DETAILED ACTION
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 § 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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Nanba et al. (WO2019/168183 A1).
At the outset, it is noted that US 11,767,379 B2 is treated as the English equivalent of the WIPO publication.
Regarding claims 1-5, Nanba teaches the following:
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(Ab, ref. claims).
Additionally, disclosed Example 1 is drawn to polymerizing tetrafluoroethylene (TFE) in the presence of a homopolymer of monomer (a) shown below:
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said homopolymer having a number average molecular weight of 90,000, to provide for an aqueous dispersion having a solids concentration of 20.8 % by mass, and diluted to about 10% by mass. Disclosed monomer (a) reads on formula (1A); Rf=CFCF3, A=NR74= NH4 (claim 2).
Nanba teaches fluoropolymers, such as fluoroelastomers including perfluoroelastomers, formed in the presence of 0.0001 to 20 % by mass of polymer (1), by polymerizing tetrafluoroethylene with comonomers, such as hexafluorobutene and perfluoro(alkyl vinyl ethers) (col. 36, 3-19, col. 65, line 10-col. 66, 28, col. 67, 15-16, col. 68, lines14-59).
Nanba is silent on a composition comprising a perfluoroelastomer in a single embodiment as claimed.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching in Nanba on compositions comprising a fluoropolymer as an aqueous dispersion that may be prepared in the presence of polymer (1), it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a composition comprising any fluoropolymer within the scope of Nanba, including a perfluoroelastomer as in the claimed invention.
Regarding claim 6, Nanba teaches a production method wherein the fluoromonomer is preferably polymerized substantially in the absence of a fluorine- containing surfactant (col. 3, lines 21-22, col.31, lines 10-12).
Regarding claims 7 and 8, Nanba teaches a fluoroelastomer composition comprising a curing agent, such as peroxides and organotins, that is crosslinked during molding (col. 69, lines 57-64).
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,767,379 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claim 1 is as follows:
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Although patent claims are silent on a method of forming a composition comprising a perfluoroelastomer, 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. In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970). To that end, the reference patent teaches copolymerization with perfluoromonomers, capable of producing perfluoroelastomers, and polymerization in the presence of polymer (1) in specific amounts providing for aqueous dispersions (col. 36, 3-19, col. 65, line 10-col. 66, 28, col. 67, 15-16, col. 68, lines 14-59, Examples). Thus, as supported by the reference patent, it would have been obvious to one of ordinary skill in the art to provide for an aqueous composition comprising a perfluoroelastomer prepared in the presence of polymer (1) by the method of the patent claims.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of US 12,410,266 B2 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because patent claims 1 and 9 are as follows:
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The patent claims are silent on a method wherein the fluoropolymer is a perfluoroelastomer as claimed. However, relying on the reference patent for reasons discussed above in paragraph 13, the patent disclosure teaches polymerization of monomers, such as perfluoromonomers, in an aqueous medium in the presence of polymer (1), in a specific amount, capable of producing perfluoroelastomers as aqueous dispersions (col. 65, line 16-col. 67, line 36, Examples). Thus, in view of the teaching in the reference patent on polymerizing fluoromonomers for providing fluoropolymers, it would have been obvious to one of ordinary skill in the art to provide for an aqueous composition comprising a perfluoroelastomer prepared in the presence of polymer (1) by the method of the patent claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights