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 .
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.
2. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al (US 2016/0319089).
3. As to instant claims 1-2, 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]).
4. All ranges in the copolymer of Imamura et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
5. Based on the teachings of Imamura et al, it would have been obvious to a one of ordinary skill in the art to choose and use the PPVE in amount of 3.5%wt as the comonomer copolymerized with TFE, and to prepare such TFE/PPVE copolymer having MFR of 23 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).
6. Further discloses injection molded articles produced from said copolymer including gaskets, a coated electric wire, and an electric wire coating material ([0121], [0138], [0142], as to instant claims 3-5).
7. Claims 1-2, 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ohtani et al (US 2008/0241534).
8. A to instant claims 1-2, 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]).
The CF2=CF-ORf2 unit is perfluoropropyl vinyl ether ([0038]).
9. All ranges in the copolymer of Ohtani et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
10. 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 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).
11. Further disclosed electric wire jacket formed from said copolymer ([0028], as to instant claims 4-5).
12. Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Isaka et al (US 2015/0353700).
13. 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]). The preferable PAVE is PPVE ([0045]).
14. All ranges in the copolymer of Isaka et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
15. Based on the teachings of Isaka et al, it would have been obvious to a one of ordinary skill in the art to choose and use the TFE and PPVE to form the copolymer, with amount of PPVE of 3.2-3.7%mass, and to prepare such TFE/PPVE copolymer having MFR of 23 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).
16. As to instant claims 3-5, further disclosed injection molded articles ([0126]) and electric wire coating comprising said copolymer ([0130]).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Obviousness Double Patenting Rejection I
17. Claims 1,3-5 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 of a copending application 18/446,746 (published US 2023/0383034). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
18. The application 18/449,746 claims a copolymer, comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit, wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 3.3 to 4.2% by mass with respect to the whole of the monomer units, a melt flow rate at 372°C of 27.0 to 35.0 g/10 min, and the total number of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH of 20 or less per 106 main-chain carbon atoms.
Further claimed n injection molded article, a coated electric wire, comprising a coating layer and a formed article, comprising the copolymer, wherein the formed article is a wafer carrier, a gasket, or an electric wire coating.
19. Thus, the limitations claimed in instant invention are the same as those claimed in the copending application 18/446,746.
20. Claims 1, 3-5 are directed to an invention not patentably distinct from claims 1-5 of a copending application 18/446,746 (published US 2023/0383034).
Specifically, see the discussion in paragraphs 17-19 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). The copending application 18/446,746, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
Obviousness Double Patenting Rejection II
21. Claims 1-3 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4 of US 12,459,177. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
22. US 12,459,177 claims an injection molded article obtained by injection molding a copolymer using a mold, wherein the copolymer comprises tetrafluoroethylene (TFE) unit and a fluoro(alkyl vinyl ether) (FAVE) unit, wherein a content of the fluoro(alkyl vinyl ether) unit of the copolymer is 3.5 to 4.7% by mass with respect to the whole of the monomer units, a melt flow rate at 372°C of the copolymer is 22.0 to 35.0 g/10 min, the total number of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH of the copolymer is 20 or less per 106 main-chain carbon atoms;
the fluoro(alkyl vinyl ether) unit of the copolymer is perfluoro(propyl vinyl ether) unit.
The melt flow rate at 372°C of the copolymer is 24.2 to 30.0 g/10 min.
23. Thus, the limitations claimed in instant invention are obvious variants of the limitations claimed in US 12,459,177.
24. Claims 1-3 are directed to an invention not patentably distinct from claims 1-4 of a US 12,459,177.
Specifically, see the discussion in paragraphs 21-23 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). US 12,459,177, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
Obviousness Double Patenting Rejection III
25. Claims 1-5 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4 of US 12,540,208. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
26. US 12,540,208 claims a copolymer comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit, wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 3.5 to 4.2% by mass with respect to the whole of the monomer units, a melt flow rate at 372°C of 18.0 to 22.0 g/10 min, and the total number of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH of 50 or less per 106 main-chain carbon atoms.
27. Further claimed an injection molded article, a coated electric wire, comprising a coating layer and a formed article, comprising the copolymer, wherein the formed article is a wafer carrier, a gasket, or an electric wire coating.
28. Thus, the limitations claimed in instant invention are the same as those claimed in the copending application 18/446,746.
29. Claims 1-5 are directed to an invention not patentably distinct from claims 1-4 of US 12,540,208.
Specifically, see the discussion in paragraphs 25-28 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). US 12,540,208, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
Conclusion
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