DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 2/19/26, claims 1, 3-16 are currently pending in the application.
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, 3-6, 13, 14, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Joyce et al. (US 2,479,367, of record).
Regarding claims 1, 13, 14, Joyce teaches interpolymers of fluoro-compounds of the formula:
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wherein, X, Y and Z are atoms of the group consisting of hydrogen atoms and halogen atoms of atomic weight less than 100 or 40, wherein not more than one of said X, Y and Z atoms is halogen other than fluorine, and at least one other polymerizable compound containing a terminal ethylenic double bond, the molar percentage of said fluoro-compound in the mixture being within the range of from 5% to 95% (col. 2, lines 5-60, col. 7, lines 1-5).
Disclosed small genus of fluoro-compounds includes 1,2-difluoroethyelene (capable of providing for a unit of claimed formula (1)), tetrafluoroethylene, 1,1-difluoroethylene, i.e., vinylidene fluoride, and 1-fluoroethylene (col. 6, lines 43-65).
Disclosed genus of other polymerizable compounds includes tetrafluoroethylene (TFE), methyl methacrylate (MMA), methacrylamide (MAM), ethylene, vinylidene fluoride etc. (col. 7, lines 10-47). It is noted that the Tg of corresponding homopolymers are ~117oC (PTFE), ~105oC (PMMA), and ~116oC (PMAM).
Joyce teaches a process for preparing high molecular weight having beneficial properties, e.g., high softening point, chemical resistance, insulating properties, moisture and corrosion resistance etc., Joyce teaches a process for the preparation of high molecular weight with beneficial properties, that the interpolymers are tough thermoplastics for molding into films, tapes and other shapes having and having advantageous properties and suitable for solution coating process (col. 2, lines 6-24, col. 12, lines 1-39).
Joyce is silent on a fluorine-containing polymer comprising structural unit of formula (1) partly or as a whole, said polymer having glass transition temperature and a weight average molecular weight as claimed.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05.
Given the teaching in Joyce on suitable fluoro-compounds and other polymerizable compounds for preparing the interpolymers, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare interpolymers by polymerizing any of the disclosed fluoro-monomers with the other polymerizable compound so as to provide for interpolymers of high purity to be capable of providing for maximum advantageous thereof, including those comprising claimed structural unit (1), and having the claimed glass transition temperature. For instance, a skilled artisan would have found it obvious to prepare an interpolymer of 1,2-difluoroethylene (as the fluoro-compound in 5% to 95 mol% range), with any of tetrafluoroethylene, methyl methacrylate (MMA) and methacrylamide (MAM) as the other polymerizable compound, or alternatively, from tetrafluoroethylene as the fluoro-compound and 1,2-difluoroethylene as the other polymerizable compound.
Additionally, given the teaching in Joyce on a process for the preparation of high molecular weight with beneficial properties, it would have been obvious to one of ordinary skill in the art prepare high molecular weight interpolymers, including those within the scope of claim 1 so as to provide for optimal properties, absent evidence of criticality for the claimed range. Case laws holds that if there is no evidence in the record pointing to any critical significance in a claimed molecular weight then the claims are not patentable over the prior art. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding claim 13, given the teaching in Joyce that dry powders of interpolymers may be manipulated to being dissolved (col. 11, lines 13-37), and use of the interpolymers for solution coating (col. 12, lines 1-39), a skilled artisan would reasonably expect high molecular weight interpolymers that overlap in scope with those of claim 1 to be capable of being dissolved in the claimed solvent, absent objective evidence to the contrary.
Regarding claim 16, a skilled artisan would have found it obvious to utilize 1,2-difluoroethylene of high purity so as to provide for interpolymers of high purity to enable maximum advantages thereof, absent evidence of criticality for the claimed level of purity that is reasonably commensurate in scope with the claim language.
Regarding claims 3 and 4, incorporating the discussion from paragraph 4 above, it is noted that the small genus of disclosed fluoro-compounds includes 1,2-difluoroethylene (capable of providing unit (1)), tetrafluoroethylene, 1,1-difluoroethylene (i.e., vinylidene fluoride, capable of providing units (2) and (4)), and 1-fluoroethylene (capable of providing unit (2)) (col. 6, lines 43-65). Disclosed genus of other polymerizable compounds includes 1,2-difluoroethylene (capable of providing unit (1)), tetrafluorethylene, vinylidene fluoride (capable of providing units (2) and (4)) and vinyl fluoride (capable of providing unit (2)) (col. 7, lines 10-47). Thus, compounds capable of providing for the claimed units are taught with sufficient specificity.
