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 . Per response dated 6/30/26, claims 1-12 are currently pending in the application.
The terminal disclaimer filed on 6/30/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 18/450,792 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al. (WO 2019/187725 A1, of record).
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, 9-12, 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 specific groups and a 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. 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.
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, absent evidence of criticality for the claimed ranges.
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, 7-12, 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) (references of record).
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 having a melt flow rate, comprising units in claimed amounts and having a number and type of groups as in the claimed invention.
As stated in paragraph 8 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 1-12 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, 9-12, 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 number of claimed groups within the claimed upper limit.
As stated in paragraph 8 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 an injection molded article as claimed.
Incorporating the discussion on Brothers from paragraphs 18 and 22 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.
Response to Arguments
In view of the filing of a terminal disclaimer (dt. 6/30/26), the double patenting rejections of record are withdrawn. Applicant’s arguments and the Affidavit dated 6/30/26 have been duly considered.
Applicant argues that the primary documents of record are very board compared to claim 1, that the claimed fluorine-containing copolymer is excellent in 140°C abrasion resistance, ozone resistance, heat aging resistance, water vapor permeability, low oxygen permeation, 100°C high-temperature rigidity, 110°C tensile creep resistance and extrusion formability, that the comparative Examples of the present application are closer in scope to claim 1 that the applied art and Examples 1-4 of the present application show unexpectedly superior results.
In response, Examiner maintains the applied primary documents to Imamura et a., Kitahara et al. and Brothers et al., all teach fluoropolymers comprising monomer units that encompass the claimed ranges, perfluoro(ethyl vinyl ether) (PEVE) as a preferred species, and having a MFR of overlapping scope. In addition, Imamura and Yokotani each teach limiting the number of claimed groups per 106 main chain carbons as being advantageous. Thus, the cited references obviate the claimed limitations for reasons set forth in the rejections of record and herein above.
Additionally, a teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Specifically, referring to Examples in Imamura and Kitahara, Applicant points out both these contain PPVE (units) in the exemplified copolymers, as opposed to the claimed PEVE. The TFE/HFP/PEVE (87.9/10.1/1.48 % by mass) (MFR of 33.9 g /10min) copolymer in Brothers example falls outside of the claimed range, with a substantially similar copolymer of Comp. Example 1 of the present application (TFE/HFP/PEVE ,87.9/10.1/1.5 % by mass, MFR=33.8 g/10min) failing to achieve the effects of the present invention.
Arguing on the criticality of MFR, Applicant refers to Comp. Ex. 2 and 3 as providing evidence that low and high MFR cannot provide for articles with excellent low oxygen permeability, 100oc high temperature rigidity, extrusion formabilty and/or heat aging resistance. Referring to the MFR ranges prescribed in Imamura, Kitahara and Brothers, Applicant argues that the references do not disclose setting the MFR at 28 to 40 g/10min, to obtain the oxygen penetration, 100oc high temperature rigidity, ozone resistance and heat aging resistance of the present invention.
In response, the teachings of the primary documents are as follows:
Imamura:
TFE:HFP:PAVE - (75 to 99.8):(0.1 to 25):(0.1 to 25) mass ratio; PEVE as a preferred species of PAVE; preferred MFR = 0.1-40 g/10 min, and number of functional groups per 106 main-chain carbon atoms - preferably 6 or less.
Kitahara:
TFE:HFP:PFVE - (75 to 95):(5 to 15):(0.3 to 3) mass ratio; PEVE as a preferred species of PAVE, and MFR=10 to 60 g/10 min.
Brothers:
HFP:PEVE:TFE - (6-17):(0.2-3.0):(remainder); MFR)= at least 10, most preferably, at least 26; Example - TFE/HFP/PEVE (87.9/10.1/1.48 % by mass) MFR=33.9.
Thus, Imamura, Kitahara and Brothers references teach HFP and PAVE/PEVE amounts and MFR ranges that encompass the claimed ranges. In addition, Yokotani is combined with Kitahara, and Imamura is combined with Brothers, to limit the number of claimed groups per 106 main chain carbons for providing the disclosed advantages. While Brother’s TFE/HFP/PEVE (87.9/10.1/1.48 % by mass) copolymer (MFR of 33.9 g /10min) may fall short when compared to Comp. Ex. 1 of the present application, the comparison is limited to the two specific copolymers in question. The general disclosure to Brothers also prescribes a range of 6-17 mass% for the amount of PEVE. Thus, a skilled artisan would have found it obvious to substitute PEVE amount of 10.1 mass% in the cited example with an amount that falls within the claimed range. In combination with Imamura, such a substitution would obviate the claimed monomer unit amounts and MFR.
Furthermore, while Examiner agrees that the data in Table 4 of the present application demonstrates one or more properties as being superior for Ex. 1-4 when compared to Comp. Ex. 1-7, the data is also limited, at best, to fluoropolymers of Ex. 1-4 in Table 3, having a HFP content and PEVE content ranging from 10.7 to 11.5 mass% and 1.4 to 1.8 mass%, respectively, MFR ranging from 30 to 39.9 g/10 min, and a total number of claimed groups per 106 main chain carbons at <21, i.e., a total of groups in columns 5-8 of Table 3. It is not clear why this limited data would be considered to be reasonably representative of claim 1, which is of a much broader scope. In other words, the data on record is not reasonably commensurate in scope with the claim language to overcome the rejections of record
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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 are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. 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
Prosecution Insights