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 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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Chapman et al (US 20170025204) or Shiotsuki et al (US 8143351).
Chapman teaches a coated electric wire obtained from melt melt-fabricable tetra fluoroethylene/hexafluoropropylene copolymer (TFE/PPVE) obtained by compression molding (see Abstract and 0056, meeting limitations of claims 2-4).
Chapman discloses TFE/PPVE copolymer with MFR of 42 g/10 min measured at 372C (see 0038) and a PPVE content of 5.2 weight percent (see Fluorination Example 3 at 0065), which contains 5 unstable end groups per 106 carbon atoms and no —CF2H end groups (see Fluorination Example 3 at 0065).
Note that above mentioned unstable end groups are equal to ones listed in instant claim 1 (see 0057 and claims 13-14).
Note that MFI value above is slightly higher than claimed range of 33.0-39.0 g/10min (see instant claim 1).
However, Chapman teaches that minimal MFR value is 30 g/10 min (see 0038). Thus, the operational MFR range for Chapman’s TFE/PPVE copolymer is at least within the range of 30-42 g/10 min.
A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect MFR value of Chapman’s copolymer within the claimed range, since it clearly disclosed in the reference.
Shiotsuki teaches a fluororesin molding composition used for coating on electric wires (see Abstract and claim 8) , having a melt flow rate MFR), at 372° C., of 34 to 45 g/10 minutes (see claim 6) and not more than 50 unstable terminal groups per 1x106 carbon atoms (see claim 3).
Note that Shiotsuki’s and Applicant’s compositions underwent the same fluorination procedures (see 7:45) and thus, the same reduction of active end groups is achieved.
Regarding polymer composition, Shiotsuki discloses polymer obtained had a MFR of 35.7 g/10 minutes, a composition ratio (% by mass) of TFE/HFP/PPVE=87.6/ 11.5/0.9 (where HFP is hexafluoropropylene) (see Production Example 3 at 12:20).
Note that PPVE amount in Example above is below the claimed range of 4.8-5.7% mass.
However, Shiotsuki teaches that TFE/HFP/PPVE ratio within the range of (70-95)/(4-20)/(0.1-10), (see 3:50).
A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect PPVE amount in Shiotsuki’s copolymer within the claimed range, since it clearly disclosed in the reference.
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.
3. Claims 1-4 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-9 of U.S. Patent No. 8143351. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 8143351 claims a fluororesin molding composition used for coating on electric wires (see Abstract and claim 8) , having a melt flow rate MFR at 372° C of 34 to 45 g/10 minutes (see claim 6) and not more than 50 unstable terminal groups per 1x106 carbon atoms (see claim 3).
Note that U.S. Patent No. 8143351’s and Applicant’s compositions underwent the same fluorination procedures (see 7:45) and thus, the same reduction of active end groups is achieved.
Regarding polymer composition, U.S. Patent No. 8143351 discloses polymer obtained had a MFR of 35.7 g/10 minutes, a composition ratio (% by mass) of TFE/HFP/PPVE=87.6/ 11.5/0.9 (where HFP is hexafluoropropylene) (see Production Example 3 at 12:20).
Note that PPVE amount in Example above is below the claimed range of 4.8-5.7% mass.
However, U.S. Patent No. 8143351 teaches that TFE/HFP/PPVE ratio within the range of (70-95)/(4-20)/(0.1-10) (see 3:50).
A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect PPVE amount in U.S. Patent No. 8143351’s copolymer within the claimed range, since it clearly disclosed in the reference.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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