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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-13 in the reply filed on 17 October 2025 is acknowledged.
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites the phrase “Ra of 0.10 µm 2.00 µm” which is believed to be a typographical error. Claim 5 should instead recite “Ra of 0.10 µm to 2.00 µm”.
Appropriate correction is required.
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, 6-11, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-8 of copending Application No. 18/727,949 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The instant claim 1 is taught by the reference claims 1-2.
The instant claim 6 is taught by the reference claim 8.
The instant claims 7-9 are taught by the reference claim 1.
The instant claim 10 is taught by the reference claim 7.
The instant claim 11 is taught by the reference claims 3 and 7.
The instant claim 13 is taught by the reference claim 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Greuel et al. (US-5660660-A) in view of Fukumoto et al. (JP-6734122-B2; herein English machine translation used for all citations) and Aida et al. (US-20070232754-A1).
Regarding claim 1, Greuel teaches a heat shrinkable tube (recoverable article) comprising an ethylene-tetrafluoroethylene copolymer (ETFE) as a main component (Greuel, Abstract, Col. 2 Lines 31-44, Col. 3 Lines 10-67). Greuel teaches the heat shrinkable tube is formed by extruding the ETFE into a tube, crosslinking the tube via irradiation, heating the tube to a temperature over the melting point, and expanding the tube (Greuel, Col. 1 Lines 40-50, Col. 3 Lines 35-67, and Col. 5 Lines 58-60). Greuel further teaches an example where the crosslinking is done via irradiation at 5 MRad (50 kgy) (Greuel, Col. 7 Lines 21-22). Greuel teaches the tube may have a thickness of 0.020 to 0.080 in (0.5 to 2.0 mm) (Greuel, Col. 3 Lines 45-50).
Greuel is silent regarding the heat shrinkable tube having a melting point of 210°C to 250°C and a storage elastic modulus of 0.8 MPa to 2.8 MPa at 250°C to 280°C.
Fukumoto teaches a method of forming a heat shrinkable tube comprising a fluoropolymer resin, wherein the method includes expanding the tube by increasing the pressure inside the tube to a pressure greater than 30 kPa than the pressure outside the tube (Fukumoto, Par. 0001-0002, and 0022).
Greuel and Fukumoto are analogous art as they both teach a heat shrinkable tube comprising a fluoropolymer, wherein the method for forming the tube includes expanding the tube. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have expanded the tube of Greuel by increasing the pressure inside the tube to a pressure greater than 30 kPa above the pressure outside the tube. This would allow for expanding the tube while reducing manufacturing costs and quality variations (Fukumoto, Par. 0022).
Modified Greuel is silent regarding the heat shrinkable tube having a melting point of 210°C to 250°C and a storage elastic modulus of 0.8 MPa to 2.8 MPa at 250°C to 280°C.
Aida teaches a tube comprising ETFE, wherein the ETFE has a TFE to E ratio of 60/40 (0.67 to 1.5) (Aida, Abstract, Par. 0001-0002 and 0025-0026). Using a molecular weight of F of 19, a molecular weight of C of 12, and a molecular weight of H of 1, this results in a fluorine content in the ETFE of 53.6-64% by mass.
Modified Greuel and Aida are analogous art as they both teach ETFE tubes. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the ETFE of Aida for the ETFE of modified Greuel. This would allow for mechanical strength and melt moldability (Aida, Par. 0026).
Regarding the melting point and storage modulus, modified Greuel teaches a heat shrinkable tube that is identical or substantially identical to the claimed heat shrinkable tube. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01, I. Products of identical chemical composition can not have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.02. Modified Greuel teaches a heat shrinkable tube comprising ETFE, wherein the ETFE has a ratio of TFE units to E units of 0.67 to 1.5 and a F content of 53.6-64% by mass as stated above, which overlaps that of the instant invention per the instant claims 2-3. Modified Greuel further teaches the tube has a thickness of 0.5-2 mm as stated above, which lies within the range of the instant invention per the instant specification Par. 0040. Modified Greuel further teaches the tube is formed by extruding the ETFE into a tube, crosslinking the tube via irradiation, heating the tube to above the melting point, and expanding the tube such that the pressure inside the tube is greater than 30 kPa above the pressure outside the tube as stated above, which is the same method as the instant invention per the instant Claim 14. Further, the instant specification states that melting point and storage modulus are affected by the F content and the ratio of TFE to E (See the instant specification Par. 0016-0017 and 0033-0034). Modified Greuel thus teaches a heat shrinkable tube that is identical or substantially identical to the claimed heat shrinkable tube. Therefore, absent objective evidence to the contrary, the heat shrinkable tube of modified Greuel would have inherently exhibited the claimed melting point and storage modulus.
Regarding claims 2-3, modified Greuel teaches a ratio of TFE units to E units in the ETFE copolymer is 60/40 (0.67 to 1.5) (Aida, Par. 0025-0026), which overlaps the claim 3 range of 1.02 to 1.20 and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I. Using a molecular weight of F of 19, a molecular weight of C of 12, and a molecular weight of H of 1, this results in a fluorine content in the ETFE of 53.6-64% by mass, which overlaps the claim 2 range of 58% by mass to 62% by mass and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claim 4, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01, I. Products of identical chemical composition can not have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.02. Modified Greuel teaches a heat shrinkable tube that is identical or substantially identical to the claimed invention as stated above for claim 1. Furthermore, the instant specification states that the storage modulus are affected by the F content and the ratio of TFE to E (See the instant specification Par. 0016-0017 and 0033-0034). Therefore, absent objective evidence to the contrary, the heat shrinkable tube of modified Greuel would have inherently exhibited the claimed storage modulus.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Greuel et al. in view of Fukumoto et al. and Aida et al. as applied to claim 1 above, further in view of Kobayashi et al. (US 20190299512 A1).
Regarding claim 5, modified Greuel teaches all of the elements of the claimed invention as stated above for claim 1. Modified Greuel is silent regarding a surface having an arithmetic average roughness of 0.10 µm to 2.00 µm.
Kobayashi teaches a heat shrinkable tube comprising a fluoropolymer wherein the tube has a surface with an arithmetic average roughness Ra of less than 1.00 µm (Kobayashi, Abstract, Par. 0005-0006, 0012, and 0052), which overlaps the claimed range of 0.10 to 2.00 µm and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Modified Greuel and Kobayashi are analogous art as they both teach heat shrinkable tubes comprising a fluoropolymer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the heat shrinkable tube of modified Greuel to have a surface roughness within the claimed range. This would allow for good surface smoothness and a reduction in the variation of the thickness distribution of the tube (Kobayashi, Par. 0005-0006 and 0052).
Regarding claim 6, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01, I. Modified Greuel teaches a heat shrinkable tube that is identical or substantially identical to the claimed tube as stated above for claim 1. Modified Greuel further teaches the tube has a surface with a surface roughness that overlaps that of the claimed invention as stated above for claim 5. Furthermore, the instant specification states that the transmittance of infrared light is achieved via the surface roughness of the tube (See the instant specification Par. 0038). Modified Greuel thus teaches a heat shrinkable tube that is identical or substantially identical to the claimed invention. Therefore, absent objective evidence to the contrary, the heat shrinkable tube would have inherently exhibited the claimed transmittance to infrared light.
Claims 7-10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Greuel et al. in view of Fukumoto et al. and Aida et al. as applied to claim 1 above, further in view of Matsumoto (US 5015512 A).
Regarding claim 7, modified Greuel teaches all of the elements of the claimed invention as stated above for claim 1. Modified Greuel further teaches the heat shrinkable tube can be used to cover cables (Greuel, Col. 3 Lines 20-25).
Modified Greuel is silent regarding a heat shrinkable coupling component used to couple insulating wires each including a strand covered with an insulating layer, the heat shrinkable coupling comprising a pair of sealing portions disposed on an inner circumferential surface of the heat shrinkable tube at respective positions on opposite end side.
Matsumoto teaches a heat shrinkable coupling component used to couple insulating wires (cables) each including a strand covered with an insulating layer, the heat shrinkable coupling comprising a heat shrinkable tube comprising a fluoropolymer, and a pair of sealing portions (ring shaped thermoplastic resin inserts) disposed on an inner circumferential surface of the heat shrinkable tube at respective positions on opposite end side (Matsumoto, Abstract, Col. 1 Lines 5-28 and Col. 1 Line 67 – Col. 2 Line 33).
Modified Greuel and Matsumoto are analogous art as they both teach heat shrinkable tubes comprising a fluoropolymer that cover wires (cables). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the heat shrinkable tube of modified Greuel as a part of a heat shrinkable coupling component used to couple insulating wires, and to include a pair of sealing portions as taught by Matsumoto. This would allow for a dimensionally recoverable article that can couple insulating wires (Cables) (Greuel, Col. 3 Lines 11-19; Matsumoto, Abstract and Col. 1 Line 67 – Col. 2 Line 33).
Regarding claims 8-9 and 12-13, modified Greuel teaches the sealing portions are formed of a sealer (thermoplastic resin) that is a blend of a fluoropolymer that is PVDF and EVA (Matsumoto, Col. 2 Lines 26-33), which is the same sealer as the instant invention per the instant specification Par. 0053 and Table 11. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01. Products of identical chemical composition can not have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.02. Matsumoto teaches a sealer that is formed of the same material as the instant invention as stated above (See the instant specification Table 11). Therefore, absent objective evidence to the contrary, the sealer of modified Greuel would have inherently exhibited the claimed shear viscosity (claims 8-9), melting point (claim 12), and transmittance of infrared light (claim 13), see MPEP 2112.01.
Regarding claim 10, modified Greuel teaches a solder portion disposed on the inner circumferential surface of the heat shrinkable tube at a position between the pair of sealing portions (Matsumoto, Abstract and Col. 1 Line 67 – Col. 2 Line 33).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Greuel et al. in view of Fukumoto et al., Aida et al., and Matsumoto as applied to claim 10 above, further in view of Soni et al. (US 4832248 A).
Regarding claim 11, modified Greuel teaches the solder portion is formed of a solder material (Matsumoto, Col. 1 Line 67 – Col. 2 Line 33). Modified Greuel teaches the (thermoplastic resin) is a blend of a fluoropolymer that is PVDF and EVA (Matsumoto, Col. 2 Lines 26-33), which is the same sealer as the instant invention per the instant specification Par. 0053 and Table 11. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01. Products of identical chemical composition can not have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), see MPEP 2112.02. Matsumoto teaches a sealer that is formed of the same materials as the instant invention as stated above. Therefore, absent objective evidence to the contrary, the sealer of modified Greuel would have inherently exhibited the claimed softening point, see MPEP 2112.01.
Modified Greuel is silent regarding the solder material having a melting point of 210°C to 240°C.
Soni teaches a solder material for use in a coupling structure for wires wherein the solder material has a melting point of 150-210 °C (Soni, Abstract and Col. 5 Lines 3-5), which overlaps the claimed range of 210°C to 240°C and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Modified Greuel and Soni are analogous art as they both teach solder material for use in a coupling structure for wires. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the solder material of Soni as the solder material of modified Greuel. This would allow for a soldered connection for electrical connections (Soni, Col. 1 Lines 4-9).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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