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 .
Claims filed 11/17/2023 are made of record. Claims 1-4 are currently pending in the application.
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 1-4 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 8 of U.S. Patent No. US 12,492,271. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to a method for producing a fluoropolymer comprising polymerizing fluoromonomer in an aqueous medium in the presence of polymer (I) comprising polymerized units derived from monomer (I) and content of the dimer and trimer of the monomer (I) are in amounts of 1 mass% or less based on polymer (I). The monomer (I) in U.S. Patent No. US 12,492,271 B2, is represented by formula:
PNG
media_image1.png
22
172
media_image1.png
Greyscale
wherein X1, X2, and X3 = F; Z1, Z3 are independently H, F or a fluorine group containing alkyl group and A0 is -SO3M.
Claims in U.S. Patent No. US 12,492,271 B2 are silent with respect to species of monomer (I), mol% of polymerized units derived from perfluoromonomer in the fluoropolymer and mass% of polymerized units derived from monomer (I) in polymer (I) of present claims.
However, Applicant attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of U.S. Patent No. 12,492,271 B2, wherein it teaches that it is preferred that the polymer (I) is a polymer comprising a polymerized unit derived from a monomer
PNG
media_image2.png
20
128
media_image2.png
Greyscale
(col. 11, lines 21-25). Examples of monomers include CF2=CF(OCF2CF2SO3M) (col. 11, lines 56-66). The monomer (I) may be a homopolymer containing only the polymerized unit (I) and is preferred from the view point of solubility in aqueous medium (col. 20, lines 34-42). See examples wherein the TFE is polymerized and includes modifying monomer in small amounts of 0.037% by mass (Table 2 and Example 1). Perfluoroelastomer is a fluoropolymer having a perfluoromonomer unit content of 90 mol% or more based on all polymerized units (col. 2, lines 33-35). Therefore, in light of the teachings in general disclosure of U.S. Patent No. 12,492,271 B2, it would have been obvious to prepare a preferred homopolymer comprising polymerized units derived from monomer (I) of the species of present claims comprising more than 50 mass% of monomer unit (I) and polymerize fluoromonomer to obtain fluoropolymer such as polytetrafluoroethylene and perfluoroelastomer comprising more than 90 mol% of the perfluoromonomer.
Claims 1-4 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. US 12,503,527 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to a method for producing a fluoropolymer comprising polymerizing fluoromonomer in an aqueous medium in the presence of polymer (I) comprising polymerized units derived from monomer (I) compriisng an anionic group -SO3M and content of the dimer and trimer are in amounts of 1 mass% or less based on polymer (I).
Claims in U.S. Patent No. US 12,503,527 B2 are silent with respect to mol% of polymerized units derived from perfluoromonomer in the fluoropolymer and mass% of polymerized units derived from monomer (I) in polymer (I) of present claims.
However, Applicant attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of U.S. Patent No. 12,503,527 B2, wherein it teaches a method for producing polytetrafluoroethylene and perfluoroelastomer (col. 1, lines 20-28). The perfluoroelastomer means a fluoropolymer having a perfluoromonomer content of 90 mol% or more (col. 2, lines 33-36). The Polytetrafluoroethylene is preferably a fluoropolymer having tetrafluoroethylene content of 99 mol% or more based on all polymerized units (col. 2, lines 62-65). It is preferred that the content of polymerized unit I is 100 mol% and it is preferable that polymer (I) contains only the polymerized unit (I) (col. 20, lines 4-11). Therefore, in light of the teachings in general disclosure of U.S. Patent No. 12,503,527 B2, it would have been obvious to prepare a preferred polymer (I) comprising polymerized units (I) derived from monomer (I) of the species of present claims comprising more than 50 mass% of monomer unit (I) and polymerize fluoromonomer to obtain a polytetrafluoroethylene and perfluoroelastomer comprising more than 90 mol% of the fluoroelastomer, absent evidence to the contrary.
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 (i.e., changing from AIA to pre-AIA ) 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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Merlo et al (US 2020/0017620 A1).
