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 .
Priority
The foreign priority is not in English, the use the claims have an effective date of the filing of the PCT: 9/9/21
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/22/23 has been considered by the examiner. Those items lined through were not found in the file.
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.
Claim(s) 1-2, 4-6 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Hamakubo (JP2014114383A, reference of record, English translation provided).
Hamakubo exemplifies Example 9 a blend of 60% G912 (the instant specification discloses this to have a fluorine content of 71%) and 40% G801 (the instant specification discloses this to have a fluorine content of 66%), anticipating claim 1. The 25B compound therein is a peroxide compound, as required by claim 2. The TAIC (triallyl isocyanurate) of Example 9 is a crosslinking agent, as required by claim 4. Albeit a different example, silica fillers are exemplified in 3 and 5 parts per 100 parts resin (Examples 8, 10), anticipating claim 5, crosslinking (curing) the resin material is disclosed in the middle of page 5 of the translation, and, the end material is a rubber member such as an Oring and meets the sealing material claimed. Elements above meet claim 6.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi (JPH02117945A, reference of record, English translation provided).
Kobayashi discloses fluoroelastomer compositions (title) comprising 100 parts fluororesin (A) having a fluorine content 68-71%, and, 1-30 parts of a second fluororesin having a fluorine content from 64-67% (bottom of [0001]). In light of the overlapping nature of the fluorine content of A and B with A1 and A2 of the claims, a prima facie case of obviousness exists over claim 1. The fluororesins are copolymers of vinylidene fluoride (VDF), hexafluoropropylene (HFP) and tetrafluoroethylene (TFE), the same monomers of those instantly exemplified, thus the polymer is implicitly peroxide-crosslinkable, as required by claim 2. Crosslinking agents such as hydroquinone and those others of the bottom of page 2, meet the requirements of claim 4. Fillers are optional (bottom of page 2-a filler to be used if necessary), as required by claim 5. The composition is vulcanized (bottom of page 2) (same thing as crosslinked) and sealing materials such as Orings are made (line 5 of page 1), as required by claims 6.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yasuda (WO 2019/054293, wherein US 2020/0277467 is used as an equivalent English document) in view of Kobayashi.
Yasuda discloses rubber compositions (title) used for Orings (meeting the claimed sealing member) [0014] comprising a hydrogen containing fluororubber having monomers selected from vinylidene fluoride (VDF), hexafluoropropylene (HFP) and tetrafluoroethylene (TFE) among others [0016]. The composition comprises a crosslinking agent such as a peroxide [0017]. It may further include a crosslinking aid such as triallyl isocyanurate [0027]. Hydrogen site protection agents having a perfluoro skeleton group and an alkenyl (unsaturated bond) may be included [0020] (meeting the component B of claim 3). The composition is irradiated to crosslink [0038].
Yasuda includes elements as set forth above but does not disclose a mix wherein the fluorine content of one component is 69% or more, and, the other component is 55-68% fluorine.
Kobayashi includes elements as set forth above. Kobayashi discloses wherein blends of fluorine resins are used to form Orings and other seal pad materials (top of [0001]), thus akin to Yasuda. The blends use a first fluororesin having fluorine content 68-71%, herein if the fluorine content is less than 68% the solvent resistance is not sufficient and if it exceeds 71% the elasticity declines, with 1-30 parts of a second fluororesin having a fluorine content 64-67%, herein if it exceeds 67% the content of HFP increases and polymerization decreases, and, if the fluorine content is less than 64% the composition has insufficient elasticity (top of page 2 of Kobayashi translation). One can see that you can tailor the fluorine within the blend of each component to get your ideal properties.
It would have been obvious to one of ordinary skill the art before the effective filing date to include in Yasuda the use of a blend of a 68-71% fluorine containing fluororesin with a 1-30 parts 64-67% fluorine containing fluororesin in order to improve the mechanical and physical properties of the resin.
Elements above meet claims 1-7 wherein fillers, if used, are used in 5 parts or less in Yasuda [0029].
Claim(s) 3, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamakubo in view of Yasuda.
Hamakubo includes elements as set forth above. Hamakubo uses the compositions for Orings (see examples, last page of translation), and discloses the composition to be used to protect panel display substrates from exposure/etching (first paragraph of translation). Hamakubo crosslinks the fluororesin with a peroxide, but does not disclose using radiation to do such. Further, the compounds of claim 3 are not disclosed by Hamakubo.
Yasuda discloses uncrosslinked rubber compositions comprising a hydrogen-containing fluororubber, a crosslinking agent and a hydrogen site protective agent (abstract), thus akin to the composition of Hamakubo. The compositions are used for Oring type sealant compositions used during/in plasma CVD etching systems [0014]. The crosslinking agent may be those peroxides of [0017]. The agent crosslinks the fluororubber, thus the fluororubber is peroxide-crosslinkable. The composition may include a crosslinking aid, such as triallyl cyanurate [0026], and, the hydrogen site protection agent may a compound having a siloxane skeleton and a alkenyl group (unsaturated bond). The fluororubber may be any of those generically disclosed in [0016] including copolymers of vinylidene fluoride (VDF) and hexafluoropropylene (HPF) optionally with tetrafluoroethylene (TFE), the same fluororubbers as Hamakubo. Yasuda discloses curing via radiation (see examples).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Hamakubo the use of radiation as a curing mechanism, as taught by Yasuda, since it is recognized in the art as another suitably known way to cure a peroxide-curable fluororubber. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See also MPEP 2143A and E
The hydrogen site protection agent is disclosed to bond with carbon radicals resulting from breakage of carbon-hydrogen bonds in the fluororubber when occurs during radiation.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include in Hamakubo the use of the hydrogen site protection agent, as taught by Yasuda, in order to bond with radicals formed during radiation, thus improving the final product.
Elements above meet claims 3, 7.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18246698 (reference application) wherein claim 7 is in further view of Yasuda. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘698 meets instant claim 1, claims 2-6 meet instant claims 2-6, respectively. Yasuda includes elements as above and renders obvious the use of radiation for crosslinking the material of ‘698 since it is a suitably known method of crosslinking a very similar composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes: US 2002/0099142 (a blend of 2 fluoroelastomers, cumulative to those references above), US2008/0076873 (a blend of 2 fluoroelastomers that exemplify 70.6-72.5% fluorine content)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA BLAND whose telephone number is (571)272-2451. The examiner can normally be reached Mon - Fri 9:00 am -3:00 pm 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, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALICIA BLAND/Primary Examiner, Art Unit 1759