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 Objections
Claims 2 – 5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 & 6 – 11 are rejected under 35 U.S.C. § 103 as being unpatentable over Yoneda et al. (US 12,187,859 B2) in view of Dadalas et al. (US 6,861,466 B2).
Regarding claims 1, 7 & 9, Yoneda teaches methods for producing a fluoropolymer aqueous dispersion via polymerization (Abstract). Examples of said fluoropolymer include both non melt-processible & melt-fabricable fluororesins (col. 69, lines 23-26), aligning with the definition of ‘fluororesin’ provided by Applicant in the specification (Specification, p. 1, [0008]). Specific examples thereof include tetrafluoroethylene (TFE) polymers and TFE/Vinylidene fluoride (VDF) copolymers (col. 70, lines 10-17). In the production of aqueous dispersion (i.e., medium) containing the fluoropolymer, it is preferred that a hydrocarbon surfactant is added, as this improves dispersion stability (col. 68, line 56- col. 69, line 4). Yoneda does not teach the compound of general formula (1) containing a triple bond as required by the claim.
In the same field of endeavor, Dadalas teaches aqueous PTFE dispersions comprising an anionic fluorine-free surfactant, resulting in a dispersion with low viscosity at room temperatures (Abstract). Copolymers of vinylidene fluoride & tetrafluoroethylene may also be used in said dispersions (col. 8, lines 23-30). The anionic surfactant attributes viscosity control of the dispersion (col. 10, lines 37-38), and said dispersions exhibited improved film forming properties as well as better wetting properties when compared to dispersions containing non-ionic surfactants (col. 12, lines 42-52). In addition to comprising an anionic group, said surfactants also have other hydrophilic groups. Ideally, the anionic hydrocarbon surfactant comprises one or more hydrocarbon moieties, particularly carboxylic acid groups. Examples thereof include saturated & unsaturated aliphatic groups having 6-40 carbon atoms (col. 4, lines 21-41).
Dadalas details non-ionic surfactants corresponding to a general formula (I) (col. 6, lines 57-60). In order to obtain the optimal viscosity transition temperature (VTT) for the dispersions, an acetylenic diol (preferably ethoxylated) is added to the mixture (col. 7, line 58-62). Thus, Dadalas teaches the use of acetylenic diols in combination with non-ionic surfactants, which in turn leads to dispersions with a low viscosity at room temperature (col. 3, lines 20-31).
It would have been obvious to one of ordinary skill in the art at the time of filing to combine the acetylenic diol taught by Dadalas with the surfactant in Yoneda’s composition to obtain a suitable VTT allowing for reduced viscosities at room temperature. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Yoneda in view of Dadalas as detailed above reads on all limitations established by claims 1, 7 & 9.
Regarding claim 4, maintaining the modification of Yoneda in view of Dadalas previously detailed, claim 4 further limits an optional limitation established in claim 2 (i.e., ‘X1 is…a hydrocarbon group optionally has a halogen atom…’), by reciting “X1 is …a hydrocarbon group optionally having Cl, Br, I…” (p. 2, lines 5 & 6). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298, 92 USPQ2d 1163, 1171 (Fed. Cir. 2009). See MPEP § 2143.03. Thus, claim 4 further limits an optional limitation, which need not be taught by the prior art.
It would have been obvious to select Cl, Br or I for optional use as the halogen in the hydrocarbon of X1, as a person having ordinary skill in the art would recognize the genus (halogen) consists of only six species (fluorine (F), chlorine (Cl), bromine (Br), iodine (I), astatine (At), and tennessine (Ts), of which At & Ts are radioactive. Thus, a person having ordinary skill in the art would recognize the genus (halogen) obviously only applies to 4 viable species (F, Cl, Br, or I). See MPEP § 2144.08
Regarding claim 6, maintaining the modification of Yoneda in view of Dadalas previously detailed, Yoneda teaches the anionic surfactant is present in preferable amounts of 10 – 5,000 ppm (col. 111, lines 64-66). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 8, maintaining the modification of Yoneda in view of Dadalas previously detailed, Yoneda expresses the fluororesin preferably has a fluorine substitution of at least 50%, with most preferable being 90%-100% (col. 70, lines 27-39). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 10, maintaining the modification of Yoneda in view of Dadalas previously detailed, in teaching methods for producing aqueous mediums comprising a fluoropolymer, Yoneda expressly states it is preferable the fluoromonomer is polymerized substantially in the absence of a fluorine-containing surfactant (col. 64, lines 18-20). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 11, maintaining the modification of Yoneda in view of Dadalas previously detailed, in teaching methods for producing aqueous mediums comprising a fluoropolymer, Yoneda teaches the fluoromonomer may be polymerized with a fluorine-free monomer including cyclohexyl vinyl ether & vinyl acetate (col. 15, lines 50-58).
