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 .
Response to Amendment
The amendment filed 05 March 2026 has been entered. Claims 1-10 are currently pending in the application. The rejections of record from the office action dated 05 December 2025 not repeated herein have been withdrawn.
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.
Claims 1-3, and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 19/058,232 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the amounts of hexafluoropropylene, perfluoro(propyl vinyl ether), and MFR overlap the amounts of the instant claims.
It would have been obvious to one of ordinary skill in the art to choose any amount in the disclosed range including those in the claimed range and thereby arrive at the claimed invention.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al. (EP 1260526 A1).
Regarding claims 1-4 and 7-10, Hiraga discloses a fluorine containing polymer for coating an electric wire or cable, wherein the fluorine containing polymer comprises tetrafluoroethylene, hexafluoropropylene and perfluoroalkyl vinyl ether, having a melt flow rate at 372°C in a range of 0.1 to 100, wherein the polymer may comprise 5 to 25% by weight of hexafluoropropylene and 0 to 20% by weight of perfluoroalkyl vinyl ether, and wherein the perfluoroalkyl vinyl ether may be a perfluoropropyl vinyl ether (i.e. a fluorine -containing copolymer, comprising tetrafluoroethylene unit, hexafluoropropylene unit and perfluoro(propyl vinyl ether) unit, wherein the copolymer has a content of hexafluoropropylene unit overlapping 9.4% to 10.3% or 9.6% to 10.2% by mass with respect to the whole of the monomer units, a content of perfluoro(propyl vinyl ether) unit overlapping 1.6 to 2.9% or 1.8 to 2.4% by mass with respect to the whole of the monomer units, and a melt flow rate at 372°C overlapping 9.0 to 17.0 g/10min or 10.0 to 16.0 g/10min; a coated electric wire comprising a coating layer comprising the fluorine-containing copolymer; a formed article comprising the fluorine-containing copolymer, wherein the formed article is an electric wire)(abstract, [0011]-[0015], [0023] claims 1-6).
It would have been obvious to one of ordinary skill in the art to choose any amount in the disclosed range including those in the claimed range and thereby arrive at the claimed invention.
Regarding claim 7, Hiraga discloses that the coating may be for an electric wire (i.e. an article)(abstract).
Although Hiraga does not disclose injection molded as claimed, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed injection molded and given that Hiraga meets the requirements of the claimed article, Hiraga clearly meets the requirements of the present claims.
Regarding claim 9, Hiraga discloses that the coating may be for an electric wire (abstract). It is noted that a coating on an electric wire could also be considered a tube since the coating would have the shape of a tube with the wire running therethrough.
Regarding claim 10, Hiraga discloses that the tetrafluoroethylene unit is present at 70-95 % (i.e. overlapping 86.8 to 89.0%)([0011]).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al. (EP 1260526 A1), as applied to claim 1 above, in view of Isaka et al. (US 2017/0008986 A1).
Regarding claim 5, Hiraga discloses that the number of unstable end groups such as -COF (“carbonyl group” see instant spec at [0031]) and -CF=CF2 should be at most 20 per 106 carbon atoms of the polymer (i.e. 100 or less per 106 main-chain carbon atoms)(Hiraga [0022]). Hiraga does not identify CH2OH groups as unstable groups.
Isaka discloses a tetrafluoroethylene/hexafluoropropylene copolymer and identified -CH2OH as an unstable group (abstract, [0061]).
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art to include -CH2OH groups in the list of groups that should be at most 20 per 106 carbon atoms of the polymer of Hiraga in order to prevent the negative effects of unstable groups on the polymer, for example to prevent cells and voids in the final product (Hiraga [0005]-[0006]).
Regarding claim 6, Hiraga teaches all of the claim limitations as set forth above, Hiraga does not disclose that the copolymer has a number of -CF2H of 100 or less per 106 main-chain carbon atoms.
Isaka discloses a tetrafluoroethylene/hexafluoropropylene copolymer and that -CF2H and unstable end groups should be 120 or less per 106 main-chain carbon atoms to prevent lump formation ([0057]-[0058]).
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art to limit the -CF2H groups as taught by Isaka in order to prevent lump formation and would thereby arrive at the claimed amount of the -CF2H groups.
Response to Arguments
Applicant's arguments filed 05 March 2026 have been fully considered but they are not persuasive.
Applicant argues that the double patenting rejection using 19/058,232 should be reconsidered because it is directed to a composition that also comprise a PTFE at 0.03 to 0.30% by mass.
However, it is noted that while 19/058,232 is narrower in scope than the instant claims, it is noted that the fluorine-containing copolymer disclosed overlaps that of the instant claims and thereby one would arrive at the present invention from the copending claims. Therefore, the rejection is maintained.
Applicant argues that Hiraga discloses broad ranges and does not disclose the specific MFR range, hexafluoropropylene range or perfluoro(propyl vinyl ether) range.
However, as set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Applicant argues that the Examples of Hiraga fall outside of the claimed ranges and do not include perfluoro(propyl vinyl ether).
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) MPEP 2123 II.
Applicant argues that the instant invention exhibits the unexpected results of giving a beautiful injection molded article by being molded at high injection speed by an injection molding method, can form a thin coating layer on a core wire small in diameter at a high speed by an extrusion forming method and can give a formed article which is excellent in the 25°C abrasion resistance, the solvent crack resistance, the air low permeability, the 110°C tensile creep resistance and the durability to repeated loads and point to the Declaration of Tadaharu Isaka dated 02 March 2026, which points to instant Examples 1-4.
However, it is noted that the instant claims are not commensurate in scope with the data presented in instant Examples 1-4 because the instant claims broadly recite 9.4 to 10.3% hexafluoropropylene, 1.6 to 2.9% perfluoro(propyl vinyl ether) and MFR at 372°C of 9.0 to 17.0 g/10 min, while instant Examples 1-4 are directed to 9.6 to 10.2% hexafluoropropylene, 1.8 to 2.4% perfluoro(propyl vinyl ether) and MFR at 372°C of 10.0 to 16.0 g/10 min. Further, it is noted that no proper side-by-side comparison is made given that the Comparative examples differ in the number of -CF2H groups and the number of -COOH, -COF and -CH2OH groups as shown in instant Table 3/A.
Applicant argues that one of ordinary skill in the art would reasonably be able to extend the probative value of the tested species to the remaining embodiments encompassed by the claim.
However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) (MPEP 716.01(c)(II)). It is the examiner’s position that the arguments provided by the applicant regarding whether one of ordinary skill in the art would reasonably be able to extend the probative value of the tested species to the remaining embodiments encompassed by the claim must be supported by a declaration or affidavit.
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 JAMES C YAGER whose telephone number is (571)270-3880. The examiner can normally be reached 9-6 EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C YAGER/Primary Examiner, Art Unit 1782
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