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 Interpretation
Independent claim 1 recites materials that are “non-melt-flowable”.
The specification states the following:
The term "non-melt-flowable" herein means that the melt flow rate (MFR) is lower than 0.25 g/10 min, preferably lower than 0.10 g/10 min, more preferably 0.05 g/10 min or lower…
Alternatively, a fluororesin may also be determined as being non-melt-flowable in the case where the thickness of a molded article prepared by compression-molding the fluororesin to provide a preformed article (non-fired molded article) and heating this preformed article at the melting point of the fluororesin or higher for one hour or longer is smaller than the thickness before heating by less than 20% or is greater than the thickness before heating. (Spec. p. 4, ¶¶ [0014]-[0015]).
The term “non-melt-flowable” is thus defined by the specification.
Claim Rejections – 35 U.S.C. § 112(b)
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.
Claims 1-24 are 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.
As set forth above, the term “non-melt-flowable” is defined by the specification. The cited definition in the specification includes statements about melt flow rates that are modified by the term “preferably”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites a range of values of melt flow rate of lower than 0.25 g/10 min, which is the broader statement of the limitation, and the claim also recites two ranges modified by the term “preferably”, which are the narrower statements of the limitation. The claim is considered indefinite because there is a question or doubt as to whether the narrower ‘preferable’ limitations are (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-24 are dependent upon independent claim 1, and they are indefinite for the same reason.
As to claim 8: The claim recites “a low molecular weight” fluorine-containing compound. The term “low” is not defined by the claims or specification. The term “low” is a relative term because it requires a comparison to another composition having a different, higher molecular weight. However, the claims and specification do not provide such a point of comparison by which to judge the scope of the term.
The term “low” is subjective because it requires one to exercise judgment with respect to whether any particular molecular weight falls within the scope of a “low” molecular weight. The specification does not contain a disclosure of an objective standard by which to determine whether any particular value of a molecular weight is low or else higher than low. Absent any controlling definition or objective standard by which to judge the scope of the term, different persons may reach different conclusions as to the scope of “low” molecular weights. See MPEP 2175.05(b)(IV).
Because one of ordinary skill in the art would need to exercise subjective judgment to make such a determination, the claim as read in light of the specification does not set forth the scope of the claimed invention with reasonable clarity.
Claim Rejections – 35 U.S.C. § 102
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 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 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.
Claims 1-2, 13, 17, and 24 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by WO 97/36954 A1 (herein “Clough”).
As to claims 1-2: Clough describes a fluororesin composition (see the paragraph bridging pp. 4-5) comprising non-melt-flowable granular-type PTFE particles, which can be sintered or unsintered particles, or a mixture of both (see the bottom of p. 4), and which are admixed with melt-flowable fluorinated polymer particles (see pp. 4-5). The sintered and unsintered particles of the non-melt-flowable PTFE correspond to the presently recited fluororesin A and fluororesin C, respectively. The melt-flowable fluorinated polymer corresponds to the presently recited fluororesin B.
Clough further discloses that the composition is baked to obtain a fused composition (see the last full paragraph on p. 5). Because the particles of the resin composition are fused, there is a reasonable basis to conclude that Clough’s fluororesin composition is non-melt-flowable.
As to claim 13: Clough further discloses that the composition is sprayed or cast onto a surface to form a coating, and the coating is sintered or fused (see the first full paragraph on p. 7). Clough does not specifically disclose a step of compression-molding or a step of firing.
The presently recited steps of compression-molding and firing refer to the method of making the composition rather than any particular structural characteristics of the composition. The limitations are thus product-by-process limitations. Case law has established that the patentability of a product-by-process is determined by the patentability of the product itself, i.e. that the patentability of a product does not depend upon its method of production (MPEP 2113). The process limitations are only given consideration regarding patentability if there is criticality to the structure implied by the steps of the process. Because no such criticality has been demonstrated for the use of compression-molding and firing, the claim stands properly anticipated by Clough, notwithstanding any difference in the method by which Clough’s composition is made.
As to claim 17: Clough further discloses an example of a sintered PTFE that is obtained by grinding (see the bottom of p. 11). Clough does not specifically disclose the presently recited pulverizers.
The presently recited step of pulverizing refers to the method of making the composition rather than any particular structural characteristics of the composition. The limitations are thus product-by-process limitations. Case law has established that the patentability of a product-by-process is determined by the patentability of the product itself, i.e. that the patentability of a product does not depend upon its method of production (MPEP 2113). The process limitations are only given consideration regarding patentability if there is criticality to the structure implied by the steps of the process. Because no such criticality has been demonstrated for the use of the recited pulverizers, the claim stands properly anticipated by Clough, notwithstanding any difference in the method by which Clough’s composition is made.
As to claim 24: The present claim recites that the composition “is used for” various products. The claim thus recites intended uses of the composition, and these intended uses do not recite any particular structural characteristics of the composition. Because Clough’s compositions include the same materials as the presently recited compositions, there is a reasonable basis to conclude that they are capable of being used for the same purposes as the present compositions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
Prosecution Insights