Joyce is silent on a fluorine-containing polymer comprising/consisting of the claimed structural units of formula (1) and formula (2) in a single embodiment.
Given the teaching in Joyce on suitable fluoro-compounds and other polymerizable compounds for preparing the interpolymers, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare interpolymers by polymerizing any of the disclosed fluoro-monomers with the other polymerizable compound to provide for interpolymers, including those comprising/consisting of the clamed units.
Regarding claim 5, the discussion on molecular weight from paragraph 8 above is incorporated herein by reference.
Regarding claim 6, incorporating the discussion on Joyce from paragraph 4 above, Joyce teaches a small genus of fluoro-compounds that includes 1,2-difluoroethylene and tetrafluoroethylene. Disclosed genus of other polymerizable monomers also includes 1,2-difluoroethylene and tetrafluoroethylene. Thus, Joyce teaches monomers that are capable of providing for the claimed units with sufficient specificity. Joyce further teaches that dry powders of interpolymers may be manipulated to being dissolved (col. 11, lines 13-37), and use of the interpolymers for solution coating (col. 12, lines 1-39),
Joyce is silent on a copolymer consisting of claimed units and having a solubility in acetone as claimed.
Given the teaching in Joyce on 1,2-difluoroethylene and tetrafluoroethylene as suitable fluoro-compounds and as suitable other monomers, the teaching that dry powders of the interpolymers may be manipulated to dissolve and the use of the interpolymers for solution coating, it would have been obvious to a skilled artisan, as of the effective filing date of the claimed invention, to prepare an interpolymer consisting of claimed units, including those having a solubility in acetone as claimed, absent objective evidence to the contrary.
Claims 1, 3-6, 10, 11, 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Feiring et al. (US 5,182,342, of record).
Regarding claims 1, 13-14, Feiring teaches a process comprising polymerizing fluoromonomers to provide for polymers useful as thermoplastics and elastomers (Ab.), wherein the said fluoromonomers may be 1,2-difluoroethylene (capable of providing unit (1)), tetrafluoroethylene, vinylidene fluoride etc. (col. 2, line 54-col. 3, line 42, ref. claim 4). It is noted that tetrafluoroethylene (TFE) homopolymer (PTFE) has a Tg of ~117oC.
Feiring teaches choosing solvents for polymerization that are capable of providing for high molecular weight, and controlling the molecular weight through the use of chain transfer agents (col. 6, lines 3-23).
Feiring is silent on a fluorine-containing copolymer comprising claimed structural unit (1) partly or as a whole, having a glass transition temperature and a weight average molecular weight as claimed.
As stated in paragraph 6 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Given the teaching on 1,2-difluoroethylene and tetrafluoroethylene as suitable monomers for forming homopolymers and copolymers, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a homopolymer of 1,2-difluoroethylene, or a copolymer thereof with tetrafluoroethylene. Additionally, a skilled artisan would have found it obvious to prepare such high molecular weight homopolymers/ copolymers from monomers of high purity to derive maximum advantages of the thermoplastic/elastomeric (co)polymers, and reasonably expect polymers of overlapping scope to have the claimed Tg as recited in claim 1, and a solubility as in claim 13, absent evidence to the contrary. As stated in paragraph 8 above, if there is no evidence on record pointing to any critical significance in a claimed molecular weight then the claims are not patentable over the prior art.
Regarding claim 15, Feiring teaches that a monomer such as 1,2-difluoroethylene may be used for forming homopolymers (col. 3, lines 12-15).
Regarding claim 16, Feiring recognizes in the background section that contaminants/many organic compounds can be undesirable during polymerization of monomers having vinylic fluorine, contributing to chain transfer and chain termination resulting in polymers with low yield and/or low molecular weight (col. 1, lines 18-32). Thus, a skilled artisan would have found it obvious to form high molecular homopolymers and copolymers from 1,2-difluoroethylene of high purity as in the claimed invention, absent evidence of criticality that is reasonably commensurate in scope with the claim language.
