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/Restrictions
Applicant’s election of Group I, claims 1-5 without traverse as indicated in their communication dated 3/23/2026 is acknowledged. Claims 6-14 are withdrawn from prosecution.
Claim Interpretation
Claim 1 is a process comprising three steps, wherein term comprising can include other step, not discloses. These include:
after polymerization in step A1, the solution of non-fluorinated monomer can be separated and purified to remove byproducts before proceeding to step A2. Additionally, term aqueous medium means other components can also be included, such as stabilizers and surfactants
in step 2, if surfactant is added in step A1 that surfactant can still be present in step A2. Additionally, term “without substantially adding any surfactant” means surfactants can still be added although not in a substantial amount. It should also be noted that the applicants have not defined exactly what they mean by “without substantially” other than ”substantially no surfactant” which would clarify the meets and bounds of the instant claims.
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 1-5 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.
The claims as presented for examination fail to distinctly claim applicant’s invention is several ways. Consequently, applicant’s claim 1 will be thoroughly analyzed utilizing example 1 of the instant invention.
In step A1 the applicants polymerize non-fluorinated monomer in aqueous medium to obtain solution containing a polymer. The non-fluorinated polymer comprises monomers of formula 1 as described in instant claim 3, which are acrylate-based monomers. These monomers include acrylic acids, esters, nitriles.
Issue number 1 is that if such monomers are polymerized in aqueous medium, other than polyacrylic acid, will not form solution. Instant example 1 [0014] discloses polymerization of isobutyl methacrylate, which is a hydrophobic acrylate ester. The monomer has very poor solubility in aqueous medium and would require organic cosolvents.
Neither the claim or example relied upon disclose use of organic co-solvents required to form acrylate solution (for examples, toluene, dioxane, or ethyl acetate).
Instant specification defines aqueous medium as one comprising water or mixture of water with water soluble organic solvent (glycols) [0020] do not provide any clarification as to how polymer solution is obtained. Important to note is that to form a solution surfactants are not used.
Moving onto step A2 where solution obtained in step A1 (solution 1) without substantially adding surfactant added TFE monomer is further polymerized to form an emulsion. The issue with this step is that TFE is typically produced by free radical addition polymerization and once polymerized it forms a particle which would crash out of the aqueous medium. This is because TFE is also hydrophobic monomer and also has very low solubility in aqueous medium as defined by the applicants even with non-fluorinated monomer priming.
Example step A2 [0015] after 20 minutes (examiner assumes this is after polymerization of i-butyl acrylate, TFE is injected along with stabilizer and peroxide dissolved in warm water. The polymerization proceeded for 88 minutes and particulates of PTFE were obtained with 12% solids content in an emulsion. However, non-ionic surfactant is added in step a3 after PTFE is precipitated.
Emulsion by definition is a heterogeneous mixture of two immiscible liquids wherein one liquid is dispersed in the other as tiny droplets. Emulsion by definition require surfactants or emulsifiers to be stable.
Pickering emulsion is an emulsion of solid particles that accumulate at the interfaces between two immiscible liquids to stabilize the droplets. These particles are chosen for their wettability so they can be wetted by both continuous and dispersed phases.
Dispersion also referred to as a suspension consists of solid particles distributed through continuous medium.
Based on the disclosure in [0115] and instant claims there is no way that emulsion can be formed in step A2, especially when instant claim 1 only states that non-ionic surfactant is utilized in step A3. While polymerized acrylic acid can stabilize the composition, there is nothing that would suggest that the amount of less than 200 ppm can stabilize and form emulsion.
Final step is step A3 where the non-ionic surfactant is added to the aqueous emulsion and subsequently the emulsion is concentrated to form a dispersion.
Based on the definitions of dispersion and emulsion above there is nothing disclosed which would suggest formation of emulsion because of lack of surfactants in step A2. It appears if anything, step A2, which forms a particulate PTFE is at best a dispersion. Since emulsion requires 2 liquids, one cannot obtain the dispersion of solid particulates simply by concentrating two liquids required for emulsion.
Instant specification discloses step A3 [0116] as adding to emulsion of step A2 a non-ionic surfactant. The mixture of aqueous medium, surfactant and PTFE had pH adjusted using ammonia, transferred to a vessel with a bottom outlet and kept in the oven at elevated temperatures. After cooling the PTFE dispersion had higher PTFE concentration. in the concentrating step the examiner assumes that water as a component of aqueous medium is utilized in higher amount than any other solvent (including water only) since water has lower boiling points than glycols and therefore the rate of solvent removal by heating will depend on the more volatile component (water).
It is required by the applicants to clarify how polymerized monomers of claim 3 (i-butyl methacrylate) can form solution in the first place, because the acrylate monomers that are soluble in waters are acrylic acids and salts of acrylates. In which case claim 3 would fail to narrow the embodiments of instant claim 1.
The applicants are also required to clarify how polymerization of TFE without use of surfactants will form an emulsion of otherwise solid PTFE particles.
The applicants are also required to clarify how an emulsion is concentrated to obtain a dispersion, wherein emulsion as defined above requires two liquids while dispersion requires solid in liquid.
The examiner believes that until the rejection above is explained and the applicants clearly claim their invention, the prior art while applied in the rejection is utilized to the best of examiner’s ability. Important to note is that the office examines the claims and while specification may teach more (including withdrawn claims) a specification cannot be read into the claims.
Furthermore, in Step A3 the applicants stated that the anionic surfactant is added to the aqueous emulsion at a rate of 10-150 mass % to the mass of PTFE. Rate is a function of time, so the content of surfactant being added has to be per amount of time. This appears more as an amount of surfactant based on the amount of PTFE, however specification does not clarify this. The specification recites this limitation in exactly the same manner. Further no rates are disclosed in the specification as originally filed.
