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 .
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, 4-7, 16-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 16 of copending Application No. 17/470,469 (‘469). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1 and 5 of ‘469 is directed to a method of polymerizing at least one fluorinated monomer in presence of the first polymer having formula 1. The first polymer has a volume based cumulative 50% particles size of 10-200 nm. Claim 1 of ‘469 does not recite use of emulsifiers and the fluorinated monomer is selected from tetrafluoroethylene, chlorotrifluoroethylene and vinylidene chloride, which also meet the limitations of instant claims 16-21. Claims 1 and 5 of ‘469 read on instant claims 1 and 5.
Claim 2 of ‘469 requires the first polymer to be present in amount of 0.0001 to 1.0 parts per 100 parts of aqueous medium, which encompasses the content of first polymer of instant claim 1.
Claim 3 of ‘469 narrows the particle size of the first polymer to 10-150 nm which is still encompassed by the particle size of instant claim 1.
Claim 4 of ‘469 is the same as instant claim 4.
Claim 6 of ‘469 is the same as instant claim 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4-7, 16, 19are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4 of copending Application No. 17/659,182 (‘182). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘182 recites a method of step (A1) polymerizing non-fluorinated monomer having formula (1) as described in claim 2 of ‘182, which is the same as instant formula 1. While instant claim 1 does not recite polymerization of compound of formula 1, such step is implied since fluorinated polymer is formed in presence of first monomer. Step A2 requires polymerization of tetrafluoroethylene which is also a fluorinated monomer of instant claims 1, 5, 16 and 19. Step A3 is directed to adding surfactant to the polymerized monomer to form polytetrafluoroethylene particles. While claim 1 of ‘182 does not disclose particle size, it is viewed as open to any particle size thereby encompassing instant claims 1, 2, 5, 16 and 19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5-7, 16, 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/352379(‘379). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘379 recites a method of step (A1) polymerizing non-fluorinated monomer having formula (1) as described in claim 3 of ‘182, which is the same as instant formula 1. While instant claim 1 does not recite polymerization of compound of formula 1, such step is implied since fluorinated polymer is formed in presence of first monomer. Step A2 requires polymerization of tetrafluoroethylene which is also a fluorinated monomer of instant claims 1, 5, 16 and 19. Step A3 is directed to adding surfactant to the polymerized monomer to form a dispersion of polytetrafluoroethylene particles. While claim 1 of ‘182 does not disclose particle size, it is viewed as open to any particle size thereby encompassing instant claims 1, 2, 5, 16 and 19. The dispersion can be made by using a surfactant of claim 2 in step A3 of the method.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Pertinent Art
Prior art of Durali (US 2009/0221776), Reinhardt US 3,407,247) and Zipplies (US 2012/0129982) were applied in co-pending application. While Durali does teach particle size that encompasses claimed particle size, Durali most of all utilizes surfactants during fluorinated monomer polymerization. Additionally, Durali discloses overall particle size not 50% based on volume. Since formation of particle size as claimed is not inherent the instant office action does not have prior art that can meet instant claims.
IDS
Submitted by the applicants US 2021/0009732 was filed on September 15, 2020 which is within one year grace prior as having common inventor, Shinya Higuchi. The PG Pub discloses method for polymerization of TFE in absence of surfactant in presence of polymer derived from non-fluorinated monomer which would otherwise be very much applicable against instant claims
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 10, 2026
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