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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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 and 7-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10,964,444.
US Patent 10,964,444 discloses an insulated wire comprising a conductor and an insulation layer, wherein the insulation layer comprises of a resin composition. US ‘444 discloses that the resin composition comprises an aromatic polyether ketone resin (I) and a fluororesin (II), wherein the aromatic polyether ketone resin (I) has a melt viscosity of 0.20-1.19 kNsm-2 at 60 sec-1 and 390°C and the fluororesin (II) has a has a melt viscosity of 0.55-2.23 kNsm−2 at 60 sec−1 and 390°C. Although US ‘444 fails to explicitly disclose the melt viscosity of the insulation layer, US ‘444 discloses that the aromatic polyether ketone resin (I) and the fluororesin (II) has a mass ratio (I):(II) of at most 70:30 (claim 4), which overlaps the claimed range. In light of the specific melt viscosity of each of the I and II and the overall concentration of the insulation layer of I and II, and that all values within the range appears to be functionally equivalent, it would have been obvious to choose the mass ratio (I/II) with their respective melt viscosity of I and II from that ranged to produce a melt viscosity of the insulation layer based on the desired insulating properties and that choosing melt viscosity of the insulation layer would have rendered the claimed relationship obvious in the absence of showing materially different product.
Alternatively, it would have been obvious to one of ordinary skill in the art to have determined the optimum value of a results effective variable such as melt viscosity, through routine experimentation, especially given the knowledge in the art that melt viscosity of an insulation layer can impact the overall properties of the insulated wire. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would therefore have been obvious to one of ordinary skill to modify the insulation layer of US ‘444 to form a melt viscosity as claimed, since the melt viscosity of an insulation layer is a known results effective variable in the insulated wire art.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of ‘444 and/or obvious variant of one another with slight optimization of ranges.
Claims 1 and 7-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,024,441.
US Patent 11,024,441 discloses an insulated wire comprising a conductor and an insulation layer, wherein the insulation layer comprises of a resin composition. US ‘441 discloses that the resin composition comprises an aromatic polyether ketone resin (I) and a fluororesin (II), wherein the aromatic polyether ketone resin (I) has a melt viscosity of 0.25 to 1.30 kNsm−2 at 60 sec−1 and 390° C and the fluororesin (II) has a has a melt viscosity of 0.55 to 2.23 kNsm−2 at 60 sec−1 and 390° C. Although US ‘441 fails to explicitly disclose the melt viscosity of the insulation layer, US ‘441 discloses that the aromatic polyether ketone resin (I) and the fluororesin (II) has a mass ratio (I):(II) of at most 95:5 to 50:50 (claim 4), which is within the claimed range (claim 8). In light of the specific melt viscosity of each of the I and II and the overall concentration of the insulation layer of I and II, and that all values within the range appears to be functionally equivalent, it would have been obvious to choose the mass ratio (I/II) with their respective melt viscosity of I and II from that ranged to produce a melt viscosity of the insulation layer based on the desired insulating properties and that choosing melt viscosity of the insulation layer would have rendered the claimed relationship obvious in the absence of showing materially different product.
Alternatively, it would have been obvious to one of ordinary skill in the art to have determined the optimum value of a results effective variable such as melt viscosity, through routine experimentation, especially given the knowledge in the art that melt viscosity of an insulation layer can impact the overall properties of the insulated wire. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would therefore have been obvious to one of ordinary skill to modify the insulation layer of US ‘441 to form a melt viscosity as claimed for the insulation layer, since the melt viscosity of an insulation layer is a known results effective variable in the insulated wire art.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims fully encompasses the claims of ‘441 and/or obvious variant of one another with slight optimization of ranges.
Claim Rejections - 35 USC § 102/103
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.
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 1-9 are rejected under 35 U.S.C. under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 103 as obvious over Iida et al. (US 2017/0301430).
Regarding claims 1 and 8, Iida discloses an insulated wire comprising a conductor (A), and an insulating layer (B) around the conductor (A) [0110], the insulating layer (B) comprising an aromatic polyetherketone resin (I) and a fluorine-containing copolymer (II) [0056], the aromatic polyetherketone resin (i) having a melt viscosity at 60 sec-1 and 390ºC of 0.01-4.0 kNsm-2 (kPa·s), or more preferably 0.05 kNsm-2 (kPa·s) [0040], and the insulating layer (B) having a thickness of 50-200 µm [0112]. Iida fails to explicitly disclose that the insulation layer has a melt viscosity at 60 sec-1 and 390ºC of 0.40-0.75 kNsm-2 (kPa·s) as presently claimed.
However, Iida discloses that the polyetherketone resin (I) has a melt viscosity at 60 sec-1 and 390ºC of 0.01-4.0 kNsm-2, or more preferably 0.05 kNsm-2 (kPa·s), the fluorine-containing copolymer (II) has a melt viscosity at 60 sec-1 and 390ºC of 0.2 to 4.0 kNsm-2 (kPa·s), which is the exact MV disclosed in the instant specification [0025], the mass ratio of (I): (II) is 99:1 to 30:70, which is exact range as claimed, and a melt viscosity ratio (I)/(II) is 0.01-5.0 [0016] (emphasis added). The examiner deems that these are the main contributing factors for the melt viscosity of the insulation layer. Thereby, it is the examiner's position that the reference to Iida teaches the same structure and composition as claimed and therefore, would be expected to inherently satisfy the claimed melt viscosity of the insulation layer.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the claimed composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Alternatively, in light of the specific melt viscosity of each of the I and II, the overall concentration of the insulation layer of I and II (mass ratio and melt viscosity ratio), and that all values within the range appears to be functionally equivalent, it would have been obvious to choose the mass ratio (I/II) and melt viscosity ratio of (I/II) with their respective melt viscosity of I and II from that ranged to produce a melt viscosity of the insulation layer based on the desired insulating properties and that choosing melt viscosity of the insulation layer would have rendered the claimed relationship obvious in the absence of showing materially different product and absence of showing criticality.
Additionally, it would have been obvious to one of ordinary skill in the art to have determined the optimum value of a results effective variable such as melt viscosity, through routine experimentation, especially given the knowledge in the art that melt viscosity of an insulation layer can impact the overall properties of the insulated wire. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would therefore have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the insulation layer of Iida to form a melt viscosity as claimed, since the melt viscosity of an insulation layer is a known results effective variable in the insulated wire art.
Regarding claim 2, Iida discloses that the average particle size of the fluorine-containing copolymer is smaller than 3.0 µm [0058] and a MFR of 0.1-100 g/10 at a temperature of 372ºC and a load of 5000 g in conformity of D1238 [0058-0059]. Although Iida discloses average particle sizes and MFR, Iida fails to explicitly disclose the average particle size was measured according to the specific testing parameters. While Iida is silent of the specific testing parameters used in calculating the average particle size before and after MFR measurement, the particle still generates the particle size disclose in the present application (PGPUB [0044]: smaller than 3.0 µm) as well as similar MFR for the fluorine-containing copolymer.
There is a sound basis that Iida’s fluorine-containing copolymer particles produces similar average particle size ratio when subjecting to the same testing parameters. USPTO does not have a laboratory to test out and experiment Iida’s invention. Thus, one of ordinary skill in the art would recognize that the testing parameter will possess similar results from any testing parameter, especially since Iida discloses having a particle size of less than 3.0 µm, which overlaps the instant application range absent of evidence to the contrary as well as obtaining similar MFR. As such, the Examiner deems that Iida fully anticipates the claimed limitation despite the distinction in measuring when determining the particle size of the fluorine-containing copolymer.
Moreover, a process limitation, as such, is not germane to the patentability of the claimed product unless it produces an unobvious difference, which does not appear to be the case. However, given the distinction, alternative to anticipation should it be shown that the difference in methodology does produce an invention that has an unobvious difference, the Examiner deems that Iida renders the claimed limitations obvious as the characterization methodology are both used to characterize the fluorine-containing resin. Iida provides clear guidance on what is a desirable particle size, as such the slight distinction in methodology would have been obvious to a person of ordinary skill in the art, to produce a fluorine-containing resin with particle size ratio as claimed in order to ensure better characteristics such as impact resistance, molding stability, and withstand voltage performance [0068]. It is also noted that a ratio of 1 is understood to be no change in particle size before and after being subjected to the testing parameters.
Regarding claim 3, please see Tables 1-2.
Regarding claim 4, please see [0043].
Regarding claim 5, please see [0042].
Regarding claim 6, please see [0017].
Regarding claim 7, please see [0050].
Regarding claim 9, please see [0038].
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 103 as obvious over Masuda et al. (US 2014/0329087).
Regarding claims 1 and 8, Masuda discloses an insulated wire comprising a conductor (A), and an insulating layer (B) around the conductor (A), the insulating layer (B) comprising an aromatic polyetherketone resin (I) and a fluorine-containing copolymer (II) (Abstract), the aromatic polyetherketone resin having a melt viscosity at 60 sec-1 and 390ºC of 0.25-1.50 kNsm-2 (kPa·s) [0032], and the insulating layer (B) having a thickness of 1-100 µm [0057]. Masuda fails to explicitly disclose that the insulation layer has a melt viscosity at 60 sec-1 and 390ºC of 0.40-0.75 kNsm-2 (kPa·s) as presently claimed.
However, Masuda discloses that the polyetherketone resin (I) has a melt viscosity at 60 sec-1 and 390ºC of 0.25-1.50 kNsm-2, the fluorine-containing copolymer (II) has a melt viscosity at 60 sec-1 and 390ºC 0.3 to 3.0 kNsm-2 (kPa·s) [0045], which is within the MV disclosed in the instant specification [0025], the mass ratio of (I): (II) is 95:5 to 50:50 (claim 4), which is within the range as claimed, and a melt viscosity ratio (I)/(II) is 0.3-5.0 (claim 1) (emphasis added). The examiner deems that these are the main contributing factors for the melt viscosity of the insulation layer. Thereby, it is the examiner's position that the reference to Masuda teaches the same structure and composition as claimed and therefore, would be expected to inherently satisfy the claimed melt viscosity of the insulation layer.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the claimed composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Alternatively, in light of the specific melt viscosity of each of the I and II, the overall concentration of the insulation layer of I and II (mass ratio and melt viscosity ratio), and that all values within the range appears to be functionally equivalent, it would have been obvious to choose the mass ratio (I/II) and melt viscosity ratio of (I/II) with their respective melt viscosity of I and II from that ranged to produce a melt viscosity of the insulation layer based on the desired insulating properties and that choosing melt viscosity of the insulation layer would have rendered the claimed relationship obvious in the absence of showing materially different product and absence of showing criticality.
Additionally, it would have been obvious to one of ordinary skill in the art to have determined the optimum value of a results effective variable such as melt viscosity, through routine experimentation, especially given the knowledge in the art that melt viscosity of an insulation layer can impact the overall properties of the insulated wire. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would therefore have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the insulation layer of Masuda to form a melt viscosity as claimed, since the melt viscosity of an insulation layer is a known results effective variable in the insulated wire art.
Regarding claim 2, Masuda discloses that the average particle size of the fluorine-containing copolymer is smaller than 0.5 µm [0049] and a MFR of 0.1-100 g/10 at a temperature of 372ºC and a load of 5000 g in conformity of D3307-01 [0041-0042]. Although Masuda discloses average particle sizes and MFR, Iida fails to explicitly disclose the average particle size was measured according to the specific testing parameters. While Masuda is silent of the specific testing parameters used in calculating the average particle size before and after MFR measurement, the particle still generates the particle size disclose in the present application (PGPUB [0044]: smaller than 3.0 µm) as well as similar MFR for the fluorine-containing copolymer.
There is a sound basis that Masuda’s fluorine-containing copolymer particles produces similar average particle size ratio when subjecting to the same testing parameters. USPTO does not have a laboratory to test out and experiment Masuda’s invention. Thus, one of ordinary skill in the art would recognize that the testing parameter will possess similar results from any testing parameter, especially since Masuda discloses having a particle size of less than 0.5 µm, which overlaps the instant application range absent of evidence to the contrary as well as obtaining similar MFR. As such, the Examiner deems that Masuda fully anticipates the claimed limitation despite the distinction in measuring when determining the particle size of the fluorine-containing copolymer.
Moreover, a process limitation, as such, is not germane to the patentability of the claimed product unless it produces an unobvious difference, which does not appear to be the case. However, given the distinction, alternative to anticipation should it be shown that the difference in methodology does produce an invention that has an unobvious difference, the Examiner deems that Iida renders the claimed limitations obvious as the characterization methodology are both used to characterize the fluorine-containing resin. Masuda provides clear guidance on what is a desirable particle size, as such the slight distinction in methodology would have been obvious to a person of ordinary skill in the art, to produce a fluorine-containing resin with particle size ratio as claimed in order to improve mechanical properties and the bond strength between the conductor and the insulation layer [0049]. It is also noted that a ratio of 1 is understood to be no change in particle size before and after being subjected to the testing parameters.
Regarding claim 4, please see [0035].
Regarding claim 5, please see [0034].
Regarding claim 6, please see [0044].
Regarding claim 7, please see claim 1.
Regarding claim 9, please see [0031].
Response to Arguments
Applicant’s arguments with respect to the rejections of claims 1-9 under Iida and Masuda have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejections are made in view of Iida and Masuda.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785