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 .
This communication is responsive to the claim set filed 11/17/2023. Claims 1-15 are pending and under consideration in this Office Action.
Claims 1-15 are rejected for the reasons set forth below.
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The Examiner found disclosure of the instant claims 1-6, 9-10 and 12-15 in the JP2021084881 application, therefore, claims 1-6, 9-10 and 12-15 has the effective filling date of 05/19/2021. The Examiner found disclosure of the instant claims 7-8 in the JP2021188916 application, therefore, claims 7-8 has the effective filling date of 11/19/2021. The Examiner did not find disclosure of the instant Claim 11 in the priority applications. Therefore, Claim 11 has the effective filling date of 11/17/2023.
If claims 7-8 and 11 are disclosed in the earlier applications. Applicant is advised to submit English translation of the disclosure, with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim Interpretation
Claim 1 claims Rf is a fluorine-containing alkylene group having 1 to 40 carbon atoms or a fluorine-containing alkylene group having 2 to 100 carbon atoms and having an ether bond or a keto group. In accordance with instant specification paragraph [0088], Rf can be:
a fluorine-containing alkylene group having 1 to 40 carbon atoms;
a fluorine-containing alkylene group having 2 to 100 carbon atoms and an ether bond;
or,
a fluorine-containing alkylene group having 2 to 100 carbon atoms and a keto group.
Claim 11 claims the fluoropolymer is substantially free of a dimer and a trimer of the monomer (I). In accordance with the instant specification [0142], it is interpreted as the fluoropolymer contains a dimer, a trimer, or a combination thereof in the amount of 1% by mass or less.
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.
(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, 4-7 and 13-15 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Tatemoto (US6,274,677 B1).
Regarding Claim 1, Tatemoto teaches a copolymer derived from a monomer of:
MOSO2CFXCF2O(CFXCF2O)nCF=CF2, wherein n=0 to 5, M is a metal atom, X a fluorine atom, or a trifluorometyl group (claim 5) The monomer reads on the instant claimed General formula (I). Attention is drawn to Example 2, wherein a copolymer obtained from NaSO3CF2CF2OCF=CF2 and tetrafluoroethylene (TFE). The resulting copolymer contains 41 mol% of NaSO3CF2CF2OCF=CF2, corresponding to 68 wt.% of the copolymer falling within the claimed 50% by mass or more.
Regarding Claim 2, the copolymer of Example 2 has a molecular weight of 110,000, reading on more than 0.6 X 104.
Regarding Claim 4, X is F in NaSO3CF2CF2OCF=CF2.
Regarding Claim 5, Rf is a C2 fluorine-containing alkylene group in NaSO3CF2CF2OCF=CF2.
Regarding Claim 6, the co-monomer of the copolymer is tetrafluoroethylene (CF2=CF2).
Regarding Claim 7, the copolymer of Example 2 contains about 68 wt.% units derived from the monomer reading on the instant claimed formula (I) and 32 wt.% units derived from the monomer reading on the general formula CFR=CR2.
Regarding Claims 13-14, Example 2 of D1 discloses the preparation of a 14 mass% solution of polymer in water (5 g polymer is dissolved in 30 ml water).
Regarding Claim 15, the copolymer of Example 2 is made into a sheet.
Claims 1, 4-8 and 13-15 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Murai et al. (US2012/0178017 A1).
Regarding Claim 1, Murai teaches a fluoropolymer has a monomer unit having an SO3Z group, Z is hydrogen, metal atom or NR group (ab.). Attention is drawn to Example 2 where the polymer is derived from CF2=CF-O-(CF2)2-SO3H which reads on the instant claimed formula (I). And the polymer contains 45.2 mol% of the repeating units derived from CF2=CF-O-(CF2)2-SO3H, converting to wt.%, the polymer contains about 70 wt.% of the units derived from CF2=CF-O-(CF2)2-SO3H.
Regarding Claim 4, X is F in CF2=CF-O-(CF2)2-SO3H.
Regarding Claim 5, Rf is (CF2)2 in CF2=CF-O-(CF2)2-SO3H.
Regarding Claim 6, the co-monomer of Example 2 is CF2=CF2.
Regarding Claim 7, the polymer of Example 2 contains about 70 wt.% of CF2=CF-O-(CF2)2-SO3H and about 30 wt.% of CF2=CF2.
Regarding Claim 8, the molar ratio of CF2=CF-O-(CF2)2-SO3H: CF2=CF2 is 45.2 : 54.8, which is close to 1:1; CF2=CF2 is a small, unhindered symmetric molecule, which easily fits next to the bulky radical end of CF2=CF-O-(CF2)2-SO3H. Thus, it would be reasonably to infer the alternating ratio of the two monomers is 40% or more.
Regarding Claims 13-15, Murai teaches an electrolyte emulsion contains 2 to 80% by mass of the fluoropolymer and water (claim 9). Murai further teaches an electrolyte membrane comprising the electrolyte emulsion (claim 11).
Claims 1-8 and 13-15 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Atsushi et al. (JP2002260705 A, Espacenet English translation is provided herein).
Regarding Claim 1, Atsushi teaches a fluoropolymer has a monomer unit having the formula of: CF2=CFO(CF2CFYO)k'(CF2)2S03M, Y represents a fluorine atom or trifluoromethyl group, k' represents 0 or 1, M is a hydrogen atom, an alkali metal atom or NR. The formula reads on the instant claimed general formula (I). Attention is drawn to the Synthesis Example 1, where a polymer is obtained of polymerization of CF2=CFOCF2CF(CF3)OCF2CF2SO3H (PSVE-H) and Perfluoro(2,2-dimethyl-1,3-dioxole) (PDD), the resulted polymer has molar ratio of PDD/PSVE-H is 56.5/43.5, converting to wt.%, the polymer contains about 58 wt.% of units derived from PSVE-H.
Regarding Claim 2, the obtained polymer has a weight average molecular weight of 5.6 X104.
Regarding Claim 3, the obtained polymer has a number average molecular weight of 3.3X104, the molecular weight distribution is 1.7.
Regarding Claim 4, X in CF2=CFOCF2CF(CF3)OCF2CF2SO3H is F.
Regarding Claim 5, Rf in PSVE-H is a fluorine-containing alkylene group having 5 carbon atoms and having an ether bond.
Regarding Claims 6-7, the Synthesis Example 5 discloses a TFE/PSVE-H copolymer wherein the molar ratio of TFE/PSVE= 82.2/17.8, converting to weight ratio, PSVE/TFE=49/51, close to 50/50.
Regarding claim 8, as discussed in Claims 6-7 above, Atsushi teaches a polymer is obtained from the claimed monomers in the claimed amount. Atsushi further teaches the polymerization is processed with nitrogen at 400C ([0115]), therefore, the polymer is obtained with a substantially identical process to the instant application. Thus, the resulting polymer should likewise be substantially identical to the claimed copolymer. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding Claim 13-15, Murai teaches a coating liquid containing TFE/PSVE-H copolymer and water and the solid content is 8%, the solid content of the TFE/PSVE-H copolymer is 2.4%.
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 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 3, 8 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tatemoto, as applied to Claim 1 at para. 9 above.
Regarding Claims 3 and 11-12, Example 2 of Tatemoto discloses of repeating purification of the resulted copolymer. The purification decreases molecular weight distribution value and contents of dimer and trimer and fraction having a molecular weight of 3,000 or less contained in the copolymer. NaSO3CF2CF2OCF=CF2 dimers or trimers are environmental hazardous and causes bleeding of products made from NaSO3CF2CF2OCF=CF2 polymer and the dimers or the trimers. Therefore, one ordinary skilled artisan is motivated, before the effective filing date of the instant application, to eliminate NaSO3CF2CF2OCF=CF2 dimers and trimers from the copolymer composition. The low-molecular-weight fraction has -SO3 concentration, therefore, the low-molecular-weight molecules behave more like surfactants than structural polymers, as such mechanical strength would be impaired of the copolymer containing the low-molecular-weight fraction. Thus, one ordinary skilled artisan is motivated, before the effective filing date of the instant application, to eliminate the low-molecular-weight fraction.
