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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory. The most pertinent of these references have been applied below.
Status as Continuation
This application discloses and claims only subject matter disclosed in prior application, PCT/JP2022/012742 03/18/2022, effectively filed 04/02/21, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or division. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 and 37 CFR 1.78.
Election/Restrictions
The applicant has elected Species I1 (claims 1-3 and 8) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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 of this title, 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.
Claim(s) 1-2 and 8 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Eggers et al. (US 20110143138, listed on ISR and IDS).
As to claims 1-2 and 8, Eggers (abs., claims, examples, Tables) discloses a cross-linkable perfluoroelastomer composition (1-2, 9-10, 36-39) comprises a vinylidene fluoride based (36) perfluoroelastomer, epoxy, and a curative of isophthalyl dihydrazide (30, claim 17, 68, examples, Table 1-2) and a functionally equivalent curative of 9,9-bis(4-hydroxypheyl) fluorene (26-30).
Therefore, it would have been obvious to one of ordinary skill in the art to have replaced isophthalyl dihydrazide with 9,9-bis(4-hydroxypheyl) fluorene because of their equivalent functionality as curatives for the cross-linkable perfluoroelastomer composition. These conditions appear to equally apply to both productions using similar curative raw materials. This adaptation would have obviously yielded instantly claimed invention. Eggers is silent on the intended use of "cross-linking agent” of claim 1. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional difference between the claimed and disclosed 9,9-bis(4-hydroxypheyl) fluorene, and the disclosed composition would inherently be capable of performed the claimed intended use. Since 9,9-bis(4-hydroxypheyl) fluorene is a polyol, the resultant perfluoroelastomer would be expected to be polyol-cross-linkable via 9,9-the phenol groups on bis(4-hydroxypheyl) fluorene.
Allowable Subject Matter
The following is an examiner's statement of reasons for allowance:
Claim(s) 3 is(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(s) 3 is(are) allowable over the closest prior art: Eggers et al. (US 20110143138, listed on ISR and IDS).
The loading of curative (0.13 mmol/100 parts perfluoroelastomer_ of is calculated as it follows:
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200
400
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Eggers fails to teach the claimed range.
Therefore, claim 3 is(are) allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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