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 claims thusly have an effective date of the filing of the PCT: 9/9/21
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/28/25, 12/17/24, 6/22/23 have been considered by the examiner.
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamakubo (JP 2012102272A, English translation provided).
Hamakubo exemplifies, Example 7, a composition using Tecnoflon P757, 1.5 parts peroxide (Perhexa 25B-crosslinking agent) and 3 parts TAIC (triallyl isocyanurate-crosslinking aid). Tecnoflon is disclosed in the instant specification to have a fluorine content of 67%. The above anticipates the fluoropolymer, crosslinking agent and crosslinking aid of claim 1. The produced product thereof meets the sealing material. Thus elements above anticipate claims 1 and 2.
Claim(s) 1-2, 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park (US 2008/0157439).
Park exemplifies in Table 3 [0127] compositions 3a-3e having peroxide curable elastomer Tecnoflon P457 (meeting the claimed fluoropolymer, this is exemplified in the instant application to have a fluorine content of 67%), co-agent triallyl isocyanurate (meeting the claimed crosslinking aid), and an organic peroxide (meeting the claimed crosslinking agent). The end shaped rubber material can be termed a sealing material (see claim 1 of Park), also the rubber material is irradiated for final curing (see claim 1 (d)).
Elements above anticipate claims 1-2. Use of ZnO in amounts of 5 parts (table 3), anticipates claim 4, elements above meet claim 5.
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamakubo.
Hamakubo includes elements as set forth above. Hamakubo discloses the filler to be included in amounts ranging 1-150 parts per 100 parts fluororesin (last paragraph page 2). Thus, claim 4 is embraced and rendered prima facie obvious in light of the teachings of Hamakubo. See In re Wertheim.
Claim(s) 3, 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamakubo in view of Yasuda (WO 2019/054293 published 3/21/19 wherein US 2020/0277467 is used as an equivalent English document).
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 flurorubber. 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, 5.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Yasuda.
Park includes elements as set forth above. Park discloses irradiating fluororubber compositions to cure. Park does not disclose those agents of claim 3.
Yasuda includes elements as set forth above. Yasuda discloses fluororubber compositions comprising peroxide and triallyl isocyanurate along with the fluororubber to form cured material products, the same compositions/use as Park. The composition further comprises a hydrogen site protection agent to bond with carbon radicals resulting from breakage of carbon-hydrogen bonds in the fluororubber when occurs during radiation. The hydrogen site protection agent may be SIFEL3590N which is a perfluoro skeleton having a vinyl group in its molecule [0038].
It would have been obvious to one of ordinary skill in the art before the effective filing date to include in Park the use of the above hydrogen site protection agent, as taught by Yasuda, to improve the cured fluororubber composition properties.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yasuda (WO 2019/054293 published 3/21/19 wherein US 2020/0277467 is used as an equivalent English document) in view of Hamakubo (JP 2012102272A, English translation provided).
Yasuda discloses uncrosslinked rubber compositions comprising a hydrogen-containing fluororubber, a crosslinking agent and a hydrogen site protective agent (abstract). 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 an 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).
Yasuda includes elements as set forth above but does not disclose the fluorine content of the fluororubber. Yasuda exemplifies the use of DAI-EL G912, which by Applicant’s specification, is found to have a fluorine content of 71%.
Hamakubo discloses rubber compositions used for the manufacturing process, including etching, of flat panel displays (first paragraph). The third paragraph discloses wherein it is known to desire a fluorine content of 68% or more in Oring compositions for plasma resistance. The exemplary compositions of Hamakubo includes a filler, a fluororubber, a peroxide and a crosslinking aid such as triallyl isocyanurate (Examples, starting page 9 and into page 10) Hamakubo’s use/considerations and composition is thusly akin to that of Yasuda. Hamakubo discloses those fluororubbers of page 3 to be useful therein, they include Daiel G912 (the exemplified fluororubber of Yasuda) as well as Tecnoflon P757 and P457. Tecnoflon P757 and P457 are the instantly exemplified fluororubbers that meet the fluorine content of the claims.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include in Yasuda the use of Tecnoflon P757 or P457, as taught by Hamakubo, since these are recognized in the art as functionally equivalent fluororubbers for use in sealing compositions used in display panels and/or when etching is performed.
No filler is required in Yasuda. Elements above meet claims 1-5 wherein the example of Yasuda crosslink with radiation [0038].
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7 of copending Application No. 18246695 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 6 of ‘695 meet instant claim 1, claims 2-3 of ‘695 meet instant claims 2-3, respectively, claim 5 of ‘695 meets instant claim 4, claim 7 of ‘695 meets instant claim 5.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7 of copending Application No. 18246698 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 6 of ‘698 meet instant claim 1, claims 2, 3 of ‘698 meet instant claims 2-3, respectively, claim 5 of ‘698 meets instant claim 4, claim 7 of ‘698 meets instant claim 5.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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