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 § 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)(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.
Claim(s) 1, 2, 4, 5 and 11-15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Maeda et al. (2010/0317815).
Regarding claims 1, 2, 4, 5 and 15: Maeda et al. teach a composition comprising a fluoropolymer [Examples]. Since ammonium 9H-hexadecafluorononanoate is utilized in the examples of Maeda et al. [Examples], (4’) is present in the composition and the amount of formula (4) is 0 ppb. Since ammonium 9H-hexadecafluorononanoate is utilized in the examples of Maeda et al. [Examples], the amount of formulas (5) and (5’) is 0 ppb.
Regarding claim 11: Claim 11 contains product by process limitations. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). The structural limitations are met by Maeda et al. since it is not required that the hydrocarbon-based surfactant be present in the final product.
Regarding claim 12: Maeda et al. teach a powder [Examples].
Regarding claims 13-14: Since the composition is the same as claimed it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. It is noted that the claims do not specify any of the testing method steps, and therefore any testing method may be used to meet the claimed values.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Brothers et al. (2013/0303717).
Regarding claims 1-9, 11 and 15: Brothers et al. teach a fluoropolymer dispersion comprising a fluoropolymer, 1% by mass or more of a hydrocarbon-based nonionic surfactant and 0 wt% of compounds of formula (3), (4), (4’), (5), and (5’) [Examples].
Regarding claim 10: Brothers et al. teach an aqueous dispersion [Abstract; Examples].
Regarding claim 12: Brothers et al. teach a powder [0049, 0197, 0229; Examples].
Regarding claims 13-14: Since the composition is the same as claimed it will possess the claimed properties. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. It is noted that the claims do not specify any of the testing method steps, and therefore any testing method may be used to meet the claimed values.
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brothers et al. (2013/0303717) as applied to claim 1 above.
This rejection is directed to the embodiment wherein at least one of (4), (4’), (5) and (5’) are present in the composition. The amount of 0 ppb is very close to the claimed amount of 1 ppb, and the skilled artisan would not expect any difference between the two compositions. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Terminal Disclaimer
The terminal disclaimer filed on 12/18/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,012,470 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
The Applicant has stated that Maeda teaches more than 100 ppb of (4’). As demonstrated by the Applicant in the remarks of 12/18/2025, claim 1 contains two embodiments separated by the word “or”. While, Maeda does not teach the first embodiment, the second embodiment is satisfied because (5) and (5’) are 0 ppb, which is within the range of “up to 100 ppb”.
The Applicant has alleged that claim 1 requires at least one of (4), (4’), (5) and (5’) present in the composition. This is incorrect. The claimed range of “up to 100 ppb” includes the value of 0 ppb. The claim provides an upper limit to the compounds, but no lower limit.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763