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 . Per preliminary amendment dated 7/30/25, claims 1-9, 11, 13-17 are pending in the application.
Applicant's election with traverse of Group I invention, encompassing claims 1-9, 11, 13-16, in the reply filed on 5/21/26 is acknowledged. The traversal is on the ground(s) that if search and examination of an entire application can be made without serious burden, the examiner must examine the entire application on the merits even though the entire application includes claims to independent or distinct inventions, and that it’s Applicant's position that it would not be unduly burdensome to perform a search on all of the claims together in the present application.
Applicant’s arguments are not found persuasive because the consideration of undue burden is one that must be made by the Examiner. Moreover, claim 17 is a product-by-process claim. Product-by-process claims are not limited to the manipulations recited in the steps, but only to the structure implied by those steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(I).
In light of above, the requirement is still deemed proper and therefore made FINAL. Claim 17 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims are objected to because of the following:
In claim 1, an article “a” should be inserted before the phrases “low molecular weight” and “high molecular weight”, and a conjunction “and” should be inserted before the term “irradiating”.
In claims 2-16, the preamble should be amended as “The method for obtaining said low molecular weight PTFE” ”.
The wherein clause in claim 2 may be amended for brevity, by reciting “wherein said controlled atmosphere is free of halogenated polymers, oxygen adsorbents, hydrocarbons, chlorinated hydrocarbons, alcohols and carboxylic acids other than C8-C14 perfluorinated carboxylic acids”.
Regarding claim 16, the specification discloses that the high molecular weight PTFE is in the form of powder or (micro-)particles, preferably with an average particle size distribution comprised from 20 µm to 700 µm (page 5). Therefore, the phrase “powder or (micro-)particles with an average particle size” in the claim may be amended to improve clarity by reciting “powder or (micro-)particles, with an average particle size “ to clarify that the recited size is applicable to both species.
Appropriate corrections and/or clarifications are required.
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 2, 5, 9, 11, 13-16 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 term "preferably" is recited in claim 2 (once), claim 5 (thrice), claim 9 (twice), claim 11 (once), claim 14 (twice), claim 15 (thrice), and claim 16 (seven occurrences).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Claims 2, 5, 9, 11, 14-16 recite a broad range/limitation, and the claims also recite a narrower statement of the range/limitation.
For instance, claim 2 recites a broad limitation “inert gas”, and the claim also recites a narrower statement of the limitation “preferably nitrogen”. Claim 5 recites “wherein said gas barrier has an oxygen permeability < 0.5 cc/m2/24h (ASTM D3985-95, 23°C - 0%RH) and a water vapour permeability < 2 cc/m2/24h (ASTM F1249- 90, 38°C - 90% RH); preferably wherein said gas barrier has an oxygen permeability ≤ 0.3 cc/m2/24h, more preferably ≤ 0.1 cc/m2/24h, and a water vapour permeability ≤ 1 cc/m2/24h, more preferably ≤ 0.1 cc/m2/24h”, i.e., claim 5 recites broad ranges and narrower ranges for the oxygen permeability and the water vapour permeability. As with claim 5, claims 14-16 recite broad ranges and narrower ranges within the same claim, in addition to claim 16 language including the phrase “for example”. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 11 is as follows:
The method for obtaining low molecular weight PTFE according to claim 1, wherein, in the step of irradiation of said PTFE in said hermetically closed chamber, a maximum irradiation temperature is comprised from 105°C to 118°C; said method being preferably characterised in that it does not comprise further thermal treatments on the product of the irradiation step.
The claim is indefinite because it is unclear if the exclusion of further thermal treatments in the claimed method is only preferred, i.e., optional.
Claim 13 is included in this rejection because of its dependence on rejected claim
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, 3, 4, 8, 9, 11, 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (US 2019/0023818 A1).
Regarding claims 1, 3, 9, Yoshida teaches a method for producing a low molecular weight polytetrafluoroethylene, comprising the steps of (1) feeding into an airtight container: polytetrafluoroethylene, at least one additive, and at least one selected from the group consisting of inert gases other than the additive and oxygen adsorbents; and (2) irradiating the polytetrafluoroethylene to provide low molecular weight polytetrafluoroethylene (Ab.), wherein the inert gases each have an oxygen content of 5.0 vol% or less and preferably contains substantially no oxygen, with the term substantially referring to 0.1 vol% or less [0043], i.e., disclosed 5 vol% or less includes a range of 0 to 5.0 vol% and encompasses the claimed range [0016]-[0017].
In the method of disclosed Example 1, a barrier nylon bag charged with PTFE fine powder and an iron-based oxygen enclosed in the bag is heat-sealed and the PTFE fine powder in the bag is irradiated with 150 kGy of cobalt-60γ rays under conditions specified therein, to obtain a low molecular weight PTFE powder [0146].
Yoshida is silent on a method of obtaining a low molecular weight wherein the controlled atmosphere inside the chamber comprises from 0.005 to 0.5% by volume as in the claimed invention.
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 Yoshida on feeding PTFE and an inert gas into a nylon bag that is heat-sealed and made air tight and irradiated, i.e., nylon bag provides for an enclosed space/chamber, serves as a gas barrier and has hermetic closure, wherein said inert gas contains oxygen at 5 vol% or less, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to adopt a method comprising claimed steps, and including an inert gas having any vol% of oxygen within the disclosed range, including those within the overlapping range of 0.005% to 0.5, absent evidence to the contrary.
Regarding claim 4, it would have been within the level of ordinary skill in the art to control the atmosphere prior to, simultaneously with or subsequent to placing the PTFE in the bag. As such, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results; In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930), MPEP 2144.04.
Regarding claims 8, 14-16, Yoshida teaches ionizing radiation, such as electron beams, ultraviolet rays, gamma rays, X-rays, neutron beams, and high energy ions, preferably having an exposure dose of (1 to 2500 kGy [0046]-[0047]), with Example 1 relying on 150 kGy g rays for irradiating PTFE fine powder. It would have obvious to a skilled artisan that passing such radiation through a bag, such as a nylon bag, would include some dampening, due to scattering of the radiation and/or interaction pf the radiation (energy) with nylon molecules, absent evidence to the contrary (claim 8). Furthermore, it would be obvious to a skilled artisan to optimize the irradiation rate and the fine powder PTFE particle size, including to those of the claimed invention, so as to maximize process efficiency in lowering in molecular weight, absent evidence of criticality for the claimed ranges. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons.
Regarding claim 11, Yoshida teaches an irradiation temperature may be within the range of 5° C, to the melting point of PTFE, and preferably 320° C or lower [0048].
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 1-9, 11, 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,410,268 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the method of patent claim 1 is as follows:
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Thus, method of patent claim 1 fully encompasses the limitations of instant claims 1 and 5.
Additionally, limitations of instant claims 2-4, 6-9, 11, 13-16 are taught in patent claims 2-4, 6-9, 11, 13-16 , respectively.
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
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