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
Claims 8 and 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected power storage assembly, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/26/2025.
Claim Rejections - 35 USC § 103
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 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(s) 1-7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hosoda et al (2016/0078979.
Hosoda et al disclose an insulating tape comprising a fluorinated resin film which can be molded (by known methods which would include transfer and injection molding in addition to press and extrusion molding [0082], [0119] as well known in the art; instant claim 7) and has a melting point of 220 to 320, preferably 260 to 320, most preferably 280 to 315 o C, (abstract, [0078], claims 1 and 2; instant claim 4). The polymer preferably comprises polymer (A) which preferably comprises (A1), a tetrafluoroethylene (TFE; unit (a)) and perfluoro(alkyl vinyl ether) (PPVE; unit (c)) ([0050]-[0060]). The units of (c) which including PPVE are preferably present in the polymer in an amount of 0.01 to 5 mol % ([0060]), which when calculated, would overlap the lower end of the claimed mass % (~2.7 to 3 given various monomers) meeting the limitations of the instant claim 1.
The number of functional groups is 10 to 60,000 to 1 X 106 carbon atoms, preferably 300 to 5,000 (greater than 50, claim 4; instant claim 1). The melt flow rate may be 0.1 to 1,000 g/10 min, preferably 0.5 to 100 g/10 min, and more preferably 1 to 30 g/10min (0084]). The thickness of the insulating tape is 3 to 3,000 microns (0.003 to 3mm), preferably 15 to 1500 (0.015 to 1.5 mm) microns, more preferably 25 to 750 microns (0.025 to 0.75 mm), overlapping the claimed range as set forth by the instant claim 2 ([0018], [0121]).
With respect to the instant claim 3, the claim presents a limitation drawn to the sealing area of the sealing member, the reference is silent. However, given that the reference material is drawn to a molded fluororesin film-coated insulating member wherein the resin layer seals the insulating layer to protect electric cables and parts and the like ([0003]), [0185]), the sealing area appropriate for the electric part and the sealing area is an obvious modification to seal and protect parts of various sizes based upon the particular application absent evidence to the contrary.
With respect to the limitations of the instant claim 5 for the heat of melting of the copolymer, the resin of the reference teaches units similar to those as instantly claimed, and in amounts falling within the scope of the instant claims and teachings of the specification. Therefore, given the similarity of the reference material and that of the instant claims, one of ordinary skill in the art would have expected the material of the reference to possess similar properties and therefore meet the limitations of the instant claim 5.
With respect to the limitations of the instant claim 6 for fluorine content of the copolymer, the resin of the reference teaches units similar to those as instantly claimed, and in amounts falling within the scope of the instant claims and teachings of the specification. Therefore, given the similarity of the reference material and that of the instant claims, one of ordinary skill in the art would have expected the material of the reference to possess similar properties and therefore meet the limitations of the instant claim 6.
Furthermore, with respect to the instant claim 10, the claim is drawn to a sealing member product, but the claim presents an intended use limitation “ wherein the sealing member is in a state of being compressed”. The sealing member itself may be capable of being compressed and possessing a compression deformation rate when used and compressed, but as described by the specification, this property is drawn to when the sealing member is actively compressed and used to seal (such as a gasket in a battery lid similar to figures 2 and 3). Therefore, this is an intended use limitation. However, the claim will be interpreted for examination as possessing this property when compressed, therefore the material of the reference is capable of compression and possessing the deformation rate property. With respect to the limitations of the instant claim 10 for the compression deformation rate, the resin of the reference teaches units similar to those as instantly claimed, and in amounts falling within the scope of the instant claims and teachings of the specification. Therefore, given the similarity of the reference material and that of the instant claims, one of ordinary skill in the art would have expected the material of the reference to possess similar properties and therefore meet the limitations of the instant claim 10.
Given the teachings of the reference, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the instant invention to prepare the material of Hosoda et al, choosing as the fluororesin, that having an amount of vinyl ether units and a melt flow rate falling within the scope of the instant claims as taught by the reference and discussed above, wherein the resultant material also meets the limitations of the instant claims.
Claim(s) 1-7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al (2016/0319089).
Imamura et al disclose a fluorine-containing copolymer comprising tetrafluoroethylene (TFE) and fluoro (alkyl vinyl ether) (PAVE) having 10 to 10,000 functional groups in total per 106 carbon atoms. Preferably 500 (abstract, [0025], [0044], claim 1; instant claim 1). The functional groups are chosen from those claimed in the instant claim 1 ([0046], claims 2; instant claim 1).
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The polymer comprises 1 to 10 mass% PAVE units, more preferably 2% or more and preferably 8% or less. Examples 13 and 14 in [0177] demonstrate a polymer wherein the TFE/ PAVE monomer/ allyl ether comprises the units in mass percentages of 92/ 4.5/ 3.5, thus directing one of ordinary skill in the art to prepare the polymer having a mass % of the PAVE unit in an amount falling within the range taught by the reference and the resultant polymer also fall within the scope of the instant claim 1.
The melting point is preferably 290 to 315 o C ([0072], [0073]; instant claim 4), and the melt flow rate falls within the scope of the instant claim 1 as described in examples 13 and 14 above (30 g/ 10 min).
Therefore, Imamura et al teach that invention as set forth by the instant claims 1 and 4.
The resin is prepared into a sheet or molded article (injection molding, transfer molding; [0120]), and should have a thickness of 0.01 to 10 mm ([0138]-[0142]; instant claim 2, 7). The range of the reference overlaps that as claimed, and one of skill in the art would have been motivated to prepare the material in any thickness within the cited range, including the portion which overlaps with the claimed range as set forth by the instant claim 2.
With respect to the instant claim 3, the claim presents a limitation drawn to the sealing area of the sealing member, the reference is silent. However, given that the reference material is drawn to a molded fluororesin article for electric coating wires, gaskets, optical lens parts, electronic parts and packings and seals ([0142]), the sealing area appropriate for use and seal and protect parts of various sizes based upon the particular application absent evidence to the contrary.
With respect to the limitations of the instant claim 5 for the heat of melting of the copolymer, the resin of the reference teaches units similar to those as instantly claimed, and in amounts falling within the scope of the instant claims and teachings of the specification. Therefore, given the similarity of the reference material and that of the instant claims, one of ordinary skill in the art would have expected the material of the reference to possess similar properties and therefore meet the limitations of the instant claim 5.
With respect to the limitations of the instant claim 6 for fluorine content of the copolymer, the resin of the reference teaches units similar to those as instantly claimed, and in amounts falling within the scope of the instant claims and teachings of the specification. Therefore, given the similarity of the reference material and that of the instant claims, one of ordinary skill in the art would have expected the material of the reference to possess similar properties and therefore meet the limitations of the instant claim 6.
Furthermore, with respect to the instant claim 10, the claim is drawn to a sealing member product, but the claim presents an intended use limitation “ wherein the sealing member is in a state of being compressed”. The sealing member itself may be capable of being compressed and possessing a compression deformation rate when used and compressed, but as described by the specification, this property is drawn to when the sealing member is actively compressed and used to seal (such as a gasket in a battery lid similar to figures 2 and 3). Therefore, this is an intended use limitation. However, the claim will be interpreted for examination as possessing this property when compressed, therefore the material of the reference is capable of compression and possessing the deformation rate property. With respect to the limitations of the instant claim 10 for the compression deformation rate, the resin of the reference teaches units similar to those as instantly claimed, and in amounts falling within the scope of the instant claims and teachings of the specification. Therefore, given the similarity of the reference material and that of the instant claims, one of ordinary skill in the art would have expected the material of the reference to possess similar properties and therefore meet the limitations of the instant claim 10.
Claim(s) 1-7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al (2017/0260344).
Imamura et al disclose a molded article comprising a fluororesin comprising tetrafluoroethylene (TFE)/ perfluoro (alkyl vinyl ether) (PAVE)(claim 6), wherein the resin comprises 500 or less functional groups per 106 carbon atoms in the main chain (claim 7; examples 19-21 have 60), and wherein the PAVE units are present in 1 to 10% by mass, preferably 3.5, more preferably 4%, to 60 mass % ([0092]), with examples at 3.1 (examples 9-11 and 15-18), 3.4 (19-21), meeting the limitations of the instant claim 1. The melt flow rate is preferably 0.1 to 100 g/ 10 min, more preferably 5 g/10 min to 40 g/ 10 min ([0093]).
