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Claims 2-4, and 8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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.
Claim Objections
Claim 9 is objected to because of the following informalities:
Claim 9 recites in line 2 “inequation.” This appears to be a typographical error. Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities: in Example 7, the polymerization medium is “tert-butyl alcohol” and the specification states that this is “p is 0; m is 1; n is 0, and k is 0.” However, this appears to be incorrect because for formula (1), the tert-butyl alcohol would be wherein p is 0, m is 1, n is 0, and k is 1.
Throughout the specification, the equation of “p + m > 1” and “s + t > 1” is used, but it appears that throughout the examples and claims, the equation should be “p + m ≥ 1” and “s + t ≥ 1”.
Appropriate correction is required.
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 or N, 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
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.
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, 5-7, 9-10, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP S47-02853 B1 to Kazuo (hereinafter Kazuo).
Regarding claims 1, 5-7, 9-10, Kazuo teaches a method of polymerization with an appropriate solvent of ethylene and one or more halogenated ethylenes (page 2). Specifically, in Example 1, monomers of tetrafluoroethylene and ethylene are added to a vessel with a solvent of tert-butyl alcohol and polymerized to form an ethylene-tetrafluoroethylene copolymer, (page 4), which meets the claimed method, and tert-butyl alcohol meets the claimed solvent A of formula (1) wherein Y1 is O, p=0, m=1, n=0, k=1, p+m=1, p+m+n+k=2. Kazuo further teaches 25 g (0.34 mol) of tert-butyl alcohol (74.1 g/mol), 38 g (1.36 mol) of ethylene (28 g/mol), and 1.4 g (0.014 mol) of tetrafluoroethylene (100 g/mol), is used in the reaction at 30 deg C and 300 atm pressure. (Example 1). Using the above, 0.34 mol of t-butyl alcohol in 64.4 g total mixture, which correlates to about 5 µmol/g total mass of the copolymer, which is within the claimed range of claim 10.
Regarding the solubility equation of claim 9, one skilled in the art would have a reasonable expectation for the polymerization of Kazuo to have the claimed solubility properties of the claimed invention because Kazuo teaches a substantially identical polymerization mixture of ethylene, tetrafluoroethylene, and tert-butyl alcohol within similar molar ratios to the claimed invention and the above equation appears to be dependent upon the same monomers and solvent chosen. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 1, 5-7, 9-10, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,426,501 A to Khan (hereinafter Khan).
Regarding claims 1, 5-7, 9-10, Khan teaches a tetrafluoroethylene/ethylene copolymer obtained by an aqueous emulsion polymerization with 648 g of tetrafluoroethylene, 155 g of ethylene, and 0.15 L (i.e. 120.6 g) of t-butyl alcohol, polymerized at 95 deg C and at a pressure of 4.1 MPa (See Table 2, col 7, ln 1-38). The above correlates to 1.6 mol of t-butyl alcohol in 923.6 total g of copolymer, or 1.7 µmol/g, which is within the claimed range of claim 10.
Regarding the solubility equation of claim 9, one skilled in the art would have a reasonable expectation for the polymerization of Khan to have the claimed solubility properties of the claimed invention because Khan teaches a substantially identical polymerization mixture of ethylene, tetrafluoroethylene, and tert-butyl alcohol within similar molar ratios to the claimed invention and the above equation appears to be dependent upon the same monomers and solvent chosen. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Claim Rejections - 35 USC § 103
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.
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) 1, 5-7, 9 and 10, is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/112592 A1 to Ataku et al. (hereinafter Ataku)
Regarding claims 1, 5-7, 9 and 10, Ataku teaches a ethylene-tetrafluoroethylene copolymer obtained by reacting ethylene, tetrafluoroethylene, in a solvent containing a chain transfer agent (para 7-9). Specifically, Ataku teaches the chain transfer agent controls molecular weight and physical/chemical properties while also reducing the environmental load, (para 22), and preferred examples of effective chain transfer agents include dimethylformamide (DMF), (para 22), which meets formula (1), wherein Y1 is N, p=2, n=1, Z1 is T1, wherein A1 is H. In Table 1,
PNG
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262
778
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Greyscale
the concentration mass amount of chain transfer agent is 0.84 (g/100 g total), (para 74), and if DMF is used, this correlates to 0.11 µmol/g, which meets the claimed amount in claim 10.
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use the DMF for the chain transfer agent in the examples of Ataku because Ataku teaches the chain transfer agent controls molecular weight and physical/chemical properties while also reducing the environmental load, (para 22), and preferred examples of effective chain transfer agents include dimethylformamide (DMF), (para 22).
Regarding the solubility equation of claim 9, one skilled in the art would have a reasonable expectation for the polymerization of Ataku to have the claimed solubility properties of the claimed invention because Ataku teaches a substantially identical polymerization mixture of ethylene, tetrafluoroethylene, and DMF within similar molar ratios to the claimed invention and the above equation appears to be dependent upon the same monomers and solvent chosen. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Conclusion
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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/HA S NGUYEN/ Primary Examiner, Art Unit 1766
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