DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-8 are currently pending in the application.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al. (WO 2019/187725 A1).
At the outset, it is noted that the WIPO publication to Imamura is relied upon for date purposes and the US 11,926,753 patent is relied upon herein below as its English equivalent.
Regarding claims 1-5, Imamura teaches a fluororesin having a having a number of functional groups per 106 main-chain carbon atoms in the fluororesin, at preferably 6 or less and particularly preferably at 0, in order to obtain superior high-frequency electrical properties (Ab., col. 3, line 16-col. 4 line 6), wherein the number of functional groups may be may be the total number of -CF═CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2, and CH2OH. (col. 5, lines 14-67). Thus, Imamura teaches functional groups and number thereof within the scope of the claimed invention.
Disclosed fluororesins include a copolymer of tetrafluoroethylene (TFE), hexafluoropropylene (HFP) and perfluoro (alkyl vinyl ether) (PAVE), preferably one having TFE:HFP:PAVE units at a mass ratio of (75 to 99.8):(0.1 to 25):(0.1 to 25) (col. 7, lines 36-44), and having a melt flow rate (MFR), preferably of from 0.1-40 g/10 min (per ASTM D1238, 372oC) (col. 8, lines 43-47). Additionally, the small genus of disclosed PAVE monomers includes perfluoro(ethyl vinyl ether) (PEVE) as a preferred species (col. 5, lines col. 6, lines 52-57). Thus, Imamura teaches overlapping ranges for the MFR, and the amounts of perfluoro(ethyl vinyl ether) and hexafluoropropylene (HFP) units.
Imamura is silent on a fluororesin as claimed in one single embodiment as claimed.
At the outset, it is noted that in the case where the 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, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Given the teaching in Imamura on fluororesins of overlapping scope, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for any fluororesin within the scope of Imamura, including those comprising TFE, HFP and PEVE in claimed amounts, and having the claimed MFR and the claimed number of terminal groups.
Regarding claim 6-8, Imamura teaches injection and extrusion molding of the fluororesin, for forming articles such as a sheet, an electric wire, a container and a tube (Ab., col. 9, line 55-col. 10, line 10).
Claims 1-5, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kitahara et al. (US 2013/0230645 A1) in view of Yokotani et al. (US 2019/0382544 A1).
Kitahara teaches a fluoropolymer for coating an electric wire, comprising a fluorocopolymer (FEP) having a melt flow rate (MFR) at 372oC, of from 10 to 60 g/10 min (Ab.,), and having units of tetrafluoroethylene (TFE), hexafluoropropylene (HFP) and perfluoro (alkyl vinyl ether) (PFVE/PAVE), preferably one having TFE:HFP:PFVE unit at a mass ratio (the sum of all units being 100) at (75 to 95):(5 to 15):(0.3 to 3). Additionally, the small genus of disclosed PFVE monomers includes perfluoro(ethyl vinyl ether) (PEVE) as a preferred species (Ab., [0014]-[0016], [0230], ref. claims). Thus, Kitahara’s fluorocopolymers have overlapping ranges for the MFR, and the amounts of perfluoro(ethyl vinyl ether) and hexafluoropropylene (HFP) units.
Kitahara is silent on a fluorocopolymer comprising melt flow rate and units in claimed amounts and having a number functions claims as in the claimed invention.
As stated in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
The secondary reference to Yokotani teaches fluororesins suitable for wire insulation, having a number, i.e., the sum of all said groups of unstable groups, e.g., -COF, -COOH, -CF2H, -COOCH3, -CH2OH, CONH2, and -CF═CF2 groups, at 20 or 10 or smaller or 0, in order to achieve a low dissipation factor within a high frequency region (10 GHz or higher) [0172], [0230].
In view of the advantages taught in Yokotani, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for fluoropolymers comprising units in claimed amounts, and having MFR and HFP and PEVE units with the claimed ranges as prescribed by Yokotani, including those of the claimed invention, absent evidence to the contrary.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Brothers et al. (US 2007/0292685 A1), in view of Imamura et al. (WO 2019/187725 A).
Regarding claims 1-5, Brothers teaches fluoropolymers for producing insulated wires, comprising units of tetrafluoroethyelene (TFE), hexafluoropropylene (HFP) and perfluoro (alkyl vinyl ether) (PAVE), such as a TFE/HFP/PAVE terpolymer, wherein the HFP content is about 6-17 wt. %, and the PAVE, preferably perfluoro (ethyl vinyl ether) (PEVE), content is about 0.2 to 3.0 wt. %, the remainder being TFE to total 100 wt % of the copolymer, and having a melt flow rate (MFR) of at least 10, and most preferably, at least 26 (per ASTM D-1238) (Ab., [0013]). Thus, the monomer units and amounts thereof, and the melt flow rate of Brothers’ fluoropolymers encompass those of the claimed invention.
Brothers further teaches that the polymer end groups are -CF₃, that unstable groups e.g., -CONH₂, -COOH, -COF may be converted by fluorination and that hydrogen containing groups, COF, -COOH and -CF=CF2 are absent as a result of fluorination [0016]-[0017].
Brothers is silent on a fluoropolymer having a total number of groups within the claimed upper limit.
As stated in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Incorporating the discussion on Imamura from paragraphs 4 and 5 above, and given the generic teaching in Brothers on fluoropolymers suitable for forming an insulated wire, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for fluoropolymers having a MFR and units in claimed amounts, and having a number of functional groups as prescribed by Imamura so as to provide for a superior high-frequency electrical properties, absent evidence to the contrary.
Regarding claims 6-8, Brothers teaches the use of the fluoropolymers in injection molding, and melt extrusion to form a tube, a film, a pipe, or an insulated wire coating (Ab., [0018], [0027]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kitahara et al. (US 2013/0230645 A1) in view of Brothers et al. (US 2007/0292685 A1).
The discussion on Kitahara from preceding paragraphs, as applied to claim 1, is incorporated herein by reference.
Kitahara is silent on injection molded articles as claimed.
Incorporating the discussion on Brothers from paragraphs 18-23 above, given the teaching in Brothers and Kitahara on fluoropolymers of overlapping scope, and the teaching in Brothers on the suitability of the disclosed fluoropolymers for injection moldings as well as for melt extruded articles, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to utilize Kitahara’s fluoropolymers in injection moldings, absent evidence to the contrary.
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.
Claim 1-4, 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/450792 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 is as follows:
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Although the copending claims are silent on a copolymer having a melt flow rate of 28.0 to 40.0 g/10min, given the recitation on an upper limit thereof at 27.0 g/10min in copending claim 1, it would have been obvious to one of ordinary skill in the art to prepare copolymers having a melt flow rate close to but greater than 27.0 g/10min, including those of the claimed invention (obviates claims 1-4). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are sufficiently close that one of ordinary skill in the art would expect the ranges to yield products having the same properties. See MPEP 2144.05(I). Additionally, as stated in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claims 6-8, copending claims 5-7 obviate the claimed limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
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7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762