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 .
Claim Rejections – 35 U.S.C. § 112(b)
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.
Claims 1-5 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claim 1 recites a melt flow rate of a copolymer.
The measurement of a melt flow rate depends upon the choice of a mass load applied to a sample; higher mass loads will lead to a higher measured melt flow rate. No specific mass load is inherent to the measurement of a melt flow rate, and this condition must be specified for one of ordinary skill in the art both to understand the scope of the recited property and to perform a measurement of the recited property.
Because numerical values of the recited melt flow rate property may be interpreted in different ways based upon different choices for the mass loads, and because the claim does not specify a mass load, the claim does not set forth the scope of the recited melt flow rate with reasonable clarity.
Claims 2-5 are dependent upon independent claim 1, and they are indefinite for the same reason. For the purpose of searching and applying prior art, the claims have been interpreted as though they recited the conditions set forth in the specification with respect to the examples (5 kg load, 372 °C, and the procedure of ASTM D1238).
Claim Rejections – 35 U.S.C. § 102
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 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 the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by WO 2021/039863 A1 (herein “Isaka ‘863”). US Patent Application Publication No. 2022/0278403 A1 is referred to herein as an equivalent English publication of Isaka ‘863.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Isaka ‘863 describes a copolymer (see Example 3 in ¶¶ [0117]-[0123] of US ‘403) comprising 7.0 wt% of units of perfluoro(propyl vinyl ether), balance tetrafluoroethylene, corresponding to 2.75 mol% of units of perfluoro(propyl vinyl ether). The copolymer has a melt flow rate of 23.0 and four functional groups per 106 carbon atoms (see ¶¶ [0120] and [0122] of US ‘403). The copolymers described therein are useful for injection molding (see ¶ [0053] of US ‘403).
Claim Rejections – 35 U.S.C. § 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-5 are rejected under 35 U.S.C. § 103 as being unpatentable over JP 2019-214641 A (herein “Beppu”) in view of US Patent Application Publication No. 2017/0008986 A1 (herein “Isaka ‘986”). The attached computer-generated English translation of Beppu is referred to herein.
Beppu describes a copolymer (see Example A-9 in Table 1 on p. 16) comprising 2.9 mol% of units of perfluoro(propyl vinyl ether), balance tetrafluoroethylene. The copolymer has a melt flow rate of 21.8 g/10 min. The copolymers described therein are useful for injection molding (see ¶ [0041] of the translation) and various articles including insulating coating films for electric wires and wrapped electric wires (see pp. 36-37 of the translation).
Beppu does not disclose the number of the presently recited functional groups.
Isaka ‘986 describes a copolymer of tetrafluoroethylene, hexafluoropropylene, and perfluoro(propyl vinyl ether) (see ¶¶ [0020]-[0021]) and an electric wire including a coating thereof (see ¶¶ [0022]-[0025]). The copolymers have 50 or less, more preferably 20 or less, -CF2H and unstable end groups per 106 carbon atoms so that the copolymer is less likely to form a lump (see ¶¶ [0057]-[0059]). The number of functional groups is obtained by subjecting the copolymer to fluorination (see ¶ [0069]).
In light of Isaka ‘986, one of ordinary skill in the art would have been motivated to fluorinate Beppu’s copolymer in order to the reduce the number of -CF2H and unstable end groups in the polymer and to make the polymer less likely to form lumps. Because the fluorination of Isaka ‘986 is the same technique that is used in the present application to reduce the number of such functional groups (c.f. instant Spec. ¶ [0031]), there is a reasonable basis to conclude that performing the fluorination process of Isaka ‘986 on Beppu’s copolymer would produce a copolymer having a number of the presently recited groups within the presently recited range of 50 or less per 106 main-chain carbon atoms.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have subjected Beppu’s copolymer to the fluorination process of Isaka ‘986, thereby arriving at the presently claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764