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 .
Election/Restriction
Applicant’s election without traverse of the group of species of Formula (1), wherein Z1 is any one of T1 to T14, and the listed A1, which encompasses Claims 1, 5-7, 9, and 10, in the reply filed on 3/20/2026 is acknowledged.
Claims 2-4, and 8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/20/2026.
Response to Amendment
The previous objection of Claim 9 for informalities is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1, 5-7, 9-10, under 35 U.S.C. 102(a)(1) as being anticipated by JP S47-02853 B1 to Kazuo (hereinafter Kazuo) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1, 5-7, 9-10, under 35 U.S.C. 102(a)(1) as being anticipated by US 4,426,501 A to Khan (hereinafter Khan) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1, 5-7, 9 and 10, under 35 U.S.C. 103 as being unpatentable over WO 2014/112592 A1 to Ataku et al. (hereinafter Ataku) is/are withdrawn in light of the Applicant’s amendments.
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, 5-7, 9 and 10, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/901,991 (App. No. 18/901,991).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 18/901,991 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1, 5-7, 9 and 10, App. No. 18/901,991 teaches a method of producing a fluorine-containing copolymer by polymerization of ethylene and tetrafluoroethylene in a medium of solvent A, wherein solvent A has formula (1), wherein Y1 is O, p, m, n, and k, ia an integer satisfying p+m≥1, p is 1 or more, n is 1 or more, and Z1 is any one of T1 to T6, wherein A1 is hydrogen, methyl or tert-butyl (See claim 1), wherein the equation 0.5 < Msol x S/Mmon < 1.0 is satisfied, (claim 9).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 5-7, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H08-067719 A to Kawashima et al. (hereinafter Kawashima).
Regarding claims 1, 5-7, Kawashima teaches fluoromonomer copolymerized with an unsaturated peroxide dissolved in tert-butyl carboxylate to obtain an elastic fluoropolymer (See abstract), wherein the monomers included a fluorine-containing monomer such as tetrafluoroethylene (para 15) and hydrocarbon olefins such as ethylene (para 16), and wherein the copolymer obtained includes tetrafluoroethylene-ethylene copolymers (para 24). Kawashima teaches the polymerization may be a solution polymerization (para 19). Specifically, in the examples, the monomers are polymerized in in a medium of water and t-butyl acetate (para 30), which has the formula
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85
145
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, which meets formula (1), wherein Y1 is O, p=0, m=1, n=1, k=0, and Z1 =
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97
84
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, wherein A1 is methyl. Kawashima further teaches 900 g of water is mixed with
Thus, one skilled in the art would at once envisage the claimed arrangement combination because Kawashima specifically teaches the monomers include tetrafluoroethylene and ethylene, polymerized in a solution medium with t-butyl acetate, which meets the claimed arrangement combination. (See MPEP 2131.02(III), "A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination").
Claim(s) 1, 5-7, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2018/164147 A1 in which US 2019/0389983 A1 to Ohkura et al. is used below as the US equivalent. (hereinafter Ohkura).
Regarding claims 1, 5-7, Ohkura teaches a method of producing a polymer comprising polymerizing a compound of formula (3) with a compound (6) (See abstract), wherein a compound of formula (3) is preferably tetrafluoroethylene (para 64), and examples of compound (6) include ethylene (para 67). Ohkura teaches the polymerization occurs in a solvent, specifically acetonitrile (See para 85 and Example 1, para 113), wherein the solvent is used in an amount of 0.05-10 L per 1,000 g of the polymer to be obtained. (para 87).
Thus, one skilled in the art would at once envisage the claimed arrangement combination because Ohkura specifically teaches polymer is obtained from preferably the monomers of tetrafluoroethylene and ethylene, and the specific solvent is acetonitrile, which meets the claimed arrangement combination. (See MPEP 2131.02(III), "A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination").
Claim(s) 1, 5-7, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/226178 A1 in which US 2022/0049029 A1 to Nakano et al. is used below as a US equivalent. (hereinafter Nakano).
Regarding claims 1, 5-7, Nakano teaches a method of producing a fluoropolymer by solution polymerization in the presence of an initiator, a chain transfer agent, and a solvent, and copolymerizing tetrafluoroethylene with a monomer of formula (2) (See abstract). Nakano teaches the solvent is preferably dimethyl carbonate (See Example 6, para 370), and the monomer of formula (2) is preferably ethylene (para 175) and examples of the formed fluoropolymer is preferably
Thus, one skilled in the art would at once envisage the claimed arrangement combination because Nakano specifically teaches dimethyl carbonate used as a solvent in the examples, and producing a fluoropolymer by solution polymerization with preferably tetrafluoroethylene and a monomer of preferably ethylene, which meets the claimed arrangement combination. (See MPEP 2131.02(III), "A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination").
Allowable Subject Matter
Claim 9 is 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 claim and if a terminal disclaimer is filed to overcome the nonstatutory double patenting rejection over copending App. No. 18/901,991 cited above.
Claim 10 is allowable if a terminal disclaimer is filed to overcome the nonstatutory double patenting rejection over copending App. No. 18/901,991 cited above.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not teach the solubility equation range of claim 9 and/or the solvent A end groups amount range of the fluorine-containing copolymer of claim 10.
Response to Arguments
Applicant’s arguments with respect to the above claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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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.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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