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 .
This communication is responsive to claim set filed 02/09/2023 and Response to Restriction filed 10/17/2025. Claims 1-17 are currently pending. Claims 2 and 11-17 are under consideration in this Office Action.
Claims 1 and 3-10 are withdrawn.
Claims 2 and 11-17 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant’s election without traverse of 2 and 11-17 in the reply filed on 10/17/2025 is acknowledged.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claims 2, 11-12 and 14-15 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Koji et al. (JP2006029574A).
Regarding Claim 1, Koji teaches fluororesin composition comprising a fluororesin (claim 7), wherein the fluororesin contains ethylene units and tetrafluoroethylene units, and wherein the carbonate groups of the fluororesin is 359 ([0187]) per 106 main chain carbon atoms ([0135]). Instant US publication para.[0016] defines a carbonate group reading on a carbonyl group; therefore, Koji teaches the fluororesin containing 359 carbonyl groups per 106 main chain carbon atoms.
Although Koji is silent on the critical shear rate, Koji teaches one of the claimed fluororesin(s), as such the critical shear rate is present. “Products of identical chemical composition cannot have mutually exclusive properties.” 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 (See MPEP 2112.01 II). "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (See MPEP 2112 V).
Regarding Claims 11 and 14-15, Koji teaches the fluororesin composition contains electrically conductive carbon black ([0142-0144] and [0188])
Regarding Claim 12, Koji teaches the fluororesin is melt-fabricable (the paragraph above [0188]).
Claims 2, 11-15 and 17 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Kitahara et al. (US2009/0291243 A1).
Regarding Claims 2, 13 and 17, Kitahara teaches a laminate comprising a layer (A) which comprises fluororesin (ab.). Attention is drawn to the Synthesis Examples 8-9, wherein the fluororesin comprises tetrafluoroethylene/ethylene/hexafluoropropylene/ perfluoro(l ,l ,5-trihydro-1-pentene) copolymer. The fluororesin of Synthesis Examples 8-9 have 255 and 250 carbonate groups per 106 main chain carbon atoms, respectively.
Although Kitahara is silent on the critical shear rate, Kitahara teaches two of the claimed fluororesin(s), as such the critical shear rate is present. “Products of identical chemical composition cannot have mutually exclusive properties.” 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 (See MPEP 2112.01 II). "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (See MPEP 2112 V).
Regarding Claims 11 and 14-15, the composition of Synthesis Example 9 contains a fluororesin and carbon black.
Regarding Claim 12, Kitahara discloses that the fluororesin composition is melt-fabricable ([0091]).
8. Claims 2, 12-13 and 17 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Yukinori et al. (JP2014239742A).
Regarding Claims 2, 13 and 17, Yukinori teaches the inner layer of a catheter tube comprising a fluororesin, wherein the fluororesin comprises tetrafluoroethylene/ethylene/hexafluoropropylene/ perfluoro(l ,l ,5-trihydro-1-pentene) copolymer and the copolymer has 255 carbonate groups per 106 main chain carbon atoms ([0072]).
Although Yukinori is silent on the critical shear rate, Yukinori teaches two of the claimed fluororesin(s), as such the critical shear rate is present. “Products of identical chemical composition cannot have mutually exclusive properties.” 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 (See MPEP 2112.01 II). "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (See MPEP 2112 V).
Regarding claim 12, Yukinori teaches the fluororesin is melt-fabricable ([0031]).
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 2, 13 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Koji et al. (JP2006029574A).
Koji teaches fluororesin composition comprising a fluororesin (claim 7), wherein the fluororesin can be an ethylene/ tetrafluoroethylene /hexafluoropropylene copolymer ([0104]) and wherein the fluororesin contains 150 to 3000 carbonate groups per 106 main chain carbon atoms ([0135]).
Although Koji is silent on the critical shear rate, Koji teaches one of the claimed fluororesin(s), as such the critical shear rate is present. “Products of identical chemical composition cannot have mutually exclusive properties.” 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 (See MPEP 2112.01 II). "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (See MPEP 2112 V).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kitahara as applied to claims 2 and 14 at para. 8 above, and further in view of Yuji (WO20060411186 A1).
Kitabara discloses the fluororesin composition comprising carbon black (Synthesis Example 9) but is silent on the particle size of the carbon black.
However, Yuji teaches an electroconductive resin composition for a fuel tube comprising a fluororesin (claim 32), wherein the fluororesin can be ethylene-tetrafluoroethylene copolymer (claim 35). Yuji further teaches the electroconductive resin composition comprising carbon black having an average particle size of 1 to 500 μm (lns532-538). Kitahara teaches the fluororesin composition being layer (A) of the innermost layer of a fuel tube ([0158]) and Yuji discloses that the fluororesin composition is suitable for the innermost layer of a fuel tube (lns862-864). Thus, it would have been obvious before the effective filing date of instant application to use the carbon black having an average particle size of 1 to 500 μm taught by Yuji for the fluororesin composition of Kitahara. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Yuji, i.e., 500 μm. (See MPEP 2144.05 I).
Conclusion
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763