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 .
Response to Amendment
2. The amendment and the Declaration under 37 CFR 1.132 filed by Applicant on June 25, 2026 have been fully considered. The previous rejections not cited below are withdrawn. The previous rejections cited below are maintained for the reasons set forth in “Response to Arguments” section below. The following action is made final.
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.
3. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al (US 2016/0319089).
4. The rejection is adequately set forth on pages 2-3 of an Office action mailed on February 25, 2026 and is incorporated here by reference.
5. Imamura et al discloses a modified fluorine-containing copolymer comprising a tetrafluoroethylene unit (TFE) and 2.0%wt or more, or 3.5%wt ([0070]) of a perfluoro(alkyl vinyl ether) unit (PAVE) and having as low as 10, or 50 functional groups per 106 carbon atoms (Abstract, [0038], [0046]) and MFR of less than 40 g/10 min ([0109]), an exemplified PAVE being perfluoropriopyl vinyl ether (PPVE) and having an exemplified MFR of as low as 23 g/10 min ([0167]).
6. Claims 1-2, 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ohtani et al (US 2008/0241534).
7. The rejection is adequately set forth on pages 3-5 of an Office action mailed on February 25, 2026 and is incorporated here by reference.
8. Ohtani et al discloses a fluorine-containing resin for an electric wire jacket (Abstract) comprising a copolymer of TFE and CF2=CF-ORf2 (Abstract, [0016]) comprising 0.1-3%mol of CF2=CF-ORf2 unit ([0017]), further having the number of unstable end groups of not more than 50 per 1,000,000 carbon atoms ([0022]) and MFR of 11g/10 min to not more than 27 g/10 min ([0023]), preferably 21-25 g/10 min ([0024]).
Based on the teachings of Ohtani et al, it would have been obvious to a one of ordinary skill in the art to choose and use the copolymer of TFE and PPVE as the fluorine-containing resin, with amount of PPVE of 1.2-1.4%mol (3.1-3.6%mass), and to prepare such TFE/PPVE copolymer having the preferable MFR of 21-25 g/10 min 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).
9. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Isaka et al (US 2015/0353700).
10. The rejection is adequately set forth on pages 5-6 of an Office action mailed on February 25, 2026 and is incorporated here by reference.
11. Isaka et al discloses TFE/PAVE copolymer at a mass ratio of 92 to 97/3 to 8 ([0052]) and having MFR in the range of 19-60 g/10 min, specifically exemplified MFR of 23 g/10 min ([0166]) and a content of unstable end groups of 50 or less per 106 carbon atoms ([0059], [0060]).
Response to Arguments
12. Applicant's arguments and the Declaration under 37 CFR 1.132 filed on June 25, 2026 have been fully considered.
13. With respect to Applicant’s arguments and the Declaration, it is noted that:
I) In said Declaration Applicants provided the same Inventive examples 1-4 and Comparative examples 1-5 and their properties as disclosed in instant specification, wherein Applicant argues that (see page 2 of the Declaration):
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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 “resilience at 150⁰C” is considered as “low”, what level of abrasion resistance is considered as “excellent abrasion resistance”; what levels of “carbon dioxide permeability”, “rigidity”, “high temperature tensile creep”, “durability”, “crack resistance” and “transparency” are considered as “excellent”.
2) Though Comparative example 1 shows slightly lower level of resilience at 150⁰C than Inventive examples 3 and 4, said Comparative example 1 is having all other properties having the values very close to those of the Inventive examples and is cited as “Good” for crack test, electric wire coating test and metal mold corrosion test.
Though Comparative example 2 shows “Poor” crack resistance, said Comparative example 2 is having all other properties having the values very close to those of the Inventive examples and is cited as “Good” for electric wire coating test, metal mold corrosion test.
3) Further, the Comparative example 4 is having the PPVE content and MFR values within the claimed ranges, but the number of functional groups of 282 /C106. However, that number of functional groups 282 /C106 is at least 5.64 times higher than the claimed value of 50 or less per C106, and more than 47 times higher than the number of functional groups of Inventive examples 2-4 (<6). No examples showing the number of functional groups of more than but close to 50 per C106 and their properties were presented.
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 150⁰C resilience, crack resistance, electric wire coating test, metal corrosion test, tensile strength and dielectric tangent.
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 1-4 show TFE/PPVE copolymers having only 4 specific combinations of PPVE content and MFR. Instant claim 1 recites the content of PPVE being 3.2-3.7% by mass and MFR of 22-27 g/10 min, and further the number of functional groups being 50 or less per 106 main-chain carbons.
However, inventive examples 1-4 show a combination of the content of PPVE of 3.3-3.6%wt with MFR of 22-25 g/10 min and number of functional groups of 29/C106 or less than 6/C106.
No inventive examples showing: the content of 3.2%mass PPVE with MFR of 27 g/10 min or MFR of 22 g/10 min and number of functional groups of about 50 /C106; the content of PPVE of 3.7%mass with MFR of 22-27 g/10 min and number of functional groups of more than 6 C106 to about 50 /C106, or any examples showing the combination of the content of PPVE of 3.4-3.7%mass with MFR of 22-27 g/10 min and number of functional groups of more than 6 C106 to about 50 /C106.
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:
a) Imamura et al discloses a modified fluorine-containing copolymer comprising a tetrafluoroethylene unit (TFE) and 2.0%wt or more, or 3.5%wt ([0070]) of a perfluoro(alkyl vinyl ether) unit (PAVE) and having as low as 10, or 50 functional groups per 106 carbon atoms (Abstract, [0038], [0046]) and MFR of less than 40 g/10 min ([0109]), an exemplified PAVE being perfluoropriopyl vinyl ether (PPVE) and having an exemplified MFR of as low as 23 g/10 min ([0167]).
b) Though “the technical significance of increasing the PAVE content in Imamura et al lies in introducing a sufficient amount of bulky alkoxy side chains into the polymer to enhance the effects of irradiation treatment”, as argued by Applicant, i) instant claims are silent with respect to the absence of bulky alkoxy side chains that maybe present in the copolymer of Imamura et al; ii) instant claims are silent with respect to any ”technical significance” and/or “technical effects” of the present invention.
VI) With respect to the teachings of Ohtani et al:
a) Ohtani et al discloses a fluorine-containing resin for an electric wire jacket (Abstract) comprising a copolymer of TFE and CF2=CF-ORf2 (Abstract, [0016]) comprising 0.1-3%mol of CF2=CF-ORf2 unit ([0017]), further having the number of unstable end groups of not more than 50 per 1,000,000 carbon atoms ([0022]) and MFR of 11g/10 min to not more than 27 g/10 min ([0023]), preferably 21-25 g/10 min ([0024]).
b) Though Ohtani et al is “primarily directed to stress crack resistance, economic considerations, flame retardance, melt processability, mechanical properties ..:”, as argued by Applicant, i) instant claims are silent with respect to any ”technical significance” and/or “technical effects” of the present invention; ii) based on the Inventive and Comparative examples of instant specification and the Declaration, at least crack resistance and mechanical properties including tensile strength, deflection under load and tensile creep strain appear to be important properties in instant invention as well.
VI) With respect to the teachings of Isaka et al:
a) Isaka et al discloses TFE/PAVE copolymer at a mass ratio of 92 to 97/3 to 8 ([0052]) and having MFR in the range of 19-60 g/10 min, specifically exemplified MFR of 23 g/10 min ([0166]) and a content of unstable end groups of 50 or less per 106 carbon atoms ([0059], [0060]).
b) Though Isaka et al is “primarily directed to excellent electric properties in covering of the wire”, as argued by Applicant, i) instant claim 4 recites the claimed copolymer being used for covering wire as well; ii) instant claims are silent with respect to any technical significance” and/or “technical effects” of the present invention.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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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.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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