The instant specification details the ‘polymer containing a fluorine-free monomer unit’ may be a polymer containing only a fluorine-free monomer unit as its monomer unit or may be a polymer containing a fluorine-free monomer unit and a fluorine-containing monomer unit (p. 90, [0253]). Examples of the fluorine-free monomer provided in the instant specification include cyclohexyl vinyl ether & vinyl acetate (p. 91, [0255]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, & 16 of copending Application No. 18/160,129 (hereinafter ‘129). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding claim 1, below is a table detailing the claim of the instant application (left column) and the conflicting claim of the copending application 18/160,129 (right column).
18/467,238 – Claim 1
18/160,129 – Claims 1 & 16
1. A method for producing a fluororesin, comprising:
--polymerizing a fluorine-containing monomer in the presence of:
---a compound (1) having triple bond and an anionic hydrophilic group, and
---an aqueous medium to produce a fluororesin.
1. A method for producing an aqueous dispersion of a fluorine-containing elastomer, comprising:
--polymerizing a fluorine-containing monomer in the presence of:
---a compound (1) having a triple bond and a hydrophilic group, and
---an aqueous medium to produce an aqueous dispersion of a fluorine-containing elastomer
16. A fluorine-containing elastomer comprising:
--a monomer unit based on a compound (1) having
---a triple bond and
---an anionic hydrophilic group.
As can be seen from the table above, both claim(s) 1 teach a method of producing a fluorine-containing compound in an aqueous medium comprising the polymerization of a fluorine-containing monomer in the presence of a compound (1) having a triple bond and a hydrophilic group, and an aqueous medium. The only difference between the instant claim 1 and the conflicting claim 1 is the mention of a fluororesin (instant application) and a fluorine-containing elastomer (conflicting copending application); both of which are, in effect, an aqueous dispersion of a fluoropolymer, and the limitation of the hydrophilic group being anionic.
It would have been obvious to one of ordinary skill in the art at the time of filing to combine the limitations of claims 1 & 16 of ‘129 as they represent a specific embodiment of the claimed invention of teaching a method for producing an aqueous dispersion comprising a fluoropolymer by polymerizing a fluorine-containing monomer in the presence of a compound having a triple bond & an anionic hydrophilic group (i.e., compound (1)). Therefore, the processes detailed in the instant claim 1 & in the conflicting claim 1 are not patentably distinct.
Regarding claim 2, below is a table detailing the claim of the instant application (left column) and the conflicting claim of the copending application 18/160,129 (right column).
18/467,238 – Claim 2
18/160,129 – Claim 2
2. The production method according to claim 1, wherein,
the compound (1) is a compound represented by the general formula (1):
General formula (1): A1-R1-C≡CX1
wherein,
- A1 is -COOM, -SO3M, -OSO3M, -B(OM)(OR2), -OB(OM)(OR2), -PO(OM)(OR2), or -OPO(OM)(OR2);
-- M is H, a metal atom, NR34, imidazolium optionally having a substituent, pyridinium optionally having a substituent, or phosphonium optionally having a substituent;
-- R3 is the same or different at each occurrence and is H or an organic group;
-- R2 is H, a metal atom, NR34, imidazolium optionally having a substituent, pyridinium optionally having a substituent, phosphonium optionally having a substituent, or an alkynyl group;
- R1 is a linking group; and
- X1 is H, a hydrocarbon group, or A1, and the hydrocarbon group optionally has a halogen atom, ether bond, ester bond, or amide bond.
