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 .
Terminal Disclaimer
The terminal disclaimer filed on 2 January 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent(s) which may issue from U.S. Patent Applications 18/191,996; 18/192,052 or 18,192,011 has been reviewed and is accepted. The terminal disclaimer has been recorded and the double patenting rejection based on those applications in the previous office action are withdrawn.
Response to Arguments
The Declaration of Tadaharu Isaka under 37 CFR 1.132 filed 2 January 2026 is insufficient to overcome the rejection of claims 1-7 based upon Imamura et al. as set forth in the last Office action because: The affidavit simply repeats some of the results from the instant specification and includes the assertion that the prior art would not have the requisite properties based on Comparative Example 1 of the instant specification. The nexus between the properties and the composition and/or processing of the prior art and the comparative example referred to is not readily apparent. The declaration fails to provide evidence based on the prior art product, and is only a statement of opinion. In any event, the properties to which applicant refers are not taken to impart a patentable difference to the instant claims as the prior art teaches more general ranges for the monomer contents, such as polymers with the same chemistry as the claims as amended (TFE of 94-96mass%) and therefore the prior art is taken to teach a composition for a sealing member which would necessarily have the claimed properties (see MPEP 2112.01 below).
Applicant argues the Examiner’s position regarding the prior art composition overlapping the claimed composition to set forth prima facie obviousness is reversable because applicant alleges that the claimed composition has unexpected results corresponding to Examples 1-10 in the present specification.
However, the Examiner notes MPEP 716.02(d) - Unexpected Results Commensurate in Scope with Claimed Invention: Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.
In the instant case, the claims cannot be taken to be commensurate in scope with the Examples as alleged for at least the reason that the gasket tested in the instant specification for water vapor leakage and moldability is only exactly 1.6 mm thick and only contains PFE and PPVE and nowhere in the instant Examples shown or evaluated in the specification in a manner which would support a gasket of only 0.5mm which has a sealing area of 100 sq ft (which is embraced by the claim) to have properties which would be desirable and/or unexpected in a manner which could give the claimed range a secondary consideration to overcome the asserted obviousness. Further, the sealing member of the instant claims allows for additional monomer components, such as by including 4% PPVE, 94% TFE and 2% of any other monomer unit (in mass – such as in the prior art) whereas the instant specification only tests co-polymer which consist of PPVE and TFE. The claim also allows for any total number of functional groups over 50, whereas the instant Examples only appear to reach 312, where the comparative Examples have higher values. The Examiner notes that inventive Examples 5 includes <6 functional groups and has what are designated as desirable properties.
Therefore, the rejection based on the prior art of record is maintained and made FINAL. Further, as the claims lack secondary considerations, the ODP rejections of the previous office action are maintained as the compositional and property ranges of the instant claims and the co-pending applications still substantially overlap.
Relevant MPEP Sections
MPEP 2112.01 relating to Composition, Product, and Apparatus Claims: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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.
The following is a section from the MPEP 2144.05 concerning the obviousness of ranges: In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Claims 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al. (US Pub 2016/0319089 of record from IDS).
Regarding claim 1 and 6, Imamura teaches a power storage assembly comprising a sealing member (paragraph [0184] – gasket for a secondary battery) containing a copolymer of tetrafluoroethylene (TFE), perfluoro(propyl vinyl ether) (PPVE), and perfluoro(1,1,9,9-tetrahydro-2,5-bistrifluoromethyl-3,6-dioxanonenol) (OH— and fluorine-containing allyl ether) (TFE/PPVE/OH- and fluorine-containing allyl ether = 92.0/4.5/3.5 (mass %), a MFR is 30 g/10 min (Examples 13 and 14, paragraph [0177]), and the functional groups such as -CH2OH are present in the amount such as 4251 per 10° carbon atoms (paragraph [0178]) which may be formed in/from sheets having a thickness of 0.01 to 10mm (paragraph [0139]) which overlap the claimed ranges in a manner which provides a prima facie case of obviousness (see MPEP 2144.05).
