DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on December 11, 2025 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include a limitation of a content of the tetrafluoroethylene unit of 97.2 to 98.0% by mass with respect to the whole of the monomer units, a content of a monomer unit copolymerizable with tetrafluoroethylene and the perfluoro(propyl vinyl ether) of 0 to 0.8% by mass with respect to the whole of monomer units. In light of the amendment, the previous rejections not cited below are withdrawn. The previous rejections cited below are maintained but suitably framed to better address the current amendment. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
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.
3. Claims 1-4, 6 are rejected under 35 U.S.C. 103 as unpatentable over Imamura et al (US 2016/0319089).
4. The rejection is adequately set forth on pages 3-4 of an Office action mailed on September 11, 2025 and is incorporated here by reference.
5. With respect to amended claim 1, Imamura et al discloses a copolymer of TFE and perfluoro(alkyl vinyl ether) having as low as 10 functional groups, or 50 functional groups per 106 carbon atoms ([0025], Abstract, [0031], [0038]); the copolymer having preferably 2.0%wt or more of PAVE groups ([0070], as to instant claim 1), Tm of 315⁰C or lower ([0073]) and MFR of 0.5-40 g/10 min ([0109], as to instant claim 1). PAVE is preferably PPVE [0068]).
6. All ranges in the copolymer of Imamura et al are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
7. It would have been obvious to a one of ordinary skill in the art to choose and use the TFE/PPVE copolymer having 2%wt of PPVE, MFR within the range of 0.5-40 g/10 min, including the value in the range of 23-30 g/10 min and Tm of 315⁰C as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Given the TFE/PPVE copolymer consists of only two comonomers TFE and PPVE, and the content of PPVE is 2%wt, therefore, the content of TFE units will intrinsically and necessarily be 98%wt. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
8. Claims 1-6 are rejected under 35 U.S.C. 103 as unpatentable over Imamura et al (US 2016/0319089) in view of Sawaki et al (US 2015/0158988).
9. Imamura et al discloses a copolymer of TFE and perfluoro(alkyl vinyl ether) having as low as 10 functional groups, or 50 functional groups per 106 carbon atoms ([0025], Abstract, [0031], [0038], as to instant claim 2); the copolymer having preferably 2.0%wt or more of PAVE groups ([0070], as to instant claim 1), Tm of 315⁰C or lower ([0073], as to instant claim 6) and MFR of 0.5-40 g/10 min ([0109], as to instant claim 1).
PAVE is preferably PPVE [0068]).
10. As to instant claims 3-4, the copolymer is used for making articles by injection molding or compression molding ([0121]).
11. All ranges in the copolymer of Imamura et al are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
12. It would have been obvious to a one of ordinary skill in the art to choose and use the TFE/PPVE copolymer having 2%wt of PPVE, MFR within the range of 0.5-40 g/10 min, including the value in the range of 23-30 g/10 min, and Tm of 315⁰C as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Given the TFE/PPVE copolymer consists of only two comonomers TFE and PPVE, and the content of PPVE is 2%wt, therefore, the content of TFE units will intrinsically and necessarily be 98%wt. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
13. Though Imamura et al does not explicitly recite the coated wire comprising said copolymer,
Sawaki et al discloses a copolymer of TFE/perfluoro propyl vinyl ether (PPVE) ([0022]) comprising preferably 2.0%wt of PPVE ([0031], [0032]) having a melting point of 285-315⁰C ([0034]) and MFR of 10-40 g/10 min ([0041]), specifically exemplified copolymer having MFR of 30 g/10 min ([0079]), used in compression molding and injection molding ([0059], as to instant claims 3-4), and specifically cited as being used for making wire-coated products ([0067]).
14. Since both Sawaki et al and Imamura et al are related to modified TFE/PPVE copolymers having substantially the same MFR and Tm, used for injection molding and compression molding, and thereby belong to the same field of endeavor, wherein Sawaki et al discloses such copolymers to be used for making wire-coated products, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Imamura et al and Sawaki et al, and to use, or obvious to try to use the TFE/PPVE copolymer of Imamura et al for making wire-coated products, such as the electric wire coated with said copolymer as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
15. Claims 1-6 are rejected under 35 U.S.C. 103 as unpatentable over Imamura et al (US 2016/0319089) in view of Earnest, JR. et al (US 2004/0260044).
