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 .
Claim Rejections - 35 USC § 103
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, 23, 24 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nanba et al. (WO 2019/168183). US 2020/0392266 is being used as an English equivalent to WO 2019/168183 since it is a national stage entry of the international application.
Regarding claims 1 and 3: Nanba et al. teach a coating material [0552-0553] comprising a fluororesin, an aqueous medium, [Examples] and a polymer (1) comprising a polymerized unit (1) derived from a monomer represented by the general formula (1):
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534
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[0019-0022].
Where the Rf of Nanba et al. is a difluoromethylene group (i.e., a CF2 group), and the A of Nanba et al. comprises any of the structures described in [0123], the structure of the monomer of Nanba et al. reads on the claimed structure (I). This is because in such a case, the -CZ2-O- group of Nanba et al. reads on the claimed "R," wherein "R is a linking group." -CZ2-O- is a linking group because it connects the vinyl group to the rest of the molecule. In this case, Rf similarly reads on the "CZ1Z2" linkage of the instant claim when Z¹ and Z² are both fluorine.
Nanba et al. teaches that the total solids content of the aqueous dispersion is between 1.0 and 70% by mass [0543]. Further, Nanba et al. teaches that the dispersion solids consist of both the polymer (1) and the fluoropolymer solids [0544], and that the amount of polymer (1) is between 0.0001 and 20% by mass based on the amount of
polytetrafluoroethylene [0470]. Therefore, the amount of polytetrafluoroethylene in the
composition may range from 0.83% to 69.993%, which overlaps the claimed ranges of the content of polymer (I) and the content of the fluororesin of claim 3.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claims 2 and 28: Nanba et al. teach adding surfactants to adjust the viscosity [0740, 0742, 0749]. Since the composition is the same as claimed, the claimed viscosity is obtainable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add surfactant to obtain the desired viscosity.
Regarding claim 4: Nanba et al. teach polytetrafluoroethylene [0017, 0024, 0261, 0783; Claim 12; Examples].
Regarding claim 5: Since the composition is the same as claimed, it will possess the claimed stability retention time. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 7: Nanba et al. teach a nonionic surfactant [0218, 0238, 0725, 0774].
Regarding claim 23: Nanba et al. teach a film forming agent [0752].
Regarding claim 24: Nanba et al. teach a binder resin [0638].
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, 23, 24 and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,466,905 in view of Nanba et al. (WO 2019/168183). US 2020/0392266 is being used as an English equivalent to WO 2019/168183 since it is a national stage entry of the international application.
The Patent claims the composition, but does not specify an amount for polymer (1). The composition is capable of functioning in the claimed capacity.
However, Nanba et al. teach, in an analogous composition that the amount of polymer (1) should be between 0.0001 and 20% by mass based on the amount of polytetrafluoroethylene [0470].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the amount of polymer (1) as taught by Nanba et al. as the amount of polymer (1) in the Patent claims to use an art tested amount.
Although the claims at issue are not identical, they are not patentably distinct from each other.
Response to Arguments
Applicant's arguments filed 6/15/2026 have been fully considered but they are not persuasive.
The applicant has stated that the claimed range of polymer (I) is based on the coating material composition, and has alleged that the range in Nanba et al. is different because it is based upon the fluoropolymer. This is not persuasive because the entire composition of Nanba et al. is the fluoropolymer and polymer (1). Even if one were to include the other components in the dispersion [0723, 0776; Examples], the range still overlaps the claimed range.
The applicant has alleged unexpected stability benefits. This is not persuasive because the claims are not commensurate in scope with the data provided.
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 JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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