Regarding claims 3 and 4, the discussion on Feiring from paragraph 18 above is incorporated herein by reference.
Although Feiring is silent on a polymer comprising/consisting of claimed units in a single embodiment, given the teaching on 1.2-difluoroethylene and vinylidene fluoride as suitable fluoromonomers for preparing homopolymers and copolymers, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare copolymers comprising/consisting of 1,2-difluoroethylene and vinylidene fluoride units that fall within the scope of the claimed invention.
Regarding claim 5, Feiring teaches choosing solvents for polymerization that are capable of providing for high molecular weight, and controlling the molecular weight through the use of chain transfer agents (col. 6, lines 3-23). Thus, it would have been obvious to a skilled artisan to provide for high molecular weight polymers, including those of the claimed invention, absent evidence of criticality for the claimed range. if there is no evidence in the record pointing to any critical significance in a claimed molecular weight then the claims are not patentable over the prior art.
Regarding claim 6, incorporating the discussion on Feiring from paragraph 18 above, Feiring teaches a small genus fluoromonomers that includes 1,2-difluoroethylene (capable of providing unit (1)), tetrafluoroethylene, vinylidene fluoride, hexafluoropropylene etc., i.e., equivalence thereof, to form homopolymers or copolymers (col. 2, line 54-col. 3, line 16, ref. claim 4). Additionally, Examples in Table 2 are drawn to copolymers of tetrafluoroethylene and hexafluoropropylene (HFP), with the wt.% of HFP as detected by the IR included in Table 2.
Although Feiring is silent on a copolymer having a solubility as claimed, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to substitute any of tetrafluoroethylene and hexafluoropropylene of copolymers in Table 2 with 1,2-difluoroethylene, based on their art recognized equivalence. Furthermore, modification of copolymers in Table 2 would provide of copolymers consisting of 1,2-difluoroethylene and tetrafluorethylene, and a skilled artisan would reasonably expect such copolymers to have a solubility as in claim 6, absent evidence to the contrary.
Regarding claims 10 and 11, incorporating the discussion on Feiring from paragraph 18 above, Feiring teaches a small genus fluoromonomers that includes 1,2-difluoroethylene, tetrafluoroethylene, perfluoro(methyl vinyl ether), perfluoro(propyl vinyl ether) etc. (col. 2, lines 54-67). Disclosed Examples 14 and 21 teach a copolymer of tertrafluoroethylene-perfluoro(propylvinyl ether).
Although Feiring is silent on a polymer comprising units as claimed in ae single embodiment, given the teaching on equivalence of 1,2-difluoroethylene, tetrafluoroethylene, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to substitute tetrafluoroethylene with 1,2-difluoroethylene to provide for copolymers comprising units of 1,2-difluoroethylene and perfluoro(propylvinyl ether), and reasonably expect them to be amorphous and have the claimed Tg, absent evidence to the contrary.
Allowable Subject Matter
Claim 7-9 are allowed.
Claims 12 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
In view of the amendment and/or arguments dated 2/19/26, the 112(b) rejections, and the art rejections based on Zeng et al. and Kappler et al. are all withdrawn. Applicant’ s arguments have been duly considered.
Regarding claim 1:
Citing the non-patent literature to Durrelle et al. for a teaching on Tg of 1,2-difluoropropylene homopolymer (of 50oC), and referring to the inherency statement made in the rejections using Zeng reference, Applicant argues that the prior art Tg is different from 113.0oC and 112.4oC, reported in Table 1 of the instant disclosure and therefore, Examiner’s inherency argument does not stand.
In response, Applicant’s arguments are moot because rejections based on Zeng have been withdrawn.
Applicant further argues that Examiner’s reliance on the Tg of PTFE as ~117oC is unsupported by any citation, and the basis for this assertion is unclear, and that the invention according to claim 1 would not have been obvious over Joyce and Feiring.
In response, as an initial matter, it is noted that the basis for a Tg of ~117oC for PTFE (as stated in the rejections based on Joyce et al. and Feiring et al.) is the evidence link “Thermal Transitions of Homopolymers: Glass Transition & Melting Point”, typically consulted and easily accessible online for glass transition temperatures of commonly known homopolymers.
