DETAILED ACTION
Claim Objections
Claim 2 is objected to because of the following informalities: In line 4, please replace “the polymerizable” with “a polymerizable”.
Claim 3 is objected to because of the following informalities: In line 4, please replace “the proportion” with “a proportion”.
Claim 3 is objected to because of the following informalities: In line 4, please replace “the peak” with “a peak”.
Claim 3 is objected to because of the following informalities: In line 6, please replace “the proportion” with “a proportion”.
Claim 3 is objected to because of the following informalities: In line 6, please replace “the total” with “a total”.
Claim 4 is objected to because of the following informalities: In line 7, delete “the” which precedes “formula”.
Claim 4 is objected to because of the following informalities: In line 9, the phrase “which may have -SO2F” appears superfluous and may be deleted.
Claim 4 is objected to because of the following informalities: On page 52, line 1, delete “the” which precedes “formula”.
Claim 5 is objected to because of the following informalities: In lines 6 and 7, delete “the” which precedes “formula” (two occurrences).
Claim 6 is objected to because of the following informalities: In lines 2, 6, and 8, delete “the” which precedes “formula” (three occurrences).
Claim 6 is objected to because of the following informalities: In lines 6 and 9, please replace “bivalent” with “divalent” (two occurrences).
Claim 7 is objected to because of the following informalities: In line 3, delete “the” which precedes “formula” (two occurrences).
Claim 7 is objected to because of the following informalities: In lines 5 and 6, delete “the” which precedes “formula” (two occurrences).
Claim 7 is objected to because of the following informalities: In line 10, delete “the” which precedes “formula” (two occurrences).
Claim 7 is objected to because of the following informalities: In lines 12 and 13, delete “the” which precedes “formula” (two occurrences).
Claim 8 is objected to because of the following informalities: In line 5, delete “the” which precedes “formula”.
Claim 8 is objected to because of the following informalities: In line 6, please replace “bivalent” with “divalent”.
Claim 8 is objected to because of the following informalities: In lines 6 and 7, the phrase “which may have -SO2F” appears superfluous and may be deleted.
Claim 9 is objected to because of the following informalities: In line 6, delete “the” which precedes “formula” (two occurrences).
Claim 10 is objected to because of the following informalities: In lines 2 and 5, delete “the” which precedes “formula” (two occurrences).
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.
Claim 4 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Line 8 of claim describes a “monovalent group having -CF2- in a perfluoroalkyl group replaced with an etheric oxygen atom”. Claim describes a generic monovalent group containing a perfluoroalkyl group therein, when in fact, claim intends to describe the valency of the perfluoroalkyl group. A perfluoroalkyl group is necessarily monovalent, so the description of “monovalent group” is superfluous. However, to preserve the spirit of the claim language, the phrase may be rewritten as “monovalent perfluoroalkyl group having -CF2- replaced with an etheric oxygen atom”. If claimed fragment, indeed, optionally contains a -SO2F group (see paragraph 7, supra), then the phrase may be rewritten as “monovalent perfluoroalkyl group having -CF2- replaced with an etheric oxygen atom and which may have -SO2F”.
Claim 6 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Lines 6 and 9 of claim describe a “bivalent [sic] group having -CF2- in a perfluoroalkylene group replaced with an etheric oxygen atom”. Claim describes a generic divalent group containing a perfluoroalkylene group therein, when in fact, claim intends to describe the valency of the perfluoroalkylene group. A perfluoroalkylene group is necessarily divalent, so the description of “bivalent [sic] group” is superfluous. However, to preserve the spirit of the claim language, the phrase may be rewritten as “divalent perfluoroalkylene group having -CF2- replaced with an etheric oxygen atom”.
Claim 8 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Line 6 of claim describe a “bivalent [sic] group having -CF2- in a perfluoroalkylene group replaced with an etheric oxygen atom”. Claim describes a generic divalent group containing a perfluoroalkylene group therein, when in fact, claim intends to describe the valency of the perfluoroalkylene group. A perfluoroalkylene group is necessarily divalent, so the description of “bivalent [sic] group” is superfluous. However, to preserve the spirit of the claim language, the phrase may be rewritten as “divalent perfluoroalkylene group having -CF2- replaced with an etheric oxygen atom”. If claimed fragment, indeed, optionally contains a -SO2F group (see paragraph 18, supra), then the phrase may be rewritten as “monovalent perfluoroalkyl group having -CF2- replaced with an etheric oxygen atom and which may have -SO2F”.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirai et al. (WO 2019/045063; equivalent US 11,242,420 relied upon for translation).
Example 2 of Hirai et al. teaches copolymerization of compound 7-1 having formula CF2=CFCF2O-CF(CF2SO2F)2 with TFE at 100 ºC to obtain a fluorinated polymer. Compound 7-1 corresponds to compound of formula F1 in which Q11 and Q12 are each a perfluoroalkyl group containing SO2F.
Present claim is drawn to a perfluorinated compound that is described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saito et al. (JP 2017-25242).
Example 10 of Saito et al. teaches copolymerization of compound (m1-1), having the formula shown below, with TFE at 100 ºC to obtain a fluorinated polymer. Compound (m1-1) corresponds to compound of formula F1 in which Q11 is F and Q12 is a perfluoroalkyl group having CF2 replaced with an etheric oxygen atom and containing SO2F.
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Present claim is drawn to a perfluorinated compound that is described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 13 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hirai et al. (WO 2021/045063; equivalent US 12,018,106 relied upon for translation).
Example 1-1 of Hirai et al. teaches copolymerization of PSAE having formula CF2=CFCF2O-CF2CF2SO2F with TFE at 160 ºC to obtain a fluorinated polymer. Compound PSAE corresponds to compound of formula F1 in which Q11 is F and Q12 is a perfluoroalkyl group containing SO2F.
Present claim is drawn to a perfluorinated compound that is described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 13 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hirai et al. (US 12,018,106; relying on foreign priority date of October 21, 2019).
Example 1-1 of Hirai et al. teaches copolymerization of PSAE having formula CF2=CFCF2O-CF2CF2SO2F with TFE at 160 ºC to obtain a fluorinated polymer. Compound PSAE corresponds to compound of formula F1 in which Q11 is F and Q12 is a perfluoroalkyl group containing SO2F.
Present claim is drawn to a perfluorinated compound that is described in product-by-process format. It is well settled that where product by process claims are rejected over a prior art product that appears to be the same, the burden is shifted to the Applicant to establish an unobviousness difference, even if the production processes are different. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Furthermore, the patentability of a product claim rests on the product formed, not on the method by which it was produced. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Allowable Subject Matter
Claims 1, 11, and 12 are allowed. Subject of claims is patentably distinct over Hirai et al. (WO 2019/045063) and Hirai et al. (WO 2021/045063; US 12,018,106), supra, and over additional references cited in the accompanying PTO-892 and Applicant’s PTO-1449. None of these references teaches the subject of instant claims. Claims 2-10 are not in condition for allowance but will be allowable upon appropriate amendments to overcome rejections under 35 U.S.C. 112(b) and claim objections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/RIP A LEE/Primary Examiner, Art Unit 1762 June 24, 2026
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