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 .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 17, 2026 has been entered.
Response to Amendment
3. The amendment and the Declaration under 37 CFR 1.137 filed by Applicant on July 17, 2026 have been fully considered. The addition of new claim 7 is acknowledged. The previous rejections cited below are maintained but suitably framed to address the current amendment and the Declaration.
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.
4. Claims 1-7 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.
Claims 1 and 7 refer to “tetrafluoroethylene” for the second and more times, but do not have a preposition “the” or “said” in front of those; therefore, it is not clear if “tetrafluoroethylene” used the second and more times is the same or different from that previously used.
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.
5. Claims 1-4, 6-7 are rejected under 35 U.S.C. 103 as unpatentable over Imamura et al (US 2016/0319089).
6. 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]).
7. As to instant claims 3-4, the copolymer is used for making articles by injection molding or compression molding ([0121]).
8. 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).
9. 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, depending on the specific desired properties of the copolymer. 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.
10. With respect to the Declaration under 37 CFR 1.132 filed by Applicants on July 17, 2026, it is noted that:
I) In said Declaration Applicants provided the same Inventive examples 1-5 and Comparative examples 1-4 and their properties as disclosed in instant specification, and further additional Inventive example A and its properties; wherein Applicant argues that (see page 2 of the Declaration):
PNG
media_image1.png
488
665
media_image1.png
Greyscale
II) However,
1) instant claims are silent with respect to any properties of the claimed copolymer or a “combination of properties”; it is not clear which properties and at what level are the goal of instant invention. It is not clear what level of “abrasion loss” is considered as “excellent abrasion resistance”; what level of water vapor permeability and sealability are considered as “excellent”.
2) Though Comparative example 1 and Comparative Example 2 are shown as having “poor” crack test and slightly higher abrasion loss than those of the inventive examples 1-5, the Comparative examples 3 and 4 show the same abrasion loss value and “Good” crack rest as the Inventive example 1-5; therefore, given a copolymer having good abrasion resistance and crack resistance is desired, it would have been obvious to a one of ordinary skill in the art to choose and use the TFE/PPVE copolymer having PPVE content and MFR as presented in Comparative examples 3-4, which are outside of the claimed ranges.
3) On the other hand, the Comparative example 1 shows the same water vapor permeability, the same water vapor leak amount, recovery, Storage elastic modulus that are having the same or very close values as those of Inventive examples 1-5 and further “very Good” surface smoothness and “Good” electric wire coating property as those of Inventive examples 1-5; therefore, given a TFE/PPVE copolymer having said properties is desired, it would have been obvious to choose and use the TFE/PPVE copolymer having MFR as that of Comparative Example 1, which is outside of the claimed range.
III) With respect to “Unexpected technical effect of the present invention”, it is noted that
MPEP 716.02(a) recites that “Evidence Must Show Unexpected Results”
"A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue." In re Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985).
MPEP 716.02 (b) further states:
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP 716.02(c).
Thus, the Declaration does not provide a clear demonstration how the differences in the results/properties are unexpected and unobvious. Both inventive and comparative examples of instant specification and the Declaration show good or excellent properties, such as either or all of abrasion resistance, crack resistance, surface smoothness or water vapor permeability.
IV) It is further noted that the scope of instant claims is broader than the evidence of unexpected results provided in the Declaration. Thus, Inventive examples 1-5 show TFE/PPVE copolymers having only specific combination of PPVE content and MFR. Instant claim 1 recites the content of PPVE being 2.0-2.8% by mass and MFR of 23-30 g/10 min, and further the presence of as high as 0.8% by mass of any monomer unit copolymerizable with the TFE and PPVE; instant claim 2 recites the number of functional groups being 50 or less per 106 main-chain carbons.
However, inventive examples 1-5 show a combination of the content of PPVE of 2.4-2.8%wt with MFR of 25-30 g/10 min and the newly added Example A shows the combination of PPVE having 2.0% by mass and MFR of 23.5 g/10 min.
No inventive examples showing: the content of 2.0%mass PPVE with MFR of 30 g/10 min; the content of PPVE of 2.0%mass to 2.3%mass with no additional copolymerizable monomer were presented. Further, instant claim 1 recites the presence of as high as 0.8% by mass of any monomer unit copolymerizable with TFE and PPVE; however, the only example A shows the presence of the very specific comonomer PEVE in amount of 0.5%mass, no examples showing the presence of other comonomers in amount of higher than zero to 0.8%mass were presented.
Furthermore, instant claim 2 recites the number of functional groups present being 50 or less per 106 main-chain carbon atoms. Inventive examples 2 and A show the number of functional groups 289 and 280 per 106 main-chain carbon atoms, respectively, i.e. outside of the scope of instant claim 2; and Inventive examples 1,3-5 show the number of functional groups of less than 6 per 106 main-chain carbon atoms, which is significantly less than the claimed 50 per 106 main-chain carbon atoms.
Therefore, the scope of instant claims is significantly broader than the evidence of unexpected results presented in the Declaration and instant specification.
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).
V) With respect to the teachings of Imamura et al,
Imamura et al clearly teaches 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, and depending on the desired single property or combination of properties, it would have been obvious to a one of ordinary skill in the art to choose and use the copolymer having MFR in said range 0.5-40 g/10 min, including the range of 23-30 g/10 min as well, since it would have been obvious to choose material based on its suitability, depending on the specific desired properties of the copolymer. 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).
11. Claims 1-7 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).
12. The discussion with respect to Imamura et al (US 2016/0319089), set forth in paragraphs 5-10 above, is incorporated here by reference.
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 1-7 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. The discussion with respect to Imamura et al (US 2016/0319089), set forth in paragraphs 5-10 above, is incorporated here by reference.
17. 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).
18. As to instant claim 5, Earnest, JR. et al discloses a cable comprising electrical conductor and insulation covering comprising said copolymer ([0026]).
19. 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).
20. 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).
21. Claims 1, 3-7 are rejected under 35 U.S.C. 103 as unpatentable over Sawaki et al (US 2015/0158988).
22. 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).
23. 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).
24. 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.
25. With respect to the Declaration under 37 CFR 1.132 filed by Applicants on July 17, 2026, it is noted that:
I) In said Declaration Applicants provided the same Inventive examples 1-5 and Comparative examples 1-4 and their properties as disclosed in instant specification, and further additional Inventive example A and its properties; wherein Applicant argues that (see page 2 of the Declaration):
PNG
media_image1.png
488
665
media_image1.png
Greyscale
II) However,
1) instant claims are silent with respect to any properties of the claimed copolymer or any “combination” of properties; it is not clear which properties and at what level are the goal of instant invention. It is not clear what level of “abrasion loss” is considered as “excellent abrasion resistance”; what level of water vapor permeability and sealability are considered as “excellent”.
2) Though Comparative example 1 and Comparative Example 2 are shown as having “poor” crack test and slightly higher abrasion loss than those of the inventive examples 1-5, the Comparative examples 3 and 4 show the same abrasion loss value and “Good” crack rest as the Inventive example 1-5; therefore, given a copolymer having good abrasion resistance and crack resistance is desired, it would have been obvious to a one of ordinary skill in the art to choose and use the TFE/PPVE copolymer having PPVE content and MFR as presented in Comparative examples 3-4, which are outside of the claimed ranges.
3) On the other hand, the Comparative example 1 shows the same water vapor permeability, the same water vapor leak amount, recovery, Storage elastic modulus that are having the same or very close values as those of Inventive examples 1-5 and further “very Good” surface smoothness and “Good” electric wire coating property as those of Inventive examples 1-5; therefore, given a TFE/PPVE copolymer having said properties is desired, it would have been obvious to choose and use the TFE/PPVE copolymer having MFR as that of Comparative Example 1, which is outside of the claimed range.
III) With respect to “Unexpected technical effect of the present invention”, it is noted that
MPEP 716.02(a) recites that “Evidence Must Show Unexpected Results”
"A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue." In re Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985).
MPEP 716.02 (b) further states:
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP 716.02(c).
Thus, the Declaration does not provide a clear demonstration how the differences in the results/properties are unexpected and unobvious. Both inventive and comparative examples of instant specification and the Declaration show excellent properties, such as either or all of abrasion resistance, crack resistance, surface smoothness or water vapor permeability.
IV) It is further noted that the scope of instant claims is broader than the evidence of unexpected results provided in the Declaration. Thus, Inventive examples 1-5 show TFE/PPVE copolymers having only specific combination of PPVE content and MFR. Instant claim 1 recites the content of PPVE being 2.0-2.8% by mass and MFR of 23-30 g/10 min, and further the presence of as high as 0.8% by mass of any monomer unit copolymerizable with the TFE and PPVE; instant claim 2 recites the number of functional groups being 50 or less per 106 main-chain carbons.
However, inventive examples 1-5 show a combination of the content of PPVE of 2.4-2.8%wt with MFR of 25-30 g/10 min and the newly added Example A shows the combination of PPVE having 2.0% by mass and MFR of 23.5 g/10 min.
No inventive examples showing: the content of 2.0%mass PPVE with MFR of 30 g/10 min; the content of PPVE of 2.0%mass to 2.3%mass with no additional copolymerizable monomer were presented. Further, instant claim 1 recites the presence of as high as 0.8% by mass of any monomer unit copolymerizable with TFE and PPVE; however, the only example A shows the presence of the very specific comonomer PEVE in amount of 0.5%mass, no examples showing the presence of other comonomers in amount of higher than zero to 0.8%mass were presented.
Furthermore, instant claim 2 recites the number of functional groups present being 50 or less per 106 main-chain carbon atoms. Inventive examples 2 and A show the number of functional groups 289 and 280 per 106 main-chain carbon atoms, respectively, i.e. outside of the scope of instant claim 2; and Inventive examples 1,3-5 show the number of functional groups of less than 6 per 106 main-chain carbon atoms.
Therefore, the scope of instant claims is significantly broader than the evidence of unexpected results presented in the Declaration and instant specification.
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).
V) With respect to the teachings of Sawaki et al,
Sawaki et al clearly teaches 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 depending on the desired single property or combination of properties, it would have been obvious to a one of ordinary skill in the art to choose and use the copolymer having MFR in said range 0.5-40 g/10 min, including the MFR of 30 g/10 min as well, since it would have been obvious to choose material based on its suitability, depending on the specific desired properties of the copolymer. 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).
26. Claims 1-7 are rejected under 35 U.S.C. 103 as unpatentable over Sawaki et al (US 2015/0158988) in view of Earnest, JR. et al (US 2004/0260044).
27. The discussion with respect to Sawaki et al (US 2015/0158988), set forth in paragraphs 21-25 above, is incorporated here by reference.
28. Though Sawaki et al does not explicitly recite the copolymer having 50 or less functional groups per 106 carbon atoms,
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), wherein Earnest, JR. et al explicitly teaches that the copolymer having such MFR and no more than 50 unstable end groups per 106 carbon atoms can be extruded onto a conductor over a broad polymer melt temperature to give insulated wire of high quality ([0007]).
The perfluoroalkyl vinyl ether is perfluoropropyl vinyl ether (PPVE) ([0009], claim 4).
As to instant claim 5, Earnest, JR. et al discloses a cable comprising electrical conductor and insulation covering comprising said copolymer ([0026]).
29. 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).
30. Since both Earnest, JR. et al and Sawaki et al are related to copolymers comprising TFE and PPVE units, having substantially the same MFR, content of PPVE and Tm, used for wire coating, and thereby belong to the same field of endeavor, wherein Earnest, JR. et al explicitly teaches that the copolymer having such MFR and no more than 50 unstable end groups per 106 carbon atoms can be extruded onto a conductor over a broad polymer melt temperature to give insulated wire of high quality,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sawaki et al and Earnest, JR. et, and to use, or obvious to try to use the TFE/PPVE copolymer of Sawaki et al having no more than 50 unstable end groups per 106 carbon atoms, so that such copolymer can be extruded onto a conductor over a broad polymer melt temperature to give insulated wire of high quality, given such is desired and 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).
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
31. Claims 1-3, 6-7 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of US 12,603,368 (previously rejected over claims 11-16 of a copending application 17/679,765).
32. Since no Terminal Disclaimer has been filed, the rejection is maintained.
It is further noted that instant claims are silent with respect to any properties of the claimed copolymer, or unexpected results provided by the claimed copolymer.
33. US 12,603,368 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.
34. All ranges in the copolymer claimed in US 12,603,368 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
35. Claims 1-3, 7 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of US 12,614,795 (previously rejected over a copending application 17/679,831). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
36. Since no Terminal Disclaimer has been filed, the rejection is maintained.
It is further noted that instant claims are silent with respect to any properties of the claimed copolymer, or unexpected results provided by the claimed copolymer.
37. US 12,614,795 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.
38. 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).
Response to Arguments
39. Applicant's arguments and the Declaration under 37 CFR 1.132 filed on July 17, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
40. With respect to Applicant’s arguments regarding the teachings of Imamura et al (US 2016/0319089) and Sawaki et al (US 2015/0158988), it is noted that:
1) The rejections over Imamura et al and Sawaki 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]) and 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]).
2) All ranges in the copolymer of Imamura et al and 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).