16. Imamura et al discloses a copolymer of TFE and perfluoro(alkyl vinyl ether) having as low as 10 functional groups, or 50 functional groups per 106 carbon atoms ([0025], Abstract, [0031], [0038], as to instant claim 2); the copolymer having preferably 2.0%wt or more of PAVE groups ([0070], as to instant claim 1), Tm of 315⁰C or lower ([0073], as to instant claim 6) and MFR of 0.5-40 g/10 min ([0109], as to instant claim 1).
PAVE is preferably PPVE [0068]).
17. As to instant claims 3-4, the copolymer is used for making articles by injection molding or compression molding ([0121]).
18. All ranges in the copolymer of Imamura et al are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
19. It would have been obvious to a one of ordinary skill in the art to choose and use the TFE/PPVE copolymer having 2%wt of PPVE, MFR within the range of 0.5-40 g/10 min, including the value in the range of 23-30 g/10 min and Tm of 315⁰C as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Given the TFE/PPVE copolymer consists of only two comonomers TFE and PPVE, and the content of PPVE is 2%wt, therefore, the content of TFE units will intrinsically and necessarily be 98%wt. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
20. Though Imamura et al does not explicitly recite the coated wire comprising said copolymer,
Earnest, JR. et al discloses a copolymer comprising tetrafluoroethylene and preferably 0.2-3%wt of perfluoroalkyl vinyl ether, having MFR of 30+3 g/10 min, or 27-32 g/10 min ([0009], [0026]) and no more than 50 unstable end groups/106 carbon atoms (Abstract, as to instant claim 2).
The perfluoroalkyl vinyl ether is perfluoropropyl vinyl ether (PPVE) ([0009], claim 4).
21. As to instant claim 5, Earnest, JR. et al discloses a cable comprising electrical conductor and insulation covering comprising said copolymer ([0026]).
22. All ranges in the copolymer of Earnest, JR. et al are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
23. Since both Earnest, JR. et al and Imamura et al are related to modified copolymers comprising TFE and PPVE units, having substantially the same MFR and Tm, and thereby belong to the same field of endeavor, wherein Earnest, JR. et al discloses such copolymers to be used for making wire-coated products, such as cable comprising electrical conductor and insulation covering comprising said copolymer,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Imamura et al and Earnest, JR. et, and to use, or obvious to try to use the TFE/PPVE copolymer of Imamura et al for making wire-coated products, such as the electric wire coated with said copolymer as well, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
24. Claims 1, 3-6 are rejected under 35 U.S.C. 103 as unpatentable over Sawaki et al (US 2015/0158988).
25. Sawaki et al discloses a copolymer of TFE/perfluoro propyl vinyl ether (PPVE) ([0022]) comprising preferably 2.0%wt or more of PPVE ([0031], [0032], as to instant claim 1); having a melting point of 285-315⁰C ([0034], as to instant claim 6) and
MFR of 10-40 g/10 min ([0041], as to instant claim 1), specifically exemplified copolymer having MFR of 30 g/10 min ([0079]),
used in compression molding and injection molding ([0059], as to instant claims 3-4), and specifically cited as being used for making wire-coated products ([0067], as to instant claim 5).
26. All ranges in the copolymer of Sawaki et al are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
27. It would have been obvious to a one of ordinary skill in the art to choose and use the TFE/PPVE copolymer having 2%wt of PPVE, MFR within the range of 0.5-40 g/10 min, including the value of 30 g/10 min, as exemplified by Sawaki et al, and Tm of 315⁰C as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Given the TFE/PPVE copolymer consists of only two comonomers TFE and PPVE, and the content of PPVE is 2%wt, therefore, the content of TFE units will intrinsically and necessarily be 98%wt. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Obviousness Double Patenting Rejection I
28. Claims 1-3, 6 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 11-16 of a copending application 17/679,765 (published US 2022/0278403).
29. The rejection is adequately set forth on pages 7-9 of an Office action mailed on September 11, 2025 and is incorporated here by reference.
30. Since no Terminal Disclaimer has been filed, the rejection is maintained.
31. The application 17/679,765 claims a non-aqueous electrolyte battery comprising a member for a non-aqueous electrolyte battery, wherein the member comprises a copolymer containing a tetrafluoroethylene unit and a perfluoro(proply vinyl ether) unit, the number of functional groups per 106 carbon atoms of a main chain of the copolymer is 100 or less, and a melt flow rate of the copolymer is 20 to 30 g/10 minutes, and the number of functional groups is a total number of -CF=CF2, -CF2H, -COF, -COOH, - COOCH3, -CONH2, and -CH2OH; the copolymer has a melting point of 295°C to 320°C,
and wherein a content of the perfluoro(propyl vinyl ether) unit in the copolymer is 1.0 to 10.0 mass% based on all monomer units.
