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 .
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 1-14 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.
The recitation of “a salt of each of the compounds with an alkali metal” in claim 1, line 7, causes confusion. Compound can refer to any chemical compound. Which compound does the applicant intend to refer to? The examiner invites the applicant to clarify. For purposes of examination, the compound is interpreted to refer to the “a compound represented by the following general formula (b1)” or “a compound represented by the following general formula (b2)”.
The recitation of “a salt of the compound with an alkali metal” in claim 9, lines 3-4, causes confusion. It is unclear which compounds are being referred to. Does this refer to the compound represented by general formula (b1) or the compound represented by general formula (b2)? The examiner invites the applicant to clarify. For purposes of examination, the claim is interpreted as “a salt of the compound represented by the general formula (b1) or (b2)”.
The recitation of “a salt of any of these compounds” in claim 10, line 5 causes confusion. It is unclear which compounds are being referred to. The examiner invites the applicant to clarify.
Claims 2-8 and 12-14 are rejected for being dependent on claim 1.
Claim Analysis
Summary of Claim 1:
A fluoroelastomer crosslinkable composition comprising: a polyol-crosslinkable fluoroelastomer (a); and a cross-linking agent (b),
wherein the cross-linking agent (b) is at least one selected from the group consisting of
a compound represented by the following general formula (b1), a compound represented by the following general formula (b2), and a salt of each of the compounds with an alkali metal, an alkaline earth metal, or an onium compound:
PNG
media_image1.png
275
826
media_image1.png
Greyscale
wherein X1 is a perfluoroalkyl group having 1 to 5 carbon atoms, a fluoroalkyl group having 1 to 5 carbon atoms, a perfluoroalkoxy group having 1 to 5 carbon atoms, a fluoroalkoxy group having 1 to 5 carbon atoms, a perfluoroacyl group having 1 to 5 carbon atoms excluding carbon in carbonyl group, a fluoroacyl group having 1 to 5 carbon atoms excluding carbon in carbonyl group, a perfluorooxycarbonyl group having 1 to 5 carbon atoms excluding carbon in carbonyl group, a fluorooxycarbonyl group having 1 to 5 carbon atoms excluding carbon in carbonyl group, or fluorine atom; and hydrogen atom bonded to benzene ring is optionally replaced with any substituent other than fluorine atom and chlorine atom;
PNG
media_image2.png
322
826
media_image2.png
Greyscale
wherein X2 is a perfluoroalkyl group having 1 to 5 carbon atoms, a fluoroalkyl group having 1 to 5 carbon atoms, a perfluoroalkoxy group having 1 to 5 carbon atoms, a fluoroalkoxy group having 1 to 5 carbon atoms, a perfluoroacyl group having 1 to 5 carbon atoms excluding carbon in carbonyl group, a fluoroacyl group having 1 to 5 carbon atoms excluding carbon in carbonyl group, a perfluorooxycarbonyl group having 1 to 5 carbon atoms excluding carbon in carbonyl group, a fluorooxycarbonyl group having 1 to 5 carbon atoms excluding carbon in carbonyl group, or fluorine atom; and hydrogen atom bonded to benzene ring is optionally replaced with any substituent other than fluorine atom and chlorine atom.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Pattison (GB 1356344 as listed on IDS dated 12/25/2023).
Regarding claim 1 and 3, Pattison discloses in Example 5 a composition comprising a fluoroelastomer and a crosslinking agent 4-chlororesorcinol (page 4, lines 40-56, page 5, lines 1-44, See Table, page 6-7), thereby reading on a fluoroelastomer crosslinking composition and a polyol-crosslinkable fluoroelastomer (a) of instant claim 1.
Pattison does not disclose a crosslinking agent (b) as recited in instant claim 1 and 3.
However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." (MPEP 2144.09(I) (quoting In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979)). See also In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990).) In this instance, because the crosslinking agent of Pattison has chlorine atoms and the compound represented by the following general formula (b1) has fluorine atoms are analogs (X1 is Cl in Patterson rather than F of the present claim) and are used for the same purpose (cross linking agents), it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the crosslinking agent of claim 1 and 3.
Regarding claim 2, Pattison discloses the fluoropolymer of Example 5 is vinylidene fluoride, thereby reading on the instant claim.
Regarding claim 4, as discussed above, Pattison teaches 4-chlororesorcinol as the crosslinking agent, which has a similar structure to the compound represented by the following general formula (b1). Claim 4 does not limit the crosslinking agent to the compound represent by the following general formula (b2). That is, because claim 4 also includes the limitations of claim 1, claim 4 also includes the limitation that the crosslinking agent is the compound represented by the following general formula (b1). Because Pattison teaches a crosslinking agent having a similar structure to the compound represented by the following general formula (b1), claim 4 is rendered obvious by Pattison.
Regarding claim 5, Pattison discloses in Example 5 the amount of crosslinking agent is 1.2 parts per 100 parts of fluoroelastomer. Pattison also broadly teaches the amount of crosslinker per 100 parts of fluoroelastomer is 0.1 to 5.0 parts by weight (claim 3), thereby lying within the claimed range.
Regarding claim 6, Pattison discloses Example 5 comprises an accelerator, thereby reading on the instant claim.
Regarding claim 7 and 8, Pattison discloses Example 5 comprises 6 parts of calcium hydroxide per 100 parts of fluoroelastomer, thereby lying withing the claimed range of instant claim 7 and reading on the at least one acid acceptor (d) that is a metal hydroxide of instant claim 8. Pattison also broadly teaches the amount of acid acceptor is 1-15 parts per 100 parts by weight of fluoroelastomer, thereby lying within the claimed range of instant claim 7.
Regarding claim 9 and 10, Pattison teaches the crosslinking agent is 4-chlororesorcinol, which is structurally similar to 4-fluororesorcinol and the compound represent by the general formula (b1) as reject in the rejection for claim 1 above, thereby reading on the instant claim.
Regarding claim 11, Pattison does not disclose or teach the cross-linking agent (b) is 5-fluororesorcinol.
However, 4-fluororesorcinol and 5-fluororesorcinol are isomers. Pattison teaches a compound that is close in structure as 4-fluororesorcinol as discussed above. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." (MPEP 2144.09(I) (quoting In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979)). See also In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990).) In this instance, because the crosslinking agent of Pattison has chlorine atoms and the compound represented by the following general formula (b1) has fluorine atoms are analogs (X1 is Cl in Patterson rather than F of the present claim) and are used for the same purpose (cross linking agents), it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the crosslinking agent of claim 11.
Regarding claim 12, 13, and 14, Pattison disclose the fluoroelastomer crosslinkable composition was used to form an O ring, thereby reading on the composition of instant claim 12, the formed article of instant claim 13, and the sealing material of instant claim 14.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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, Joseph Del Sole can be reached at (571) 272-1130. 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.
/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights