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.
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 1-4, 8-13, 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2017/0226389) in view of Okuzawa (US 2020/0140682) in view of evidence in microglass specification
With respect to claim 1, 8-10, 12, 13, 19, Wang discloses a composition comprising a fluoropolymer, a functionalized fluoropolymer, thermoplastic polymer encompassed by term “comprising” (Abstract) and reinforcing filler [0021].
According to claim 10 of Wang the first fluoropolymer can be perfluoroalkoxy which meets limitation of instant claim 13 or fluorinated ethylene-propylene polymer. The content of fluorinated polymer is 20-90 % [0016] which meets the limitation of instant claim 12.
According to claim 13 of Wang the second fluoropolymer is functionalized with epoxy or anhydride. The content of functionalized fluoropolymer is 5-95 % [0017] with preferred concentration of 8-24% as per table 2. Content of functionalized polymer meets the limitation of instant claim 8. Exemplary functionalized polymer of Wang is EA2000 which is the same functionalized fluoropolymer utilized by applicants (see instant specification as originally filed).
While Wang discloses use of reinforcing fillers, the reference does not provide any detailed description of possible reinforcing filler, leaving one of ordinary skill in the art to look at reinforcing fillers suitable for use with fluoropolymers.
Okuzawa discloses combination of polycarbonate resin having carboxylate functional group in combination with fluoropolymer and reinforcing fibrous filler used in an amount of 5-50 parts (Abstract). Preferred content of glass fibers is 5-35 parts more preferably 10-35 parts [0063]. This content of glass fiber contributes to heat stability of the composition.
Preferred fibers of Okuzawa are milled carbon fiber and glass fibers. Glass fibers specifically have diameter of 1-18 microns [0057] and a length of 2-120 microns, more preferably 2.5-70 microns.
Okuzawa also teaches preferably the glass fibers can be treated with known surface treatment in amount of 0.1-3% [0059], however, preferred embodiment does not teach away from utilizing untreated glass fibers, which would meet instant claim 19.
Glass fibers having a length of less than 120 microns can be formed by milling which is a knowledge one of ordinary skill in the art would possess. While chopping can also be used to make shorter fibers, chopped fibers as one of ordinary skill in the art would know are longer in length than those made by milling. Consequently, glass fibers of Okuzawa would obviously be milled in order to obtain such short length. Okuzawa further states that if the fiber length exceeds 120 microns, the molded article would have increased anisotropy and poor appearance. Content, length and diameter of the glass fiber with bulk density being optional meets the limitation of instant claims 9 and 10.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize glass fibers of Okuzawa as the reinforcing fillers such fibers can reinforce polymeric compositions comprising fluoropolymer and another polymer with functional groups having affinity towards glass fibers.
With respect to claims 2-4, EA2000 is a polymer utilized in applicant’s invention, consequently, absent evidence to the contrary, the polymer meets the limitations of these claims.
With respect to claim 11, since bulk density is no longer optional, the bulk density for the tradenames utilized in Okuzawa is not published, the examiner found evidentiary reference which teaches glass fiber having diameter of 16 microns and length of 120 microns. The bulk density for such fibers is approximately 0.93 g/cc (1cc = 1ml) for A-type glass fiber.
With respect to claims 15-19, Wang only discusses peel strength of the composition but now flexural strength or compressive strength. However, these properties are viewed as obvious for following reasons:
Flexural strength and compressive strength are highly dependent on the bonding within the polymeric matrix.
Wang teaches that functionalized fluoropolymer bearing anhydride groups reacts with other polymeric components which in this case would include additional amounts of thermoplastic polymer and will also react with perfluoroalkoxy groups of the first polymer (these are also reactive). This bonding increases miscibility between polymeric components which would otherwise be in form od phases. Functionalized polymer also acts as compatibilizers, which will increase adhesion not only between other polymers but also that of glass fiber [0020]. This is because glass fibers which are formed from silica melted down and drawn into fiber will also possess Si-OH bonds due to trace amount of water in glass structure. This process is know to one of ordinary skill in the art, including the Si-OH groups which can bond to the compatibilizers.
Consequently, the improvement in claimed properties is rather expected and therefore obvious because of the increased bond strength and in turn more uniform distribution of the compounds utilized in the composition.
With respect to claim 20, Wang teaches that fluoropolymer material includes melt-processable perfluoroalkoxy polymer and melting point of functionalized fluoropolymer EA-2000 is approximately 300oC [0014]. However, Wang does not disclose the order in which the components are added.
MPEP 2144.04(IV)(C) states that selection of any order of performing process steps is prima facie obvious in absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPT 330 (SSPA 1946) and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 2930).
In summary it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to arranged order of mixing as claimed in order to obtain polymer composition with uniform distribution of additives.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2017/0226389) in view of Okuzawa (US 2020/0140682) as applied to claims 1-4, 8-13, 15-20 above, and further in view of O’Brian (WO 2019/013934 submitted by the applicants).
Discussion of Want and Okuzawa from paragraph 1 of this office action is incorporated here by reference. Wang while teaching combination of fluoropolymer with functionalized fluoropolymer, other than the tradename in the examples, the reference utilizes generic description of anhydride modified fluoropolymer, leaving one of ordinary skill in the art to supplement with what is known in the art.
O’Brian discloses composition comprising fluoropolymer in combination functionalized polymer. Especially preferred polymers include ethylene and tetrafluoroethylene (ETFE) polymers (p. 4, l. 6-10).
Grafted fluoropolymer can be the same as the non-grafted fluoropolymer (p. 5, l. 13-15). Consequently, the grafted polymer can be poly(ethylene-co-tetrafluoroethylene) wherein grafted monomers are carboxylic acids and anhydrides (starting p. 5, l. 17) particularly preferred are anhydrides with maleic anhydride being most preferred (p. 6, l. 7).
Poly(ethylene-co-tetrafluoroethylene) grafted with maleic anhydride, comprises the same functional groups as the modified polymer of Wang and it is also utilized in amount of 5-20% (p. 5, l. 15-16). Therefore, PETFE of O’Brian will function in the same manner when utilized as the fluorinated ethylene containing polymer of Wang.
IN the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize functional
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2017/0226389) in view of Okuzawa (US 2020/0140682) as applied to claims 1-4, 8-13, 15-20 above, and further in view Aten (WO 2010/017450 submitted by the applicants).
Discussion of Want and Okuzawa from paragraph 1 of this office action is incorporated here by reference. Wang while teaching combination of fluoropolymer with functionalized fluoropolymer, other than the tradename in the examples, the reference utilizes generic description of anhydride modified fluoropolymer, leaving one of ordinary skill in the art to supplement with what is known in the art.
Aten discloses a fluoropolymer where functional groups are incorporated. The polymer has low surface energy and higher thermal and chemical resistance. The purpose of the functionalized fluoropolymer of Aten is modify adhesive properties of the fluoropolymers. Consequently, the polymers of Aten serve the same purpose as the polymer of Wang.
Perfluoromonomer (p. 5) has carbon-carbon unsaturation and include perfluoromonomers such as tetrafluoroethylene.
Second monomer is one comprising carboxylate group which includes cyclic dicarboxylic acid anhydride (p. 7, l. 15-28), wherein compound such as maleic anhydride comprises C=C within 5 membered ring that will polymerize.
Third monomer that can be utilized as per examples include perfluoro(alkyl vinyl ether) which meets monomer 3a of instant claim 14.
In the light of the above disclosure, it would have been obvious to one of ordinary skill in the art at the time instant invention was filed to utilize functionalized fluoropolymer. Using polymer of Aten would still improve compatibility and adhesion between polymers and additives, in the same manner as that of Wang.
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 1-4 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,252,596 to Tucker.
Claim 1-4, 8-20 of Tucker is directed to glass fiber reinforced fluoropolymer composition having increased flexural strength. The composition comprises:
60-99 parts of fluoropolymer
0.5-39.5 of functionalized fluoropolymer
0.5-39.5 milled glass fiber.
The functionalized fluoropolymer is the same as the fluoropolymer of instant claim 14.
Claim 2 of Tucker states that the functional group is a cycling group selected from itaconic anhydride and citraconic anhydride, which encompasses several dependent claims of the instant invention, most importantly claims 2-4.
Claim 3 of Tucker states that the functionalized polymer is utilized in amount of 5-20parts which is the same as instant claim 8.
Claim 4 of Tucker limits the content of glass fibers to 15-35 parts which is the same as instant claim 9.
Claims 5 and 6 of Tucker are directed to bulk density, length and diameter, which are the same as those of the instant claims 10 and 11.
Claim 7 of Tucker is the same as instant claim 12.
Claim 8 of Tucker is the same as instant claim 13
Claim 9 of Tucker is the same as instant claim 19.
Claims 11-14 of Tucker are the same as instant claims 15-18.
Claim 15 of Tucker discloses the same method as instant claim 20.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 12, 2026
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