32. All ranges in the copolymer claimed in the application 17/679,765 are overlapping with the corresponding ranges as those claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Obviousness Double Patenting Rejection II
33. Claims 1-5 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of a copending application 18/450,792 (published US 2023/0391922).
34. The rejection is adequately set forth on pages 10-12 of an Office action mailed on September 11, 2025 and is incorporated here by reference.
35. Since no Terminal Disclaimer has been filed, the rejection is maintained.
36. The application 18/450,792 claims a fluorine-containing copolymer, comprising: tetrafluoroethylene unit; hexafluoropropylene unit; and perfluoro(ethyl vinyl ether) unit, wherein the copolymer has a content of perfluoro(ethyl vinyl ether) unit of 1.2 to 2.9% by mass with respect to the whole of the monomer units, a melt flow rate at 372°C of 19.0 to 27.0 g/10 min or 20.0 to 27.0 g/10 min, and a total number of -CF2H, carbonyl group-containing terminal groups, -CF=CF2 and -CH2OH of 90 or less per 106 main-chain carbon atoms.
Further claimed an injection molded article, member to be compressed and coated electric wire comprising said copolymer.
37. All ranges in the copolymer claimed in the application 18/450,792 are overlapping with the corresponding ranges as those claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Obviousness Double Patenting Rejection III
38. Claims 1-3 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of a copending application 17/679,831 (published US 2022/0181729). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
39. The rejection is adequately set forth on pages 12-14 of an Office action mailed on September 11, 2025 and is incorporated here by reference.
40. Since no Terminal Disclaimer has been filed, the rejection is maintained.
41. The application 17/679,831 claims a nonaqueous electrolyte battery comprising a gasket containing a copolymer containing a tetrafluoroethylene unit and a perfluoro(propyl vinyl ether) unit, wherein the copolymer has a content of the perfluoro(propyl vinyl ether) unit of 2.0 to 6.0% by mass, or 2.0 to 5.5% by mass with respect to the whole of the monomer units, a melt flow rate of 0.5 to 55 g/10 min, and the number of functional groups of 50 or less per 106 main-chain carbon atoms.
The gasket is an injection molded article.
42. All ranges in the copolymer claimed in the application 17/679,831 are overlapping with the corresponding ranges as those claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Obviousness Double Patenting Rejection IV
43. Claims 1-3, 5 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8 of a copending application 18/451,927 (published US 2023/0391924).
44. The rejection is adequately set forth on pages 14-16 of an Office action mailed on September 11, 2025 and is incorporated here by reference.
45. Since no Terminal Disclaimer has been filed, the rejection is maintained.
46. The application 18/451,927 claims a fluorine-containing copolymer, comprising: tetrafluoroethylene unit; hexafluoropropylene unit; and perfluoro(propyl vinyl ether) unit, wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 1.5 to 2.6% by mass with respect to the whole of the monomer units, and a melt flow rate at 372°C of 9 to 40 g/10 min or 11 to 38 g/10 min.
The copolymer has a total number of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH of 90 or less per 106 main-chain carbon atoms.
Further claimed an injection molded article, and coated electric wire comprising said copolymer.
47. All ranges in the copolymer claimed in the application 18/451,927 are overlapping with the corresponding ranges as those claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Obviousness Double Patenting Rejection V
48. Claims 1-3, 5 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8 of a copending application 18/452,015 (published US 2023/0391926).
49. The rejection is adequately set forth on pages 16-18 of an Office action mailed on September 11, 2025 and is incorporated here by reference.
50. Since no Terminal Disclaimer has been filed, the rejection is maintained.
51. The application 18/452,015 claims a fluorine-containing copolymer, comprising: tetrafluoroethylene unit; hexafluoropropylene unit; and perfluoro(propyl vinyl ether) unit, wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 1.6 to 2.9% by mass with respect to the whole of the monomer units, and a melt flow rate at 372°C of 5.0 to 40.0 g/10 min or 6.0 to 37.0 g/10 min. The fluorine-containing copolymer a has a total number of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, CONH2 and -CH2OH of 90 or less per 106 main-chain carbon atoms.
