Prosecution Insights
Last updated: April 19, 2026
Application No. 18/448,291

COPOLYMER, MOLDED BODY, INJECTION MOLDED BODY, AND COATED ELECTRICAL WIRE

Non-Final OA §102§103§DP
Filed
Aug 11, 2023
Examiner
BHUSHAN, KUMAR R
Art Unit
1766
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Daikin Industries Ltd.
OA Round
1 (Non-Final)
73%
Grant Probability
Favorable
1-2
OA Rounds
2y 10m
To Grant
99%
With Interview

Examiner Intelligence

Grants 73% — above average
73%
Career Allow Rate
576 granted / 789 resolved
+8.0% vs TC avg
Strong +34% interview lift
Without
With
+33.5%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
45 currently pending
Career history
834
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
42.9%
+2.9% vs TC avg
§102
21.8%
-18.2% vs TC avg
§112
21.1%
-18.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 789 resolved cases

Office Action

§102 §103 §DP
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. 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. Priority 3. This application is a CON of PCT/JP2022/003635 01/31/2022 . Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application JAPAN 2021-031087 02/26/2021 JAPAN 2021-162114 09/30/2021 filed on 09/29/23 . Information Disclosure Statement The information disclosure statement (IDS), filed on 01/10/24, 04/23/24, 08/22/24, 11/26/24, 03/04/25, 04/17/25, 06/27/25, 09/09/25, 09/30/35, 02/18/26 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith. 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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 , 3-5 of copending Application No. 18/ 450642 . Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions are directed to a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit , wherein regarding instant claim 1 , copending claim 1 discloses a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit , wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 3 . 9 to 4 . 9 % by mass, overlap ping instant claim range of 4.4 to 6% by mass with respect to the whole monomer units, a melt flow rate at 372 0 C of 4 to 9 g/10 min, overlap ping instant claim range of 7.5 to 11 g/10 min, and total number of CF=CF 2 , -CF 2 H, -COF, -COOH, -COOCH 3 , -CONH 2 , and -CH 2 OH of 40 or less per 10 6 main-chain carbon atoms, read on instant claimed range of 40 or less per 10 6 main-chain carbon atoms. A prima facie case of obviousness exists for the copolymer , wherein copending claim 1 discloses the copolymer has a content of perfluoro(propyl vinyl ether) unit of 3.9 to 4.9 % by mass and melt flow rate at 372 0 C of 4 to 9 g/10 min , overlapping the requirement of claim 1 . See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05). Regarding i nstant claim 2 , copending claim 3 discloses injection molded article comprising the copolymer of claim 1. Regarding instant claim 3 , copending claim 4 discloses copolymer as coating layer in the coated electric wire. Regarding instant claim 4 , copending claim 5 discloses a foamed article comprising the copolymer , wherein the foamed article a film. Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 , 3- 4 of copending Application No. 18/449788. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions are directed to a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit , wherein regarding instant claim 1 , copending claim 1 discloses a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit , wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 4.6 to 5.1 % by mass, fall into instant claim range of 4.4 to 6% by mass with respect to the whole monomer units, a melt flow rate at 372 0 C of 11.0 to 17 g/10 min , overlap at end point of instant claim range of 7.5 to 11 g/10 min, and total number of CF=CF 2 , -CF 2 H, -COF, -COOH, -COOCH 3 , -CONH 2 , and -CH 2 OH of 40 or less per 10 6 main-chain carbon atoms, read on instant claimed range of 40 or less per 10 6 main-chain carbon atoms. The examiner takes note of the fact that the copending claim range of a melt flow rate at 372 0 C of 11.0 to 17 g/10 min overlaps the claimed range of 7.5 to 11 g/10 min at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05. Regarding i nstant claim 2 , copending claim 3 discloses injection molded article comprising the copolymer of claim 1. Regarding instant claim 3 , since the cop olymer of copending claim is obvious, the copolymer can be used for any future intended purpose such as coating layer in the coated electric wire. Regarding instant claim 4 , copending claim 4 discloses a foamed article comprising the copolymer , wherein the foamed article a film. Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 -2 of copending Application No. 18/ 452806 . Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions are directed to a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit , wherein the copending claim 1 discloses the copolymer as a part of pipe body section, wherein regarding instant claim 1 , copending claims 1-2 discloses a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit , wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 2.8 to 6 % by mass, encompassing instant claim range of 4.4 to 6% by mass with respect to the whole monomer units, a melt flow rate at 372 0 C of 4 to 11 g/10 min , encompassing instant claim range of 7.5 to 11 g/10 min, and total number of CF=CF 2 , -CF 2 H, -COF, -COOH, -COOCH 3 , -CONH 2 , and -CH 2 OH of 50 or less per 10 6 main-chain carbon atoms, encompassing instant claimed range of 40 or less per 10 6 main-chain carbon atoms. A prima facie case of obviousness exists for the copolymer , wherein copending claims 1 the copolymer has a content of perfluoro(propyl vinyl ether) unit of 2.8 to 6 % by mass, encompassing instant claim range, a melt flow rate at 372 0 C of 4 to 11 g/10 min , encompassing instant claim range, and total number of CF=CF 2 , -CF 2 H, -COF, -COOH, -COOCH 3 , -CONH 2 , and -CH 2 OH of 50 or less per 10 6 main-chain carbon atoms, encompassing instant claimed range . It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976). Regarding i nstant claim 2 , copending claim 1 discloses injection molded article comprising the copolymer of claim 1. Regarding instant claim s 3 -4 , since the copolymer of copending claim is obvious, the copolymer can be used for any future intended purpose such as coating layer in the coated electric wire and/or as the foamed film article . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 7 of U.S. Patent No. 12,467,572 . Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions are directed to a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit , wherein the patented claim 1 discloses the copolymer as a part of pipe joint section, wherein regarding instant claim 1 , patented claims 1, 3 discloses a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit , wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 2.8 to 6 % by mass, encompassing instant claim range of 4.4 to 6% by mass with respect to the whole monomer units, a melt flow rate at 372 0 C of 4 to 11 g/10 min , encompassing instant claim range of 7.5 to 11 g/10 min, and total number of CF=CF 2 , -CF 2 H, -COF, -COOH, -COOCH 3 , -CONH 2 , and -CH 2 OH of 50 or less per 10 6 main-chain carbon atoms, encompassing instant claimed range of 40 or less per 10 6 main-chain carbon atoms. A prima facie case of obviousness exists for the copolymer , wherein in patent claim 1 the copolymer has a content of perfluoro(propyl vinyl ether) unit of 2.8 to 6 % by mass, a melt flow rate at 372 0 C of 4 to 11 g/10 min , and total number of CF=CF 2 , -CF 2 H, -COF, -COOH, -COOCH 3 , -CONH 2 , and -CH 2 OH of 50 or less per 10 6 main-chain carbon atoms, encompassing instant claimed range . It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976). Regarding i nstant claim 2 , patented claim 7 discloses injection molded article comprising the copolymer of claim 1. Regarding instant claim s 3-4 , since the copolymer of patent claim is obvious, the copolymer can be used for any future intended purpose such as coating layer in the coated electric wire and/or as the foamed film article. Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7 of U.S. Patent No. 12,4 59 , 175 . Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions are directed to a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit , wherein the patented claim 1 discloses the copolymer as a part of injection molded article, wherein regarding instant claim 1 , patented claims 1, 4 discloses a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit , wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 3.9 to 4.8 % by mass, overlapping instant claim range of 4.4 to 6% by mass with respect to the whole monomer units, a melt flow rate at 372 0 C of 11 to 19 g/10 min , overlapping at end point of instant claim range of 7.5 to 11 g/10 min, and patented claim 7 total number of CF=CF 2 , -CF 2 H, -COF, -COOH, -COOCH 3 , -CONH 2 , and -CH 2 OH of 20 or less per 10 6 main-chain carbon atoms, fall into instant claimed range of 40 or less per 10 6 main-chain carbon atoms. A prima facie case of obviousness exists for the copolymer , wherein patented claims 1 the copolymer has a content of perfluoro(propyl vinyl ether) unit of 3.9 to 4.8 % by mass, overlapping instant claim rang e. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976). The examiner takes note of the fact that the patented claim range of a melt flow rate at 372 0 C of 11.0 to 17 g/10 min overlaps the claimed range of 7.5 to 11 g/10 min at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05. Regarding instant claim 2 , patented claim 1 discloses injection molded article comprising the copolymer. Regarding instant claim s 3-4 , since the copolymer of patent claim is obvious, the copolymer can be used for any future intended purpose such as coating layer in the coated electric wire and/or as the foamed film article. Claim Rejections - 35 USC § 102 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)(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 1-4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tsuda (US 2022/0266485). The applied reference has a common assignee and/or inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. Regarding claim 1 , Tsuda discloses a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit (para [0013], [0040]-[0041]), wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 6% by mass (para [0041]), fall into claim range of 4.4 to 6% by mass with respect to the whole monomer units, a melt flow rate at 372 0 C of 10 g/10 min (para [0049], [0050]), fall into claim range of 7.5 to 11 g/10 min, and total number of CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2, and -CH2OH of 20 or less per 10 6 main-chain carbon atoms (para [0022], table 1), fall into claimed range of 40 or less per 10 6 main-chain carbon atoms, meeting the requirements of claim 1 Regarding claim 2 , Tsuda incorporated the limitations of claim 1 and further discloses an injection molded article comprising the copolymer (para [00 53] ). Regarding claim s 3 -4 , since Tsuda discloses same copolymer, the copolymer can be used for any future intended purpose such as coating layer in the coated electric wire and/or as the foamed film article. 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. 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 . Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura (WO 2019/187725; for English translation US 2021/0024769 applied). Regarding claim 1 , Imamura discloses a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit (para [0038]) , wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 1 to 10% by mass (para [0043]-[0044]), encompassing claim range of 4.4 to 6% by mass with respect to the whole monomer units, a melt flow rate at 372 0 C of 0.1 to 100 g/10 min (para [0061]), encompassing claim range of 7.5 to 11 g/10 min, and total number of CF=CF 2 , -CF 2 H, -COF, -COOH, -COOCH 3 , -CONH 2 , and -CH 2 OH of 6 or less per 10 6 main-chain carbon atoms (para [0021], [0027], table 1), fall into claimed range of 40 or less per 10 6 main-chain carbon atoms. A prima facie case of obviousness exists for the copolymer , wherein Imamura discloses the content of perfluoro(propyl vinyl ether) unit of 1 to 10% by mass and melt flow rate at 372 0 C of 0.1 to 100 g/10 min, encompassing the requirement of claim 1 . It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976). In cases, such as the one here, where “the claimed ranges are completely encompassed by the prior art, the [obviousness] conclusion is even more compelling than in cases of mere overlap” and “shifts the burden to the applicant to show that his invention would not have been obvious.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Regarding claim 2 , Imamura incorporated the limitations of claim 1 and further discloses a n injection molded article comprising the copolymer (para [0072], [0080]). Regarding claim 3 , Imamura incorporated the limitations of claim 1 and further discloses a coated electric wire comprising a coating layer comprising the copolymer (para [0072], [008 1 ]). Regarding claim 4 , Imamura incorporated the limitations of claim 1 and further discloses a foamed article comprising the copolymer , wherein the foamed article is electric wire coating (para [008 1 ] -[0082] ). Conclusion Refere nce s Stanley (EP 0423995) and Hitomi (JP 2020100843 ) were cumulative in nature to the above rejection and thus not set forth. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT KUMAR R BHUSHAN whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (313)446-4807 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 9.00 AM to 5.50 PM (EST) . 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, FILLIN "SPE Name?" \* MERGEFORMAT RANDY P GULAKOWSKI can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571)272-1302 . 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. /KUMAR R BHUSHAN/ Primary Examiner, Art Unit 1766
Read full office action

Prosecution Timeline

Aug 11, 2023
Application Filed
Feb 24, 2026
Non-Final Rejection — §102, §103, §DP (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
73%
Grant Probability
99%
With Interview (+33.5%)
2y 10m
Median Time to Grant
Low
PTA Risk
Based on 789 resolved cases by this examiner. Grant probability derived from career allow rate.

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