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 .
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.
Election/Restrictions
Applicant’s election without traverse of species of homopolymer in the reply filed on April 20, 2026 is acknowledged, however, on consideration of the art the species requirement is fully withdrawn. Claims 1-12 are pending for first action on the merits.
Once a restriction (species) requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nanba (WO2019168183; reference made to US20200392266 English language equivalent).
Nanba teaches fluoropolymers of polymer (1) (see abstract) and 70 mol% or less (¶[0160]) of a copolymerizable monomer. ¶[0165] This monomer may be a fluoroalkyl vinyl ether monomer represented by general formula 150.¶[0177-0178] This monomer 150 meets the limitations of general formula 1, specifically when Z151 = F or -COZ151 and Z151 = -OR151 and R151 is alkali metal, ammonium or H (the combination equivalent to -COOM of Claim 1 and Claim 6).
The number average molecular weight of this polymer is preferably 1.0 to 20 x 104 and the weight average molecular weight is preferably 1.0 to 40x104 (¶[0161-0162]) which makes the PDI roughly 1 to 2 (40/20). This reads over the weight average molecular weight of Claim 1, Claim 2 as overlapping ranges and the PDI of Claim 3.
Nanba does not exemplify a polymer with polymer 1 and 70 mol% or less of monomer 150 as discussed above.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Nanba such that the fluoropolymer produced comprises 70 mol % or less of the above monomer 150 because Nanba suggests this as discussed above.
This molar amount overlaps that of Claim 1 and each X = F of Claim 4 and the Rf of Claim 5 as the m and n of Nanba in monomer 150 combines to overlap the number of carbon atoms of Claim 5.
With respect to Claims 7-9, Nanba teaches in ¶[0650-0653] the polymerization of a separate electrolyte polymer precursor comprising monomer 150 and TFE in a molar ratio of TFE to 150 of 50 to 99 : 50 to 1. This molar ratio overlaps the range of Claim 1, Claim 7, Claim 8 and Claim 9.
However, Nanba is silent on the weight average molecular weight of the above electrolyte polymer precursor and such a precursor must have a molecular weight associated with it. As this polymer precursor comprises monomer 150, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Nanba to produce said electrolyte polymer precursor with the above weight average molecular weight preferably 1.0 to 40x104 (¶[0161-0162]) as this molecular weight is associated with another polymer using this monomer 150 and also in ¶[0650] Nanba teaches the electrolyte polymer precursor is produced according to the present disclose. This reads over the weight average molecular weight of Claims 7-9 by virtue of their dependency to Claim 1.
Allowable Subject Matter
Claims 10-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art is Nanba (WO2019168183; reference made to US20200392266 English language equivalent) which teaches polymers comprising general formula 1 as claimed but fails to teach homopolymers of general formula 1 (Claim 10) and additionally fails to teach or suggest anything about the amount of low molecular weight species as claimed and dimers and trimers. (Claims 11-12) To arrive at Claim 10 – 12 using Nanba would require 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 7 am - 3:30 pm (Pacific).
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, Randy Gulakowski can be reached at (571) 272-1302. 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.
/Christopher M Rodd/Primary Examiner, Art Unit 1766
Prosecution Insights