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 .
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.
Information Disclosure Statement
The information disclosure statement filed 12/6/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. The examiner notes that the copy of JP2002-80672 provided by applicant is blank. The provided document only displays two tables; none of the text of the document is present. It has been placed in the application file, but the information referred to therein has not been considered.
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 10 and 11 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 11: Claim 11 depends from claim 6, and recites a method comprising the following steps.
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The claim as written states that the crosslinked fluororesin is mixed with a base resin before the crosslinking. Note, however, that the crosslinked fluororesin is made by the crosslinking step in the process of the parent claim; there is no crosslinked fluororesin before the crosslinking step. The scope of the claimed process is therefore indefinite, as it is unclear how the base resin can be mixed with the crosslinked fluororesin before the crosslinked fluororesin has been made.
Claim Interpretation
Regarding claim 11: As noted above, the scope of the claim is currently indefinite as is it unclear how the base resin can be mixed with the crosslinked fluororesin before the process step that makes the crosslinked fluororesin has been performed. Note that applicant’s specification teaches that the disclosed process may comprise a step of mixing the base resin with an uncrosslinked fluororesin prior to the crosslinking step (see specification ¶0045). Given this disclosure and claim’s requirement that the mixing to be done before the crosslinking step, the examiner has interpreted claim 11 to be intended to require that the base resin is mixed with the fluororesin before the crosslinking step of parent claim 6 is performed.
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) 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishi et al, JP2003253007 (Nishi).
A machine translation of Nishi was used to prepare this Office Action.
Nishi discloses a process of irradiating a fluororesin with radiation, then subjecting the irradiated fluororesin to a heat treatment at a temperature ≥ 50 °C (abstract, ¶0006). Nishi teaches that said heat treatment reduces the presence of low molecular weight compounds in the crosslinked fluororesin (for claim 6) (¶0008-0010). The prior art irradiated fluororesin is used in the production of molded articles (¶0001), corresponding to producing a molded body (for claims 4, 10).
Example 3 of Nishi (¶0024, 0021-0022) discloses a process wherein polytetrafluoroethylene (PTFE) is treated via the following steps:
irradiation under a vacuum with an oxygen concentration of 0.5 torr at a temperature of 335 °C with a radiation dose of 100 kGy, corresponding to the crosslinking step (for claim 6);
combining the irradiated PTFE with unirradiated PTFE, corresponding to the claimed base resin (for claims 4, 10); and
heat treatment at 300 °C for 12 hours, corresponding to the claimed heat treatment step (for claim 6).
Regarding the requirement that the fluororesin is crosslinked and has no melt flowability: As noted above, Nishi teaches that the irradiation step results in crosslinking of the fluororesin (¶0008, 0011-0012). The process of Nishi’s Example 3 therefore results in a crosslinked PTFE, corresponding to the claimed crosslinked fluororesin (for claims 1, 3, 4-6, 9). Further note that it is known in the art that PTFE does not flow even when heated above its melting point (for claims 1, 4) (see page 2 of the attached excerpt from https://www.gtweed.com/materials/peek-vs-pek-vs-ptfe/).
Nishi is silent regarding the content of perfluorocarbon containing 8 carbon atoms (for claims 1, 4, 7), and content of perfluorocarbon compounds with 9 to 21 carbon atoms (for claims 2, 8); however, it is reasonably expected that these properties are inherently met by the prior art.
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed above, the prior art Example discloses a process wherein PTFE is first crosslinked via irradiation at a temperature above its melting point at an oxygen concentration of 0.5 torr and a radiation dose of 100 kGy, and subsequently heat treated at a temperature of 300 °C for 12 hours. Note that these are the same conditions taught by the instant specification for the crosslinking step (see specification ¶0014) and heat treatment step (see specification 0023,0024) used to make the claimed crosslinked fluororesin. The prior art example therefore discloses a process wherein the same fluororesin as used by applicant (i.e., PTFE) is subjected to a process of crosslinking and heat treatment using identical conditions as taught by applicant to prepare the claimed crosslinked fluororesin.
Because the prior art crosslinked PTFE appears to be identical to the claimed invention, it is reasonably expected that its properties would necessarily be the same as claimed and inherently be not different from those of the claimed invention. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed crosslinked fluororesin would not be present in the crosslinked PTFE disclosed by Nishi (for claims 1, 2).