2. The production method according to claim 1, wherein,
the compound (1) is a compound (1) represented by general formula (1):
General formula (1): A1-R1-C≡CX1
wherein,
- A1 is -COOM, -SO3M, -OSO3M, -B(OM)(OR2), -OB(OM)(OR2), -PO(OM)(OR2), or -OPO(OM)(OR2);
-- M is H, a metal atom, NR34, optionally substituted imidazolium, optionally substituted pyridinium, or optionally substituted phosphonium;
-- R3 is the same or different at each occurrence and is H or an organic group;
-- R2 is H, a metal atom, NR34, optionally substituted imidazolium, optionally substituted pyridinium, optionally substituted phosphonium, or an alkynyl group;
- R1 is single bond or a divalent hydrocarbon group optionally having a halogen atom; and
- X1 is H, A1, or a hydrocarbon group optionally having a halogen atom, an ether bond, an ester bond, or an amide bond.
As can be seen from the table above, both claim(s) 2 (depending from their respective independent claims of a method of producing an aqueous dispersion of a fluoropolymer) teach verbatim the exact same compound (1). Thus, the processes detailed in the instant claim 2 & in the conflicting claim 2 are not patentably distinct.
Regarding claims 3, 4 & 5, below is a table detailing the claim of the instant application (left column) and the conflicting claim of the copending application 18/160,129 (right column).
18/467,238 – Claims 3, 4 & 5
18/160,129 – Claim 4
3. The production method according to claim 2, wherein,
R1 is single bond or a divalent hydrocarbon group optionally having Cl, Br, or I.
4. The production method according to claim 2, wherein,
X1 is H, a hydrocarbon group optionally having Cl, Br, I, ether bond, ester bond, or amide bond, or A1.
5. The production method according to claim 2, wherein,
the alkynyl group of R2 is free from a fluorine atom.
4. The production method according to claim 1, wherein,
the compound (1) is a fluorine-free compound.
As can be seen from the table above, the collective effect of claims 3, 4 & 5 (of the instant application), and of claim 4 (of ‘129), is further limiting the compound (1) of general formula (1) to ultimately be a fluorine-free compound. In view of the collective effect of claims 3, 4 & 5 of the instant application, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the limitations of claims 2 & 4 of ‘129 as they represent a specific embodiment of the claimed invention wherein the compound (1) is free of fluorine, or a fluorine-free compound. Thus, claims 3, 4 & 5 of the instant application will abide by the limitations established in claims 2 & 4 of ‘129, and therefore, the claims are not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2 – 5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the double patenting rejection is overcome. The following is an examiner’s state of reasons for allowance:
Claim 2 (dependent upon claim 1) is drawn to a compound (1) for use in the method of producing a fluororesin, as detailed in claim 1. Claims 3, 4 & 5 further limit the method of claim 2.
The closest prior art is attributed to Yoneda et al. (US 12,187,859 B2) and Dadalas et al. (US 6,861,466 B2).
Yoneda teaches production of aqueous dispersion fluoropolymers (Abstract), teaching the use of TFE &/or VDF reacted with a fluorine-free anionic hydrocarbon surfactant in an aqueous medium (col. 102, lines 43-55, col. 102, line 66 – col. 3, line 4, col. 111, lines 35-38), however, Yoneda does not teach a compound having a triple bond and an anionic hydrophilic group as detailed in the instant claim 2.
Dadalas teaches aqueous PTFE dispersions comprising an anionic fluorine-free surfactant (Abstract). In order to obtain the optimal viscosity transition temperature (VTT) for the dispersions, an acetylenic diol (preferably ethoxylated) is added to the mixture (col. 7, line 58-62). However, acetylene diol only reads on the limitations of said compound (1) established in independent claim 1. The dependent claim 2 further limits said compound (1), which acetylene diol does not abide by.
Like Yoneda, Dadalas fails to teach a compound (1), abiding by the general formula (1) detailed in claim 2, reacted with a fluorine-containing monomer and an aqueous medium to produce a fluororesin.
A thorough & comprehensive search of the remaining prior art revealed no other reference or combination of references which would fairly teach, suggest, or otherwise motivate one of ordinary skill in the art to arrive at the claimed invention of claims 2 – 5. Therefore, claims 2 – 5 are distinguished from the prior art.
Conclusion
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762