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
Claim Objections
Claim 8 and 31 are objected to because of the following informalities: “select from … and…” is not a not a proper Markush group or conventional alternative limitation. One of the “combinations” and “mixtures” should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6 and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 6 and 25 are rejected as being vague and indefinite when these claims recite “…fluorinated polymer that includes a vinylidene fluoride monomer along its backbone, and/or includes vinylidene fluoride, hexafluoropropylene and tetrafluoroethylene as co-monomers along its backbone”, because the recitation cause confusion, it is not clear which and how many monomers are included on the polymer backbone. In this office action, it is taken vinylidene fluoride is included in the backbone of the fluorinated polymer.
Claim Rejections - 35 USC § 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-3, 5-6, 16-23 and 33-35 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bish et al (US 2022/0306782, ‘782 hereafter).
Regarding claims 1-3, 5-6 and 20-23, ‘782 discloses a curable fluoroelastomer (reading upon fluorine-containing polymer) composition and a cured product from the same([0008], [0078]-[0084]), comprising at least one curable fluorine-containing polymer ([0008], [0044]-[0065], [0087], Examples as in Table 1) incorporated with at least one fluid plasticizer comprising a fluorinated organic compound ([0091], Table 1), and at least one curative capable of curing the at least one curable fluorine-containing polymer satisfying present claim 2 ([0067]-[0069], [0088]-[0089], Table 1); wherein the curable fluoroelastomer is a curable perfluorinated polymer can be a copolymer of tetrafluoroethylene, perfluoroalkylvinylether and at least one cure site monomer, wherein the cure site monomer has a cure site with a nitrile group ([0044]-[0065], [0087]), satisfying present claims 3, 5-6 and 23. ‘782 does not expressly set forth that the fluorinated organic compound is capable of reducing viscosity and improving processability, and achieving a lower use temperature as recited in the present claims 1 and 20, and lower Tg and minimum torque vales as recited in the present claims 22 and 23; however, it is well-known in the art that a plasticizer is generally capable of increasing mobility of the polymer chain in a polymer composition having the plasticizer, which renders the polymer in the composition having lower viscosity to improve processibility, lower use temperature, Tg and minimum torque vales as recited in the present claims; therefore, without an objective showing to the contrary, it is reasonable to expect that the prior art fluoroelastomer composition and its cured product would have processed all the properties in the scope of as presently claimed.
Regarding claims 16-18 and 33-35, ‘782 discloses that the amount of the plasticizer can be 7.5 per 100 parts of the curable fluoroelastomer (Table 1) satisfying present claims 16-17 and 33-34. ‘782 also discloses that the composition further include a filler being carbon black in an amount of 85 parts per 100 parts of the curable fluoroelastomer, satisfying present claim 18 (Table 1).
Regarding claim 19, it is noted that the curable fluorine-containing polymer composition as claimed is in intended use format, 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. Therefore, if prior art discloses the curable fluorine-containing polymer composition in this claim, then the prior art the curable fluorine-containing polymer composition will be capable of being used in printing a fluorine-containing elastomer article.
Claims 8-10, 12-15, 25-27 and 29-32 are rejected under 35 U.S.C. 103 as obvious over Bish et al (US 2022/0306782, ‘782 hereafter) in view of Nemser et al (US 2012/0097612, ‘612 hereafter).
Regarding claims 8-10, 12-14, 25-27 and 29-31, ’782 teaches all the limitations of claims 1 and 20, but ‘782 does not disclose that the fluorinated organic compound being an alkoxy fluoroalkanes or alkoxy perfluoroalkenes as recited in the present claims 8-10, 12-14 , 25-27 and 29-31. However, in the same field of endeavor of fluoropolymer composition, ‘612 teaches that fluorinated solvents, including commercial product from 3M such as NovecTM 7100 and NovecTM 7300 ([0029] of ‘612), which are fluorinated organic compounds the same as used in the present application ([0056]) satisfying Formula (A) and all the limitations of claims 8-10, 12-14 , 25-27 and 29-31, are capable of functioning as a plasticizer for the fluorinated polymer ([0020] of ‘612). In light of these teachings, it would have been obvious to one of ordinary skill in the art to use the fluorinated organic compounds as taught by ‘612, which is also capable of functioning as a plasticizer, to replace the fluorinated organic compounds in the composition of ‘782; and because this simple substitution of one known element for another that would provide predictable results (to function as a plasticizer to reduce viscosity and improve processibility in this case) would have been obvious to the ordinarily skilled artisan (See MPEP 2143 (B)).
Regarding claims 15 and 32, modified ‘782 teaches all the limitations of claim 14 and 31, but does not expressly set forth that the fluorinated organic compound is 3-ethoxy- 1,1,1,2,3,4,5,5,6,6,6-dodecafluoromethyl hexane (NovecTM 7500). However, ‘612 teaches that the fluorinated organic compound can be NovecTM 7300, which is 3-methoxy-1,1,1,2,3,4,5,5,-decafluoromethyl-pentane ([0029] of ‘612), a homologue of presently claimed 3-ethoxy-1,1,1,2,3,4,5,5,6,6,6-dodecafluoromethyl hexane. Case law holds that compounds which are position isomers or homologues (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). (See MPEP 2144.09 (II)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
Prosecution Insights