Additionally, even without relying on the instant disclosure, Joyce’s interpolymers and Feiring’s copolymers would be capable of providing for the claimed lower limit of Tg, absent objective evidence to the contrary. For reasons stated in the rejections of record and presented herein above, Joyce and Feiring both render obvious, for e.g., a (co)polymer of 1,2-difluoroethylene and tetrafluoroethylene, wherein Joyce’s interpolymer may include 5 mol% 1,2-difluoroethylene, i.e., 95 mol% tetrafluoroethylene. Feiring’s may include as little as 1% 1,2-difluoroethyene (either as wt.% or mol%) (col. 3, lines 39-42). As an example, even if a skilled artisan were to rely on Durelle’s teaching of 50oC as the Tg of 1,2-difluorethylene homopolymer, Joyce’s interpolymers, for instance, of 5 mol% 1,2-difluoroethylene (Tg of homopolymer is 50oC per Durelle) and 95 mol% TFE (Tg of PTFE per Sigma link is 117oC), would have a theoretical calculated Tg (by Fox equation) of about 114.5oC.
Regarding Claim 3:
Applicant argues that Joyce does not disclose a structural unit wherein R1 is OR5 in claimed formula (2) wherein R5 is partly or wholly fluorinated hydrocarbons, that when R1 is H in the claimed formula (2), and that Joyce does not teach acetone or DMF solubility as seen with Synthesis Examples in Table 1 in the present specification. Referring to Example VII in Joyce drawn to a copolymer tetrafluoroethylene/vinyl fluoride and to other literature Documents that teach the chemical resistance of homopolymers of corresponding comonomers, Applicant concludes that the acetone and/or DMF solubility of the invention would not have been predictable from Joyce.
In response, it is noted that the rejections previously set forth or those herein above do not state or rely on Joyce for R1 as OR5 of claimed formula (2). The rejections rely on R1 as H because Joyce teaches with sufficient specificity vinyl fluoride or vinylidene fluoride as a fluoro-monomer or as a polymerizable other monomer species. More importantly, claim 3 does not require that the claimed fluorine-containing polymer be soluble in acetone or DMF, nor does Joyce explicitly teach insolubility of the interpolymers in such solvents. Rather, Joyce teaches further manipulations of the interpolymers, such as dissolving them (col. 11, lines 29-38). Even so, a skilled artisan would reasonably expect Joyce’s interpolymers formed from monomers as claimed and of high purity to be capable of having such a solubility, because materials and their properties are inseparable.
Additionally, although arguments on Example VII in Joyce (drawn to tetrafluoroethylene/vinyl fluoride interpolymer) and supporting Documents 1 and 2 to present a case why such an interpolymer of Example VII would not be soluble in acetone or DMF, they are not deemed persuasive because Joyce clearly teaches interpolymers of high molecular weight that may include units of 1,2-difluoroethylene and either vinylidene fluoride or vinyl fluoride to provide for a copolymer as in the claimed invention. The polymer of Example VII is only a preferred embodiment in Joyce. As such, a teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. 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 Feiring, Applicant argues that the specific combination of structural units could not have been derived from Feiring, that the Examples in the present specification show that copolymers with R1 as OR5 have acetone solubility, that copolymers and R1 as H have DMF solubility and that that Feiring does not disclosed solubility in DMF or acetone.
Incorporating relevant portions from the responses to arguments on Joyce, claim 3 does not require any specific solubility, Feiring patent disclosure teaches copolymers that may include the structural units of claim 3, and the reasoning with cited documents 1 and 2 are not persuasive because Feiring’s copolymers may include monomer units as claimed. Moreover, as skilled artisan would have found it obvious to prepare polymers of high purity that would be capable of having a solubility in acetone or DMF because materials and their properties are inseparable, absent evidence to the contrary.
Claim 4
Citing to a portion from col. 2 of Joyce for its teaching on explosive reactions with monomer mixtures with high proportions of fluoroethylenes, Applicant concludes that Joyce teaches modifying the polymer compositions to those consisting of claimed units.