One of ordinary skill in the art would have been motivated prior to the effective filing date of the instant invention to prepare the resin comprising a number of functional groups and amount of PAVE units falling within the scope of the instant claims, as the ranges taught by the reference overlap that clamed ranges, with examples 19-21 falling within the scope of each range.
The thickness of the article is from 0.01 to 3 mm, preferably 0.5 and 2.0 mm or smaller (claim 2, [0049], [0118]), wherein the range overlaps the range set forth by the instant claim 2
The melting point is from 280 to 322 o C, more preferably 290 to 315 o C ([0053], [0062], [0063]; instant claim 4).
With respect to the instant claim 3, the claim presents a limitation drawn to the sealing area of the sealing member, the reference is silent. However, given that the reference material is drawn to a molded fluororesin article for electric coating wires, gaskets, optical lens parts, electronic parts and packings and seals ([0152]), the sealing area appropriate for use and seal and protect parts of various sizes based upon the particular application absent evidence to the contrary.
With respect to the limitations of the instant claim 5 for the heat of melting of the copolymer, the resin of the reference teaches units similar to those as instantly claimed, and in amounts falling within the scope of the instant claims and teachings of the specification. Therefore, given the similarity of the reference material and that of the instant claims, one of ordinary skill in the art would have expected the material of the reference to possess similar properties and therefore meet the limitations of the instant claim 5.
With respect to the limitations of the instant claim 6 for fluorine content of the copolymer, the resin of the reference teaches units similar to those as instantly claimed, and in amounts falling within the scope of the instant claims and teachings of the specification. Therefore, given the similarity of the reference material and that of the instant claims, one of ordinary skill in the art would have expected the material of the reference to possess similar properties and therefore meet the limitations of the instant claim 6.
Furthermore, with respect to the instant claim 10, the claim is drawn to a sealing member product, but the claim presents an intended use limitation “ wherein the sealing member is in a state of being compressed”. The sealing member itself may be capable of being compressed and possessing a compression deformation rate when used and compressed, but as described by the specification, this property is drawn to when the sealing member is actively compressed and used to seal (such as a gasket in a battery lid similar to figures 2 and 3). Therefore, this is an intended use limitation. However, the claim will be interpreted for examination as possessing this property when compressed, therefore the material of the reference is capable of compression and possessing the deformation rate property. With respect to the limitations of the instant claim 10 for the compression deformation rate, the resin of the reference teaches units similar to those as instantly claimed, and in amounts falling within the scope of the instant claims and teachings of the specification. Therefore, given the similarity of the reference material and that of the instant claims, one of ordinary skill in the art would have expected the material of the reference to possess similar properties and therefore meet the limitations of the instant claim 10.
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 1-7 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, and 9, of Application No. 17/679789, claims 1-5, 7, 9-11, of Application No. 17/679831, claims 1-7, of Application No. 18/191996, claims 1-7, of Application No. 18/192011, and claims 1-6, of Application No. 18/192077 (reference applications). Although the claims at issue are not identical, they are not patentably distinct from each other because the cited copending applications each claims the instantly claimed sealing member by setting forth limitations to sealing members or gaskets comprising polymers having the same types of units (TFE/PPVE) in unit amounts overlapping the range as claimed, having a number of functional groups of 50 per 106 main chain carbon atoms or more, and a melt flow rate as instantly claimed. The applications each further claim the thickness, melting point and either claim or would inherently possess the claimed sealing area, quantity of heat melting, fluorine content, and compression rate, wherein it would have been obvious to one of ordinary skill in the art to prepare the material of any of the applications cited above, wherein the resultant material would also meet the limitations of the instant claims 1-7 and 10 for the claimed sealing member.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA C WALKE whose telephone number is (571)272-1337. The examiner can normally be reached Monday to Thursday 5:30am to 4pm.
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/AMANDA C. WALKE/ Primary Examiner, Art Unit 1722