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 .
This Office action is in response to the amendment filed 7/29/2026. Claim 1 is amended; claims 3 and 5 are cancelled; claims 7-21 are withdrawn from consideration as being drawn to non-elected invention; and claim 22 is added. Accordingly, claims 1-2, 4 and 6-22 are currently pending in the application.
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 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.
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 1-2, 4, 6, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Mikeš et al (Macromolecules, vol. 38, pp 4237-4245, Year: 2005).
Regarding claims 1, 4 and 22, Mikeš et al disclose a perfluorinated monomer, perfluoro-2-methylene-4-methyl-1,3-dioxolane (PFMMD) and polymer obtained (poly(PFMMD) (abstract). PFMMD is represented by formula
PNG
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128
152
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(page 4239, scheme 1) and would result in unit of
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113
98
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wherein Rf1, Rf3, and Rf4 = fluorine atom and Rf2 is a linear perfluoroalkyl group having 1 carbon atom as in present claim 1.
Mikeš et al are silent with respect to haze value of heat-press molded product having a thickness of 1 mm, and yellow index of heat-melted molded product having a thickness of 3 mm obtained after being heated for 24 hr at 2800C; and bulk density.
However, regarding haze value of heat-press molded product having a thickness of 1 mm, and yellow index of heat-melted molded product having a thickness of 3 mm obtained after being heated for 24 hr at 2800C, Mikeš et al teach a process wherein the polymers isolated are dissolved in HFB, then precipitated in chloroform and dried in vacuo (page 4240, col. 2, Section: Polymer Preparation, 2nd full paragraph). The polymers obtained were colorless and transparent. When the polymers were purified by precipitating the polymer solution into chloroform, they did not turn hazy when exposed to air for a long period of time and remained clear with a high UV-light transmittance (abstract). See Table 3, wherein the polymer no. 78, 83 and 84 have a molecular weight of 1.7 * 105, 2.6 * 105, and 2.5 * 105. Therefore, given that purified polymer of PFMMD did not turn hazy when exposed to air for a long period of time and remained clear with a high UV-light transmittance, is obtained by dissolving obtained polymer in solvent, filtering and precipitating in a poor solvent, and has weight average molecular weight as in present invention, one skilled in art prior to the filing of present application would have a reasonable basis to expect the heat-press molded resin product, of Mikeš et al, having a thickness of 1 mm to exhibit a haze value of 2.0% or less, and heat-melted molded product having a thickness of 3 mm obtained after being heated for 24 hr at 2800C to have a yellow index of 4 or less as in present claim 1 and yellow index of 2 or less as in present claim 22, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding bulk density, Mikeš et al teach a process wherein the polymers isolated are dissolved in HFB, then precipitated in chloroform and dried in vacuo (page 4240, col. 2, Section: Polymer Preparation, 2nd full paragraph). Therefore, given that polymers obtained are dissolved in HFB and filtered prior to precipitation, and dried in vacuo to obtain a purified resin in powdered form, one skilled in art prior to the filing of present application would have a reasonable basis to expect the poly(PFMMD) to have the presently claimed density (such as 0.1 g/cm3 to 1.5 g/cm3 of present claim 1 and 0.12 g/cm3 to 0.25 g/cm3 of present claim 4), absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977)
Regarding claim 2, Mikeš et al teach a process wherein the polymers isolated are dissolved in HFB, then precipitated in chloroform and dried in vacuo (page 4240, col. 2, Section: Polymer Preparation, 2nd full paragraph). Therefore, given that polymers obtained are dissolved in HFB and filtered prior to precipitation to obtain a purified resin, one skilled in art prior to the filing of present application would have a reasonable basis to expect the insoluble matter to be present in amount of 0.2% by weight or less based on the resin, when dissolved in 1,1,1,2,3,4,4,5,5,5-decafluoro-3-methoxy-2-(trifluoromethyl)pentane, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 6, see Table 2, wherein polymer no. 78, 83 and 84 have a molecular weight of 1.7 * 105, 2.6 * 105, and 2.5 * 105, respectively.
Response to Arguments
The rejections under 35 U.S.C. 103 as set forth in paragraphs 5 and 10-11, of Office action mailed 4/9/2026, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 10 below).
Applicant arguments, filed 7/29/2026, have been fully considered but they are not persuasive. Specifically, general thrust of applicant argument is that in present invention, examples 1-1 and 1-6 use chlorine-free solvent as the poor solvent for precipitation while example 1-7 uses chlorinated solvent such as chloroform as in Mikeš et al, and exhibits yellow index higher than 4.0 (i.e., 4.7). The bulk density in example 1-7 is smaller compared to examples 1-1 and 1-6, which indicates that particles have a coarse particle size. In examples 1-7 of the present application, a good solvent was taken in such coarse particles and therefore example 1-7 exhibited a high yellow index.
In response, the polymer in Mikeš et al is prepared by bulk polymerization as opposed to solution polymerization in example 1-7 of present application. The boiling point of chloroform in example 1-7 and Mikeš et al, and acetone in examples 1-1 to 1-6, have are substantially similar (i.e., B.P. of acetone and chloroform are 56.080C and 61.150C, respectively) and would be expected to be removed when dried under vacuum as in present invention and Mikeš et al. Additionally, it is the Office’s position that it is within the scope of one skilled in art prior to the filing of present application to use appropriate conditions to remove the residual solvent, if any, during the purification process.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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