DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 06/09/2023. The concurrently filed preliminary amendment is acknowledged. Amended claims 1 and 3-6 and original claim 2 are currently pending and under examination herein.
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 . However, 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 a 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.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) filed on 06/09/2023, 06/23/2023 and 07/30/2025 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections – 35 U.S.C. 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.
Claim 6 is 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.
Regarding Claim 6, the limiting effect of recited “use in a film-forming solution” is unclear, as the supporting disclosure attributes the same utility to a fluorine-containing polymer as broadly defined in parent claim 1; see, e.g., paragraphs [0018] and [0023] of as-filed specification. Therefore, express recitation of the corresponding intended use in claim 6, without more, cannot be seen to create a substantive difference in scope, vis-à-vis claim 1. Identification of a further limitation imposed by claim 6 or appropriate amendment or cancellation thereof is required.
Claim Rejections – 35 U.S.C. 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 1-6 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 JP 2020-26410A (citing infra to English language equivalent, US 2021/0317065 A1 to Miyazawa et al. (‘Miyazawa’)).
Regarding Claims 1-5, Miyazawa generally discloses the purification and polymerization of a fluorine-containing monomer of formula (1) as defined in, e.g., paragraphs [0003] and [0021]. The purification includes a distillation purification step conducted in the presence of a phenolic compound A and a phenolic compound B of defined formulae (2) and (3), respectively (see ¶¶ [0075]-[0076] and [0117]-[0136]) to obtain the fluorine-containing monomer of high purity, which is polymerized in a subsequent polymerization step (see ¶ [0138]). Miyazawa further details distillation purification of a Monomer b and a Monomer c (see Examples 2, 3) and their respective use in production of a fluorine-containing polymer (homopolymer) (5b) and a fluorine-containing polymer (copolymer) (6b) (see Examples 5-2, 6-2). The repeating units derived from the Monomer b and the Monomer c correspond to the repeating unit represented by instant formula (1), wherein R5 is a trifluoromethyl group [per claim 2], R3 and R4 are hydrogen atoms [per claim 3], and R1 is a methyl group or an isopropyl group and R2 is a hydrogen atom [per claim 4]. Further, the fluorine-containing polymer (copolymer) (6b) comprises another repeating unit other than the repeating unit of formula (1) and the repeating unit of formula (2) in claim 1 [per claim 5].
With respect to the fluorine-containing polymers (5b) and (6b), it is acknowledged that Miyazawa does not explicitly characterize either polymer in terms of relative amount of a repeating unit represented by the formula (2) in claim 1. Nevertheless, the described purification procedures used to obtain the corresponding monomers (Monomer b/Monomer c) each utilized a 30-L distillation apparatus with a theoretical plate number of 8, with the respective monomers recovered at a GC purity of 99.6 area% and 99.8 area% (see ¶¶ [0193]-[0194] and [0204]-[0205]). According to the present invention, when the fluorine-containing monomer of formula (5) is removed from the composition by precision distillation, the number of theoretical stages of the distillation column is required to be at least 5 but not more than 40 (cf., Spec., ¶ [0051]). Thus, Miyazawa is seen to describe distillation purification procedures wherein the distillation apparatus includes the requisite number of theoretical plates for sufficiently removing the fluorine-containing monomer of formula (5), from which the repeating unit represented by formula (2) in claim 1 is derived.
In view of the similarity in purification conditions between Miyazawa and the present invention, it is plausible to infer that the dimethacrylate reactant used in the synthesis of monomers in Examples 2 and 3 will inevitably be present as an impurity of the Monomer b and the Monomer c of Miyazawa, and that the amount thereof is very low. Thus, it is reasonable to presume, as a prima facie matter, that the repeating unit represented by formula (2) is present in the corresponding fluorine-containing polymers (5b) and (6b) of Miyazawa in an amount of 1500 ppm or less, as claimed. Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. In re Best, 195 USPQ 430, 433 (CCPA 1977). When there is 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, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 6, Miyazawa discloses the fluorine-containing polymer according to claim 1 as discussed above. Miyazawa further discloses forming a 2-propanol solution of the fluorine-containing polymer (5b) (see Example 5-2, especially ¶ [0229]). As 2-propanol is a species of alcohol solvent, which is one of the solvent types usable in the present invention for forming a film-forming solution (cf., Spec., ¶ [0112]), the disclosed solution is considered to be implicitly “film-forming” as claimed.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. Komata et al (US 7067691 B2) is cited as pertinent to synthesis of an α-substituted acrylic acid ester represented by a formula [1] (note claim 1) which corresponds to the monomer from which Applicant’s repeating unit represented by claimed formula (1) is derived. The citation does not teach a fluorine-containing polymer comprising a repeating unit represent by claimed formula (2) in an amount as claimed.
Conclusion
Claims 1-6 are rejected. No claims are in condition for allowance at this time.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/02-05-26