In regard to the amendment and new claim 8, while the prior art teaches an Example as referenced above, the prior art more generally teaches in paragraph [0087] “If the TFE/HFP copolymer is a copolymer including a TFE unit, a HFP unit, and a PAVE unit (hereinafter, also referred to as a “TFE/HFP/PAVE copolymer”), the mass ratio (TFE/HFP/PAVE) is preferably (70 to 99.8)/(0.1 to 25)/(0.1 to 25) (mass %). The copolymer having a mass ratio within the above range is excellent in heat resistance and chemical resistance.” Therefore, the ranges disclosed by the prior art substantially overlap the claimed ranges for the material composition and would therefore reasonable be expected to have the claimed properties including MFR at various temperatures (MPEP 2112.01 above). In any event, the material disclosed by prior art Examples is taken to include a composition and properties that are close enough the claimed ranges of composition and properties that a prima facie case still exists (see MPEP 2144.05).
While the prior art does not disclose a sealing area of the gasket, selecting a gasket size for a particular application is an obvious as changes to size and shape of the prior art gasket are an obvious modification absent evidence to the contrary (see MPEP 2144.04 Part IV). Further, while no particular amount of compression is disclosed, the gasket of the prior art is indistinguishable from the claimed gasket and capable of being compressed and/or have a compression deformation rate of 20 to 60% (MPEP 2112.01). A person of ordinary skill the art would appreciate that the compression forces on a gasket varies depending on the conditions the power storage assembly is exposed too (i.e. temperature, exterior pressure and pressure within the power storage assembly).
In regard to claim 2, the copolymer has a melting point preferably 315°C or lower (paragraph [0073] which overlap the claimed ranges in a manner which provides a prima facie case of obviousness (see MPEP 2144.05).
In regard to claim 3 and 4, the copolymer preferably has a high heat resistance (paragraphs [0160 and 0184]) which is taken to overlap the claimed range which does not include an upper limit in a manner which provides a prima facie case of obviousness (see MPEP 2144.05). Further, as gasket composition of the prior art and the instant claims are indistinguishable, material properties such as “quantity of heat of melting” or fluorine content are taken to present in the prior art (MPEP 2112.01 above).
In regard to claim 5, the gasket is a molded article [0137-0143]). The prior art is open to any form of molding, and the particular method of formation relates to a product by process limitation and does not structurally distinguish the claims from the prior art (see MPEP 2113).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al. as applied to claim 6 and further in view of Kurata et al. (US Pub 2011/0052977 of record from IDS).
In regard to claim 7, Imamura et al. teach the power storage assembly according to claim 1, but do not specifically show the gasket in a battery. However, Kurata et al. teach a similar power storage assembly (a battery) comprising: an exterior can 1; an electric element 2 housed in the exterior can; a lid 5 to close an opening of the exterior can; and an external terminal 14 installed on the lid, wherein an injection molded PFA copolymer gasket 12 is held between the lid and the external terminal (figure 1, paragraphs [0020-0043]) because such a structure prevents short circuits.
Therefore, it would have been obvious to one of ordinary skill in the art at the before the effective filing date of the claimed invention filed to locate the gasket between the lid and external terminal in the power storage assembly of Imamura et al. as such prevents short circuits as taught by Kurata et al.
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 1-8 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-19 of co-pending Application Nos. 17/679,789 and claims 1-8 of co-pending Application Nos. 17/679,831.
The instant claims and the co-pending claims are all attempting to claim a power storage assembly comprising a molded gasket or sealing member containing a copolymer containing tetrafluoroethylene unit and a perfluoro(propyl vinyl ether) unit, wherein the copolymer has a content of the perfluoro(propyl vinyl ether) unit of around 4.5% by mass with respect to the whole of the monomer units, a melt flow rate of around 5 to 36 g/10 min, and the number of functional groups of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH of more than 50 per 106 main-chain carbon atoms, wherein the gasket or sealing member has a thickness of 0.5 to 2.5 mm.
The ranges in the co-pending claims overlap the claimed range in a manner which establishes a prima facie case of obviousness. This is a provisional nonstatutory double patenting rejection however the Examiner notes the applications listed above have been allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub 2019/0273240, teaches a compressed gasket structure for a secondary battery (see figures), relevant to instant invention. USP 8,252,458, newly cited, teaches temperature resistance properties for battery sealing members.
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 Nicholas P D'Aniello whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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, Tong Guo can be reached at 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723