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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 4-5 recite “as detailed above” or “as above detailed” and depend from Claim 3. Claim 3 already recites limitations to perfluoroalkylvinyl ethers and perfluorooxyalkylvinyl ethers. Therefore, it is unclear what details “above” that are not already present that Claim 3 are applicable against the scope of these claims. In other words, it is unclear what the metes and bounds on “as detailed above” or “as above detailed” when Claim 3 (and Claim 1 from which it depends) already details these fluoropolymers.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7-9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 7-9 redefine the range they are acting on to be a range that is broader than what is recited by Claim 1 from which they depend. For instance, Claim 7 recites a (emphasis added) MFR of more than 2.1 g/10 min which is open ended while the claim from which it depends caps a MFR at 10 g/10 minutes. The use of the article “a” as opposed to “the” also refines the range of MFR recited by the claim in relation to the claim from which it depends. This is in contrast to “the polymer (F) possesses a MFR of more than 2.1 g/10 min to less than 10 g/10 min, or more than 2.0 g/10 min to less than 9.5 g/10 mins or 2.1 g/10 mins to 9.5 g/10 mins. Claim 9 also suffers from the above issue.
Additionally, Claim 8 recites the particle size is not more than 60 microns while the claim from which it depends limits this range to less than 60.0 microns. There is no reasonable interpretation that permits less than 60.0 (including the extra significant digit) to include 60 microns (without the significant digits) permitted by Claim 8.
Therefore, the above claims do not include all the limitations of the claims from which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1-3, 6 and 10-19 are allowed. Claims 4-5 and 7-9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph or 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The closest prior art is Lee (U.S. 20100036021) which teaches compositions of melt processable fluoropolymers which may include graphite. Lee is silent on the average particle size of the graphite in terms of D90. Lee teaches average particle sizes, which reasonably suggests D--50 (although D50 is not specifically taught by Lee for this purpose) of less than 10 microns ¶[0036] and exemplifies 2.4 or 3 microns. (Example 1 and 3-6) The numerical values are the particles sizes exemplified by Lee is outside the claimed range and the overlap with the claimed range in the broader disclosure of Lee is small. Lee further is silent on the melt temperature of the melt processable fluoropolymers and the only exemplified value is 307 oC which is outside the claimed range. The MFR of the fluoropolymers is taught only generally as 10 to 40 g/10 min in the recited test conditions as preferable in ¶[0116] and no other range is taught by Lee. Further, the exemplified fluoropolymer of Lee has an MFR of 1.9 g/10 mins which is also outside the claimed range.
While it is possible to arrive at the claimed invention using Lee, one ordinary skill in the art would have to choose to practice Lee with fluoropolymers with a MFR of more than that exemplified but less than that preferred by Lee, melting temperatures of the fluoropolymer which are substantially lower than Lee (less than 300 oC) without guidance on that decision, and choose graphite that has a D90 (rather than D50 which is more common interpretation of average particle size) that is more than 4.0 but less than 10 microns. There does not appear to be much direction in the prior art to make all these decisions together without the use of hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached on 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/Primary Examiner, Art Unit 1766