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.
4) Even if Sawaki et al discloses the presence of side chains that comprise alkoxy groups in TFE/PAVE copolymer, i) said side chains are cited as preferable and not required and ii) instant claims are silent with respect to the TFE/PAVE copolymer having no side chains comprising alkoxy groups.
41. With respect to the Declaration under 37 CFR 1.132 filed by Applicants on July 17, 2026 and Applicant’s arguments regarding unexpected results of instant invention, it is noted that:
I) In said Declaration Applicants provided the same Inventive examples 1-5 and Comparative examples 1-4 and their properties as disclosed in instant specification, and further additional Inventive example A and its properties; wherein Applicant argues that (see page 2 of the Declaration):
PNG
media_image1.png
488
665
media_image1.png
Greyscale
II) However,
1) instant claims are silent with respect to any properties of the claimed copolymer; especially “combination” of properties as argued by Applicant on page 5 of the Arguments; it is not clear which properties and at what level are the goal of instant invention. It is not clear what level of “abrasion loss” is considered as “excellent abrasion resistance”; what level of water vapor permeability and sealability are considered as “excellent”.
2) Though Comparative example 1 and Comparative Example 2 are shown as having “poor” crack test and slightly higher abrasion loss than those of the inventive examples 1-5, the Comparative examples 3 and 4 show the same abrasion loss value and “Good” crack rest as the Inventive example 1-5; therefore, given a copolymer having good abrasion resistance and crack resistance is desired, it would have been obvious to a one of ordinary skill in the art to choose and use the TFE/PPVE copolymer having PPVE content and MFR as presented in Comparative examples 3-4, which are outside of the claimed ranges.
3) On the other hand, the Comparative example 1 shows the same water vapor permeability, the same water vapor leak amount, recovery, Storage elastic modulus that are having the same or very close values as those of Inventive examples 1-5 and further “very Good” surface smoothness and “Good” electric wire coating property as those of Inventive examples 1-5; therefore, given a TFE/PPVE copolymer having said properties is desired, it would have been obvious to choose and use the TFE/PPVE copolymer having MFR as that of Comparative Example 1, which is outside of the claimed range.
III) With respect to “Unexpected technical effect of the present invention”, it is noted that
MPEP 716.02(a) recites that “Evidence Must Show Unexpected Results”
"A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue." In re Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985).
MPEP 716.02 (b) further states:
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP 716.02(c).
Thus, the Declaration does not provide a clear demonstration how the differences in the results/properties are unexpected and unobvious. Both inventive and comparative examples of instant specification and the Declaration show excellent properties, such as either or all of abrasion resistance, crack resistance, surface smoothness or water vapor permeability.
IV) It is further noted that the scope of instant claims is broader than the evidence of unexpected results provided in the Declaration. Thus, Inventive examples 1-5 show TFE/PPVE copolymers having only specific combination of PPVE content and MFR. Instant claim 1 recites the content of PPVE being 2.0-2.8% by mass and MFR of 23-30 g/10 min, and further the presence of as high as 0.8% by mass of any monomer unit copolymerizable with the TFE and PPVE; instant claim 2 recites the number of functional groups being 50 or less per 106 main-chain carbons.
However, inventive examples 1-5 show a combination of the content of PPVE of 2.4-2.8%wt with MFR of 25-30 g/10 min and the newly added Example A shows the combination of PPVE having 2.0% by mass and MFR of 23.5 g/10 min.
No inventive examples showing: the content of 2.0%mass PPVE with MFR of 30 g/10 min; the content of PPVE of 2.0%mass to 2.3%mass with no additional copolymerizable monomer were presented. Further, instant claim 1 recites the presence of as high as 0.8% by mass of any monomer unit copolymerizable with TFE and PPVE; however, the only example A shows the presence of the very specific comonomer PEVE in amount of 0.5%mass, no examples showing the presence of other comonomers in amount of higher than zero to 0.8%mass were presented.
Furthermore, instant claim 2 recites the number of functional groups present being 50 or less per 106 main-chain carbon atoms. Inventive examples 2 and A show the number of functional groups 289 and 280, respectively, i.e. outside of the scope of instant claim 2; and Inventive examples 1,3-5 show the number of functional groups of less than 6 per per 106 main-chain carbon atoms, which is significantly less than 50 per 106 main-chain carbon atoms.
Therefore, the scope of instant claims is significantly broader than the evidence of unexpected results presented in the Declaration and instant specification.
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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. 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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
Prosecution Insights