Further, Tatemoto discloses the copolymer is made into a sheet (example 2). A polymer with narrower molecular weight distribution values would result in smoother surfaces and more precise dimensional control in the finished product. Thus, molecular weight distribution would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of the instant application. As such, without showing unexpected results, the claimed amount of molecular weight distribution cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of instant application would have optimized, by routine experimentation, the molecular weight distribution values to obtain a desired final product, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Regarding Claim 8, The polymer of Example 2 is obtained from 41 mol% of NaSO3CF2CF2OCF=CF2 and 59 mol% of TFE. Poly(TFE) is highly crystalline, rigid, and prone to stress cracking. Thus, one ordinary skilled artisan would have been motivated to make the alternating ratio of each of the blocks as high as possible. Tatemoto discloses that the copolymer of Example 2 is an A-B-A block copolymer, A being a crystalline random copolymer segment and B being an amorphous random copolymer segment (9:5-10). Therefore, one ordinary skilled artisan would have been motivated to make B segment 100% alternating ratio, A segment contains a 100% alternating ratio subsegment next to a PTFE subsegment, consequently, the polymer of Example to can have 80% alternating ratio (100-(59-41)).
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Murai, as applied to Claim 1 at para. 10 above.
Regarding Claims 9-10, Murai teaches a polymer can have 10-95 mol% of CF2=CF-O-(CF2)2-SO3H and 5 to 90 mol% of CF2=CF2 ([0023]), where a polymer is obtained from 95 mol% of CF2=CF-O-(CF2)2-SO3H and 5 mol% of CF2=CF2, the wt.% of CF2=CF-O-(CF2)2-SO3H is 98.83 wt.%. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (See MPEP2144.05 I). Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Here, 98.83 wt.%. is rounded to 99 wt.% and close to 100 wt.%, therefore, one ordinary skilled artisan would have been motivated to obtain a polymer which consists of the SO3Z group-containing monomer.
Regarding Claims 11-12, Murai teaches filtering the obtained copolymer ([0183] and [0185]). One ordinary skilled artisan would have been motivated to eliminate dimer and trimer of the constitutive monomers and low-molecular-weight fraction, before the effective filing date of the instant application.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Atsushi, as applied to Claim 1 at para. 11 above.
Atsushi teaches purifying the obtained copolymer ([0116-0117]). As discussed above, one ordinary skilled artisan would have been motivated to eliminate dimer and trimer of the constitutive monomers and low-molecular-weight fraction. Therefore, the amount of the impurities would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of instant application. As such, without showing unexpected results, the claimed dimer and trimer content and low-molecular-weight fraction amount cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of instant application would have optimized, by routine experimentation, the dimer and trimer content and low-molecular-weight fraction amount, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-12 of copending Application No. 18/317,531 (‘531) dated 08/14/2023. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claims 1 and 9-10, claim 1 of ‘531 claims a fluoropolymer derived from monomer (I) having the formula of CX2=CX-O-Rf-A, wherein X and Rf have the same definition of the instant X and Fr. A can be SO3M. claim 1 of ‘531 further claims the monomer (I) is 40 mol% or more based on the entirety of polymerization units constituting the fluoropolymer, in other words, the monomer (I) is 40 mol% to 100 mol% based on the entirety of polymerization units constituting the fluoropolymer. Thus, the content of the monomer (I) claimed by ‘531 overlaps the instant claimed 50% by mass or more, 99% by mass or more, and 100% by mass.
Regarding Claim 2, claims 1-2 of ‘531 claim the limitation.
Regarding Claim 3, claim 3 of ‘531 claims the limitation.
Regarding Claim 4, claim 4 of ‘531 claims the limitation.
Regarding Claim 5, claim 5 of ‘531 claims the limitation.
Regarding Claim 6, claim 7 of ‘531 claims the limitation.
Regarding Claim 7, although claim 8 claims mass ratio while claim 8 of ‘531 claims molar ratio, when using a common CFR=CR2 molecule CF2=CF2 and Na as the metal atom, Rf is CF2 or CF2CF2, the ranges of ‘531 overlap the ranges of the instant Claim 7.
Regarding Claim 8, claim 9 of ‘531 claims the limitation.
Regarding Claim 11, claim 11 of ‘531 claims the limitation.
Regarding Claim 12, the scope of claim 12 of ‘531 overlaps the scope of the instant Claim 12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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