In response, the cited portion refers to Joyce’s teaching in the background section on prior art processes that require polymerization processes involving conditions such as an organic solvent, peroxy initiators, relatively high pressures and high temperatures to obtain high yields. However, in column 2, line 6 onwards, Joyce states - “The invention has as an object a process for the preparation of interpolymers of fluoroethylenes in finely divided form and wet by the reaction medium. A further object is to provide a process for the preparation of such interpolymers by which high molecular weight interpolymers are obtained at temperatures and pressures markedly lower than those necessary to obtain interpolymers of comparable properties using the prior art processes, with attendant operational improvements, decrease of explosion hazards and beneficiation of interpolymer properties”. Joyce then goes on to teach specific monomers for forming the interpolymers that encompass the claimed species. Examiner disagrees with Applicant’s conclusion and maintains that there is no explicit teaching in Joyce that teaches away from preparing polymers consisting of units as in the claimed invention. More importantly, the interpolymer in Example VII of Joyce is derived exclusively from fluoro compounds, i.e., an interpolymer of tetrafluoroethylene/vinyl fluoride.
Applicant further argues that Feiring merely discloses, as part of long list of examples, vinylidene fluoride, 1,2-difluoroethylene, and perfluoro(methyl vinyl ether), and that the specific combination of claim 4 could not have been derived from Feiring. Applicant reiterates arguments on solubility of exemplified polymers in the present disclosure.
In response, as stated above, the polymer of claim 4 does not require any specific level of solubility in DMF and/or acetone. Even so, Feiring teaches the claimed monomers with sufficient specificity for preparing the copolymers. Incorporating the responses above on the relevance of the cited documents 1 and 2 in the present context, Examiner maintains that Feiring’s copolymers of overlapping scope formed from high purity monomers would be capable of being soluble in acetone and DMF.
Claim 6
Applicant refers to polymer claim 1 of Joyce as requiring ethylene as an essential comonomer. Alluding once again to the portion on explosive reactions in Joyce, Applicant is of the position that Joyce teaches away from a copolymer consisting of fluoromonomer units, and modifying Joyce to arrive at the claimed polymer consisting of structural unit of formula (1) and tetrafluoroethylene is taught away by Joyce.
In response, incorporating discussions from paragraphs 36 and 37 above, claim 1 in Joyce requiring ethylene as a comonomer is only a preferred embodiment of Joyce. More importantly, Applicant’s attention is directed to col. 7 in Joyce, that teaches examples of polymerizable compounds for interpolymerizing with a compound of the disclosed formula (which may be 1,2-difluoroethylene). It is noted that ethylene is only one of the cited monomers, as an alternative species, and nowhere in the disclosure does Joyce disclose or suggest that ethylene is necessarily a required component for the interpolymers to practice the invention. Additionally, and more importantly, the interpolymer in Example VII of Joyce is derived exclusively from fluoro compounds, i.e., an interpolymer of tetrafluoroethylene/vinyl fluoride.
Applicant’s arguments on Feiring have been considered and are not deemed persuasive. As clarified in the rejections above, Feiring teaches 1,2-difluoroetheylene, tetrafluoroethylene and hexafluoropropylene as equally suitable fluoromonomers in a small genus of monomers (col. 2-3, bridging paragraph, ref. claim 4). Thus, a skilled artisan would have also found to obvious to substitute hexafluropropylene with 1,2- difluoroethylene to provide for a copolymer of the claimed invention, and reasonably expect it to be capable of dissolving in acetone as claimed. Moreover, the Fiering disclosure is open to other ranges of monomer amounts. Arguments of the referenced Document have been responded to herein above and the discussion is incorporated herein by reference (see paragraph 36).
Claim 10
Applicant argues that Feiring does not disclose amorphous properties or the claimed glass transition temperature, that Feiring’s Examples 14-19 are directed to tetrafluoroethylene-PPVE copolymers, with PPVE content ranging from 1.9 to 3.8%. Drawing an analogy to Examples in the present specification based on 1,2-difluoroethylene and PMVE and based on the trend of crystallinity% with increasing PMVE, Applicant concludes that the Examples 14-19 in Feiring would not be amorphous.
In response, it is to be noted that PMVE and PPVE are different monomers, differing the carbon chain length and the trend on crystallinity based on PMVE comonomer need not necessarily apply to those of PPVE, absent objective evidence to the contrary. Even so, it is to be noted that the general disclosure to Feiring teaches equivalence of fluoromonomers, i.e., of 1,2-difluoroethylene and perfluoro propylvinyl ether, and may be useable in equivalent amounts in copolymers, and Examples in Feiring are only preferred embodiments.
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights