a fluoropolymer block) and the claim limitation is to the fluoropolymer amount in the composition, not specifically the non-reactive compatibilizer portion of the composition of Claim 11. Therefore, 80 vol % PFA in the composition of Wang anticipates at least 80 % of PFA in the composition of Claim 16.
Claim 16 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (U.S. 20170226389) as evidenced by Plastics in Medical Devices Chapter 8.
Wang is applied as above under §102.
Wang teaches the polymers (PFA and PEI) generically and amounts in volume percent rather than a more common compositional amount in weight percent. The conversion between volume and weight percent is via density of the components.
In Table 8.15, Plastics in Medical Devices Chapter 8 teaches the density of PFA is 2.15 g/cm3.
In Table 8.5, Plastics in Medical Devices Chapter 8 teaches the density of PEI is 1.27 g/cm3.
As above in the rejection of Claim 16 80 vol% of the composition of Wang in Table 2 is PFA and 20 vol % of Wang is PEI.
Considering a unit volume of composition of Wang (100 cm3) this yields:
80 cm3 PFA at a density of 2.15 g/cm3 = 172 g PFA
20 cm3 PEI at a density of 1.27 g/cm3 = 25.4 g PEI.
The amount of PFA in weight percent Table 2 is reasonably suggested to 172 / (172 + 25.4) * 100 = 87 wt% of PFA. This anticipates Claim 16 in terms of weight percent.
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.
Claim 1, 2, 7, 11 and 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20-21 of U.S. Patent No. 12,351,752. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 20-21 of 12,351,752 recites a composition with the scope of Claim 1 and 11 and one of ordinary skill in the art is reasonably suggested the functional fluoropolymer of Claim 20 of 12,351,752 reacts with the linking compound and LCP monomers of this claim to make a fluoropolymer block linked to a LCP polymer block.
LCP polymer block anticipates Component (c) of Claim 1 and the non-fluoropolymer block of Clam 11. The linking compounds anticipates the Component (b) of Claim 1 and the LCP monomer itself anticipates the second monomer of Claim 2 (See above reason under §102 for Claim 2). The functionalized fluoropolymer anticipates Component (a) of Claim 1 and the fluoropolymer block of Claim 11. The additional LCP and fluoropolymer anticipate the non-reactive compatibilizer components of Clam 11. PFA of Claim 7 and 12 is anticipated by the list of Claim 21 of 12,351,752.
Conclusion
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/Christopher M Rodd/Primary Examiner, Art Unit 1766
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