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. 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 , 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 Group I (claims 1-3 and 12) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2 and 12 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Worm et al. (US 4233421 listed on IDS and ISR).
As to claims 1-2 and 12, Worm (claims, abs., 1:5-15, 4:20-35, examples, tables) discloses a crosslinkable composition comprising a fluoroelastomer comprising vinylidene fluoride and a polyol of:
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242
475
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In light of this, one of ordinary skill would at once envisage selecting the aforementioned x=0 and n=1 (would yield 4,4’-biphenol out of about 10 candidates) to anticipate claims 1-2 and 12, because a genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because “one skilled in [the] art would... envisage each member ” of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962).
Claim(s) 1-2 and 12 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bauete et al. (US 20040116612, listed on IDS and ISR).
As to claims 1-2 and 12, Worm (claim 3, abs., 2, 8, 31-33, examples, tables) discloses a crosslinkable composition comprising a fluoroelastomer comprising vinylidene fluoride and a polyol of:
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485
645
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at a loading of 0.1-20 parts per 100 parts of fluoroelastomer.
In light of this, one of ordinary skill would at once envisage selecting the aforementioned x=0 and n=1 (would yield 4,4’-biphenol out of about 10 candidates) to anticipate claims 1-2 and 12, based on the same rationale of above ¶1.
Claim(s) 1-2 and 12 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jing et al. (US 6911512).
As to claims 1-2 and 12, Jing (claims 8 and 15, abs., 5:1-45, examples, tables) discloses a composition comprising a fluoroelastomer comprising vinylidene fluoride (<5mol%, curing site, out of 6 candidates) and a polyol of 4,4’-dihydroxylbiphenol out of 8 candidates. The same rationale of above ¶1 has been applied to meet the claims. The composition would inherently exhibit the claimed crosslinking, because in view of the substantially identical composition (in this case, the disclosed fluoroelastomer comprising VDF and 4,4’-dihydroxylbiphenol), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
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) 12 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Worm et al. (US 4233421 listed on IDS and ISR).
Disclosure of Worm is adequately set forth in ¶1 and is incorporated herein by reference.
As to claim 12, one having ordinary skill in the art would obviously recognize to prepare the claimed polyol by selecting aforementioned x=0 and n=1 (would yield 4,4’-biphenol), because although many compositions are disclosed in the reference and therefore anticipation does not appear to be present, it has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combination less obvious (Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989).
Claim(s) 3 and 12 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Bauete et al. (US 20040116612, listed on IDS and ISR).
Disclosure of Bauete is adequately set forth in ¶2 and is incorporated herein by reference.
As to claim 3, the disclosed wt% of loading would be expected to yield a range (mmol/100 parts) overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the Bauete since it discloses all applicants' components, values and methods of making.
As to claim 12, one having ordinary skill in the art would obviously recognize to prepare the claimed polyol by selecting aforementioned x=0 and n=1 (would yield 4,4’-biphenol), based on the same rationale of above ¶4.
Claim(s) 2 and 12 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Jing et al. (US 6911512).
Disclosure of Jing is adequately set forth in ¶3 and is incorporated herein by reference.
As to claims 2 and 12, one having ordinary skill in the art would obviously recognize to prepare the claimed fluoroelastomer comprising vinylidene fluoride (<5mol%, curing site, out of 6 candidates) and a polyol of 4,4’-dihydroxylbiphenol, based on the same rationale of above ¶4.
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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