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 .
This application is a Continuation of application No. PCT/JP2021/042684, filed on Nov. 19, 2021.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. JP 2020-192859 filed 11/19/2020, which papers have been placed of record in the file.
Claims 1-12 are pending.
Election/Restrictions
Applicant’s election without traverse of Group II Claims 5-12 in the reply filed on 1/26/2026 is acknowledged.
Claim Rejections - 35 USC § 102
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 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 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nanba et al. (WO 2019/168183).
While WO 2019/168183 is cited for prior art purposes, US 2020/0392266 is referred to in the body of the rejection below.
Regarding claim 5: Nanba is directed to a composition comprising a polytetrafluoroethylene having an aspect ratio of a primary particle of less than 1.9 ([0796] Nanba) having a weight average molecular weight of at least 1.0x104 or more, and 150x104 or less ([0163]).
A content of all polymerization units (1) is 90 mol% or more based on all polymerization units constituting the polymer (1) (see Claims 5 and 9 of Nanba).
Example 1 contains a polymerization unit of CF2=CFOCF2CF2COONH4 (equivalent to polymer (1) in an amount of 40 mol% or more and has a Mw of 19x104.
Regarding claim 6: The monomer includes A is -COOM (see claim 7 of Nanba).
Regarding claim 7: A modifying unit is disclosed ([0388] Table 1 Nanba).
Claim Rejections - 35 USC § 102/103
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.
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 9-11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nanba et al. (WO 2019/168183).
Regarding claim 9: Nanba is directed to a composition comprising a polytetrafluoroethylene having an aspect ratio of a primary particle of less than 1.9 ([0796] Nanba) having a weight average molecular weight of at least 1.0x104 or more, and 150x104 or less ([0163]).
A content of all polymerization units (2) is 90 mol% or more based on all polymerization units constituting the polymer (1) (see Claims 5 and 9 of Nanba).
Example 1 contains a polymerization unit of CF2=CFOCF2CF2COONH4 in an amount of 40 mol% or more and has a Mw of 19x104.
A ion exchange capacity is not mentioned.
However, the polytetrafluoroethylene polymer produced in Nanba is substantially identical to the polytetrafluoroethylene polymer produced in Nanba.
Case law holds that 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). MPEP 2112.01(I).
Hence, Nanba suggests a polymer (2) having an ion exchange capacity within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
A rejection under 35 USC 102/103 is appropriate “[w]hen the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Regarding claim 10: The monomer includes A is -COOM (see claim 7 of Nanba).
Regarding claim 11: A modifying unit is disclosed ([0388] Table 1 Nanba).
Claims 8, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nanba as applied to claims 5 and 9 above, and further in view of Zhang et al. (US 6,774,270).
Regarding claims 8, 12: Nanba doesn’t mention dimer or trimer content.
Zhang is directed to a method of removing dimers and trimers from a fluid. The method comprises heating the crude fluoropolymer, contacting the fluid with a tertiary amine or salt, and separating the adducts from the reaction mixture (col. 2 ll. 19-28 and working examples of Zhang). Working Example 10 demonstrates reduction in dimers and trimers to less than 10 ppm and less than 0.1 wt% trimers. One skilled in the art would have been motivated to have treated the PTFE of Nanba since dimers are hazardous to persons handling the liquid or operating equipment containing the contaminated liquid or may be reactive and therefore undesirable under conditions of use (col. 1 ll. 10-21 Zhang). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have comprised the method of Zhang utilizing the PTFE composition of Nanba to arrive at claim 8 of the present invention.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764