Claim Rejections - 35 USC § 103
Claim(s) 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yagi et al, JP2002265630, in view of Nishi et al, JP2003253007.
A machine translation of Yagi was used to prepare this Office Action.
Yagi discloses the production of a composition via a process comprising the steps of
combining an engineering plastic and a fluororesin to form a mixed resin; and
heating said mixed resin to a temperature above the melting points of the engineering plastic and fluororesin and irradiating it with ionizing radiation to perform crosslinking (¶0014-0017).
Yagi further teaches the use of the prior art composition to form molded articles (for claims 6, 10, 11) (¶0006).
Regarding the claimed crosslinked fluororesin: As noted above, the prior art composition comprises a fluororesin. Said fluororesin may be PTFE; as noted above, it is known that PTFE does not exhibit melt flowability (for claims 1, 4). Furthermore, note that Yagi teaches that the fluororesin may be a modified polymer obtained by irradiating a fluororesin with ionizing radiation at a temperature ≥ its melting point at an oxygen concentration of 10 torr or lower (for claim 6) (¶0014); it is known in the art that such treatment results in the crosslinking of the fluororesin. Yagi therefore renders obvious the use of crosslinked PTFE, corresponding to the claimed crosslinked fluororesin (for claims 1, 3-5, 9), as the fluororesin.
Regarding the claimed base resin: As noted above, the prior art composition comprises an engineering plastic, corresponding to the claimed base resin (for claims 4, 10, 11).
Regarding claims 10, 11: Yagi exemplifies a process comprising the steps of
Mixing the engineering plastic PEEK, corresponding to the claimed base resin, with a combination of unmodified PTFE and irradiated PTFE, to form the mixed resin (for claims 10, 11); and
Irradiating the mixed resin at a temperature above the melting points of all components to induce crosslinking (¶0019).
As noted above, Yagi further teaches that the composition is used to produce articles. Note that 1) the unmodified PTFE is not crosslinked prior to its combination with the PEEK and 2) it is then subjected to crosslinking conditions in the irradiation step. The prior art example therefore exemplifies both combining the engineering plastic with the fluororesin before the crosslinking reaction (for claim 11) (with regards to the unmodified PTFE) and before it (with regards to the irradiated PTFE).
Yagi does not specifically exemplify molding the article before crosslinking.
It has been held that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results; see In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (MPEP § 2144.04(IV)(C)). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the prior art process by molding the article prior to crosslinking (for claim 11).
Yagi is silent regarding the use of a crosslinked fluororesin having the claimed contents of perfluorocarbon compound with 8 carbons and 9 to 21 carbons (for claims 1, 2, 4, 7, 8) and the use of a heat treatment step (for claims 6, 10, 11).
As discussed earlier in this Action, Nishi teaches a process of forming a crosslinked fluororesin comprising the steps of 1) crosslinking the fluororesin using ionizing radiation at a temperature above its melting point and an oxygen concentration of 10 torr or less and 2) heating the crosslinked fluororesin at a temperature ≥ 50 °C for 12 to 200 hours in order to remove low molecular weight byproducts of the crosslinking reaction and, as a result, reduce discoloration of the final molded article (for claim 6).(¶0006, 0007, 0010, 0022-0024).
Yagi and Nishi both disclose processes wherein fluororesins such as PTFE are crosslinked using ionizing radiation at a temperature above its melting point and an oxygen concentration of 10 torr or less. As taught by Nishi, it was known in the art that such crosslinking reactions result in the production of low molecular weight byproducts that lead to discoloration in the final product. Nishi further teaches that it was known to perform a heat treatment on the crosslinked fluororesin in order to remove these low molecular weight byproducts.
It has been held that mere purity of a product, by itself, does not render the product nonobvious; see MPEP § 2144.04(VII). As taught by Nishi, it was known that it was desirable to remove low molecular weight byproducts from crosslinked fluororesins because their presence results in discoloration. Furthermore, Nishi teaches that it was known that such byproducts could be removed by performing heat treatment of the crosslinked polymer. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art modify the teachings of Yagi to reduce the presence of low molecular weight compounds (for claims 1, 2, 4, 7, 8) by performing a heat treatment (for claims 6, 10, 11) on the crosslinked polymer(s), with the reasonable expectation of reducing the occurrence of discoloration in the final product as taught by Nishi.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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