Regarding claims 1 and 3, Merlo et al disclose in working example 2, polymerization of tetrafluoroethylene (i.e., reads on polymerizing a perfluoromonomer in present claim 1) with dispersant (D-1) of preparative example 1 in demineralized water (i.e., reads on polymerizing in an aqueous medium in the presence of polymer (I) in present claim 1). The polymerization process comprises 49.5 g of dispersant and 600 g of tetrafluoroethylene (paragraph 0162) which reads on content of polymerized unit derived from perfluoromonomer in the fluoropolymer is more than 90 mol% of all polymerized units of the fluoropolymer in present claim 1. Aqueous phase comprises dispersant completely incorporated in the PTFE dispersion obtained (paragraph 0163) which reads on fluoropolymer is polytetrafluoroethylene in present claim 3. The dispersant is formed from 72.5 mol% of TFE and 27.5 mol% of SFVE (paragraph 0157) in which SO2F is converted to SO3Na to form I-TFE-SFVE(SO3Na)I (paragraphs 0159-0161). SFVE is represented by the following formula: CF2=CF-O-CF2CF2-SO2F (paragraph 0151). Hence, SFVE(SO3Na) is represented by the formula: CF2=CF-O-CF2CF2-SO3Na (i.e., reads on monomer I of formula I in present claim 1, wherein R = a single bond, Rf = fluorine-containing alkylene group having 2 carbon atoms, and M = metal atom in present claim 1). The amount of monomer of formula I (i.e., CF2=CF-O-CF2CF2-SO3Na) in dispersant D-1 is calculated to be about 56 mol% (i.e., reads on polymer (I) comprising monomer (I) in amounts of more than 50 mol% in present claim 1. It is noted that there is no dimer or trimer formed in the preparation of dispersant (i.e., reads on dimer and trimer is 1.0 mass% or less which includes 0 mass%). Additionally, Merlo et al teach that fluoropolymer solids in the dispersion may be upconcentrated as needed by any of the known techniques such as ultrafiltration (paragraph 0146). Hence, given that the upconcentration includes the preferred ultrafiltration technique as in present application (paragraph 0166), it is the Office’s position that upconcentrated dispersion, of Merlo et al, would inherently have less than 1% mass of trimer or dimer.
Regarding claim 2, examples of monomers used to form the dispersant include CF2=CF-O-(CF2)mSO2X with X being OXa, m = 1 to 10 (paragraph 0050) and Xa is H, ammonium group or monovalent metal (paragraph 0038) which reads on monomer of formula (I) wherein R = single bond and Rf = fluorine-containing alkylene group having 1 to 10 carbon atoms, M = H, metal or NR74 wherein R7 = H in present claim 2.
Regarding claim 4, Merlo et al teach that method can yield fluoropolymers that can be cured to form fluoroelastomers (paragraph 0119) which reads on perfluoro elastomer in present claim 4.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Nanda et al (WO 2021/100836 A1).
The applied reference has a common inventor/assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
It is noted that WO 2021/100836 (WO) is being utilized for date purposes. However, since WO is not in English, US equivalent for WO, namely, Nanda et al (US 2022/0282008 A1 with a foreign priority date of 11/9/2019) is referred to in the body of the rejection below. All column and line citations are to the US equivalent.
Regarding claims 1 and 2, Nanda et al teach, in claim 1, a method for producing a fluoropolymer, the method comprising polymerizing a fluoromonomer in an aqueous medium in the presence of a polymer (I) to obtain a fluoropolymer (i.e., reads on polymerizing a perfluoromonomer in an aqueous medium in the presence of polymer (i) to obtain a fluoropolymer in present claim 1) wherein polymer (I) is a polymer of monomer (I). The content of dimer or trimer of the monomer (I) may be 1.0% by mass or less (i.e., reads on content of dimer or trimer of the monomer in polymer (I) is 1.0 mass% or less in present claim 1). See claim 3, wherein the monomer (I) is represented by the following general formula (I):
PNG
media_image3.png
18
126
media_image3.png
Greyscale
wherein Rf is a fluorine containing alkylene group having 1 to 40 carbon atoms or a fluorine-containing alkylene group having 1 to 100 carbon atoms and having an ether bond or keto group and A is SO3M, wherein M is a H atom, NR74, imidazolium optionally having a substituent, pyridinium optionally having a substituent or phosphonium optionally having a substituent and R7 is H atom or an organic group (i.e., reads on monomer of formula (I) in present claim 1, wherein R is a single bond, Rf is an alkylene group and M is H atom, NR74, imidazolium optionally having a substituent, pyridinium optionally having a substituent or phosphonium optionally having a substituent and R7 is H or an organic group, and monomer (I) represented by formula 2 in present claim 2). The polymer (I) may be a homopolymer comprising only the polymerized unit (I). From the view point of solubility in the aqueous medium, preferred is a homopolymer comprising only the polymerized unit (I) (paragraph 0202) which reads on polymerized unit derived from monomer (I) in the polymer (I) is 50% by mass or more which includes 100 mass%. The TFE polymer may be a homopolymer or may be a copolymer containing one or more fluorine-containing monomer (paragraph 0514) which reads on perfluoro monomer in the fluoropolymer is 90 mol% or more based on all polymerized units of fluoropolymer in present claim 1.
Regarding claim 3, Nanda et al teach a method for producing polytetrafluoroethylene (title) which reads on polytetrafluoroethylene in present claim 3.
Regarding claim 4, Nanda et al teach a method for producing perfluoroelastomer (title) which reads on perfluoroelastomer in present claim 4.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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.
/KARUNA P REDDY/Primary Examiner, Art Unit 1764
Prosecution Insights