Further claimed an injection molded article, and coated electric wire comprising said copolymer.
52. All ranges in the copolymer claimed in the application 18/452,015 are overlapping with the corresponding ranges as those claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Obviousness Double Patenting Rejection VI
53. Claims 1-5 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of a copending application 18/450,504 (published US 2023/0391918).
54. The rejection is adequately set forth on pages 18-21 of an Office action mailed on September 11, 2025 and is incorporated here by reference.
55. Since no Terminal Disclaimer has been filed, the rejection is maintained.
56. The application 18/450,504 claims a fluorine-containing copolymer, comprising: tetrafluoroethylene unit; hexafluoropropylene unit; and perfluoro(propyl vinyl ether) unit, wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 1.6 to 2.9% by mass with respect to the whole of the monomer units, and a melt flow rate at 372°C of 22.0 to 40.0 g/10 min or 23.0 to 36.0 g/10 min.
The fluorine-containing copolymer according has a total number of carbonyl group-containing terminal groups and -CF=CF2, -CF2H and -CH2OH of 120 or less per 106 main-chain carbon atoms.
Further claimed an injection molded article, film, lining, and coated electric wire comprising said copolymer.
57. All ranges in the copolymer claimed in the application 18/450,504 are overlapping with the corresponding ranges as those claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Obviousness Double Patenting Rejection VII
58. Claims 1-5 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8 of a copending application 18/451,915 (published US 2023/0399434).
59. The rejection is adequately set forth on pages 21-23 of an Office action mailed on September 11, 2025 and is incorporated here by reference.
60. Since no Terminal Disclaimer has been filed, the rejection is maintained.
61. The application 18/451,915 claims a fluorine-containing copolymer, comprising tetrafluoroethylene unit, hexafluoropropylene unit, and a fluoro(alkyl vinyl ether) unit, wherein the copolymer has a content of the fluoro(alkyl vinyl ether) unit of 1.4 to 2.9% by mass or 1.7 to 2.4% by mass with respect to the whole of the monomer units, a melt flow rate at 372°C of 9 to 40 g/10 min or 11 to 38 g/10 min, and a total number of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH of 90 or less per 106 main-chain carbon atoms.
The fluoro(alkyl vinyl ether) unit is perfluoro(propyl vinyl ether) unit.
Further claimed an injection molded article, member to be compressed and coated electric wire comprising said copolymer.
62. All ranges in the copolymer claimed in the application 18/451,915 are overlapping with the corresponding ranges as those claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Response to Arguments
63. Applicant's arguments filed on December 11, 2025 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
64. With respect to Applicant’s arguments regarding the teachings of Imamura et al (US 2016/0319089), it is noted that:
1) The rejection over Imamura et al was made under 35 USC 103, wherein
Imamura et al discloses a copolymer of TFE and perfluoro(alkyl vinyl ether) having as low as 10 functional groups, or 50 functional groups per 106 carbon atoms ([0025], Abstract, [0031], [0038], as to instant claim 2); the copolymer having preferably 2.0%wt or more of PAVE groups ([0070], as to instant claim 1), Tm of 315⁰C or lower ([0073], as to instant claim 6) and MFR of 0.5-40 g/10 min ([0109], as to instant claim 1).
PAVE is preferably PPVE [0068]).
2) All ranges in the copolymer of Imamura et al are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
3) It would have been obvious to a one of ordinary skill in the art to choose and use the TFE/PPVE copolymer having 2%wt of PPVE, MFR within the range of 0.5-40 g/10 min, including the value of 23-30 g/10 min and Tm of 315⁰C as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Given the TFE/PPVE copolymer consists of only two comonomers TFE and PPVE, and the content of PPVE is 2%wt, therefore, the content of TFE units will intrinsically and necessarily be 98%wt. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
64. With respect to Applicant’s arguments regarding unexpected results of instant invention, it is noted that:
1) Instant claims are silent with respect to any properties of the claimed copolymer, and it is not clear what properties and at what ranges are the goal of instant invention.
2) The inventive example 1-5 of instant invention (Table 3 of instant specification) are based on copolymer of TFE and PPVE only with the content of PPVE of 2.4-2.8 %mass and MFR of 25-30 g/10 min; the scope of instant claims is broader than the specific inventive examples 1-5. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
3) On the other hand, Comparative example 4, which is outside of the claimed copolymer, is having either “Good” or “Very Good” properties (Table 4 of instant specification).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764