With respect to claim 2, the same issue arises when the applicants disclose a rate of surfactant addition and that rate is 1000-5000 mass ppm (ppm means parts per million). Furthermore claim 2 allows addition of anionic surfactant whereas claim 1 states without substantial addition of surfactant. Please see claim interpretation section above.
Claim 3 discloses non-fluorinated monomers, which other than acrylic acid will not form a solution either before, during or after polymerization. The only component that will dissolve is acrylic acid because of the hydrophilic -OH group. Examples relied upon however, which utilize acrylic acid esters are discussed above.
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.
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Higuchi (WO 2019/065640), US 2020/0216591 is used as translation in view of Zipplies (US 2012/0129982).
With respect to claims 1 and 2, Higuchi teaches a process of making modified polytetrafluoroethylene. Example 1 discloses following process which meets instantly claimed step A1:
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This step is identical to the instant step A1.
Steps A2 and A3 were conducted as follows:
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In this step addition of dodecyl sulfate meets the limitation of instant claim 2 which allows for small addition of anionic surfactant. In this specific example, per 1 kg of PTFE the anionic surfactant is utilized in amount of 1.5 grams which is equivalent to 1500 ppm or mass%.
It should be noted that while examples disclose ionic surfactants, specification in [0128] discloses non-ionic surfactants as well. Two or more types of surfactants can be utilized including combination of anionic and nonionic [0132]. The surfactant that is based on alkylene oxides are recited [0128].
Having said that instant claims allow for addition of surfactant once TFE began to polymerize which is what is taught in Higuchi.
The dispersed PTFE is concentrated in presence of water and water-soluble solvent as coagulating aid [0143, 0148].
While Higuchi teaches use of more than one surfactant, he fails to indicate the content of the non-ionic surfactant such as that containing alkylene oxide units.
Zipplies discloses a process of polymerization of fluoropolymer wherein surfactant utilized in the process is polyol (alkylene oxide units). The purpose of Zipplies is just like that of Higuchi which is to provide stable dispersion of PTFE.
Zipplies teaches clearly that the surfactants can be added before, during or after up-concentration process meeting addition of both anionic and non-ionic surfactants [0060] to increase the stability of the dispersion. The surfactants can also be added to fine tune wetting properties of the compositions wherein the solids content within the concentrated dispersion can be as high as 70% [0060, 0096] which meets instant claim 4. Specifically, when up concentrated solids content in the dispersion is typically 50-70%.
Zipplies teaches that typical amount of nonionic surfactants can be in a range of 1-10 wt% [0108, 0139] and with respect to polyol that amount is 1-20 wt% [0143, embodiment 20].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize non-ionic surfactants of Higuchi in an amount of up to 20 parts when the dispersion or emulsion of PTFE has to be concentrated. As indicated by Zipplies such addition stabilizes the dispersion.
With respect to claim 3, acrylic acid and butyl acrylate as exemplified meet the formula 1.
With respect to claim 5, the dispersion is either allowed to stand to achieve separation of particulates or it is dried. Treatment temperature is in a range of 10-300oC [0149-0151]. While Higuchi does not specifically disclose time it takes for the polymer to coagulate and/or dry, coagulation is a slow process when the composition to allowed to sit still with gravity being the only force acting on it. Drying will depend on the intended use of the composition (latex coatings or molded article). One of ordinary skill in the art would readily understand how to adjust the time to provide PTFE particulates suitable for intended use.
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 and 3-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4-9 of copending Application No. 17/659182 (‘182). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘182recites following process of making modified PTFE:
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Claim 1 od ‘182 meets the limitation of instant claims 1 and 4. While ‘182 does not explicitly recite term “concentrated” such is implied based on the solids content required in the co-pending claim 1.
Claim 2 od ‘182 defines a non-fluorinated monomer in the same manner as does claim 3 of the instant invention:
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Claim 4 of ‘182 defines the amount of non-ionic surfactant as being 1-20 mass% which falls in a range of the instant invention.
While ‘182 does not disclose conditions of the polymerization and of making dispersion (temperature and time for various steps), the conditions are open to all temperatures that are practiced within the bounds of fluoropolymer art and times are selected based on desired molecular weight of the final polymer. Additionally, per MPEP 804 specification of ‘182 can be utilized as dictionary to learn meaning of these terms and conditions. Consequently, the ‘182 invention teaches all aspects of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Citation of Relevant Art
US 3,407,247 to Reinhardt which discloses first making of butyl acrylate prepolymer, followed by polymerization of fluoroolefin such as TFE. Dispersants such as glycol ethers can be utilized, as well as anionic surfactants enabled by instant claim 2. The concentration of monomers in first step (acrylate polymerization) is not critical. Since acrylates utilized are liquids the reaction mixture is an emulsion. Fluoroolefin is added and polymerization results in a powder. A final dispersion is in butyrolactone.
US 2009/0221776 to Durali discloses polymerization of non-fluorinated monomer such as polyacrylic acid followed by polymerization of fluoromonomer which includes TFF. Surfactant is not added in step 1 because acrylic component stabilizes the polymer. Fluoropolymer is recovered as latex which includes surfactant. Latex is an aqueous dispersion which comprises polymer particles that is concentrated by filtration.
Us 2018/0072829 (also US 11,643,484) to Amin-Sanayei discloses modified fluoropolymers which utilizes prepolymerized acrylic acid, polymerizing fluoromonomer in presence of acrylic acid. PEG/PPG based surfactants can be utilized once prepolymer is formed.
US 11,512,151 to Higuchi has common inventors but falls within one year grace period in accordance with AIA .
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 May 6, 2026
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