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 amendment dated 6/30/26, claims 1-7 are currently pending in the application.
Terminal Disclaimer
The terminal disclaimer filed on 7/1/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration dates of Application #s 18/192020, 18/449,898, 18/451,213, 18/451,525, 18/450,762, 18/452,868 and 18/893198 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 1-7 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, 2 and 7, Imamura teaches a fluororesin having a number of functional groups per 106 main-chain carbon atoms 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.
Imamura teaches fluororesins based on tetrafluoroethylene (TFE) and perfluoro (alkyl vinyl ether) (PAVE), wherein the amount of PAVE in TFE:PAVE copolymer preferably ranges from 1.0 to 10% by mass, and perfluoro(propyl vinyl ether) (PPVE) being a preferred species of PAVE (col. 6, lines 52-col. 7, line 2), having a melt flow rate (MFR), preferably, of from 0.1-40 g/10 min (per ASTM D1238, at 372oC) (col. 8, lines 43-47). Thus, Iwamura teaches an overlapping range for the amount of perfluoro(propyl vinyl ether) (PPVE) and the MFR.
Imamura is silent on a fluororesin having a melt flow rate and an amount of perfluoro(propyl vinyl ether) within the claimed ranges 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 units of TFE, units of PPVE in claimed amount, and having a MFR within the scope of the claimed invention.
Regarding claim 3-6, Imamura teaches injection, extrusion and transfer molding methods for forming articles such as a sheet, a coated electric wire and a tube, i.e. a pipe (Ab., col. 9, line 55-col. 10, line 10).
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Aoyama et al. (US 20050020792 A1), in view of Imamura et al. (WO 2019/187725 A) (references of record).
Regarding claims 1, 2 and 7, Aoyama teaches a copolymer (A) and having a melt flow rate (MFR) of 0.1-50 g/10 minutes (at 372oC), wherein said copolymer (A) is a copolymer comprising tetrafluoroethylene (TFE) and a perfluorovinylether (PVFE) at not less than 3.5 mass % to 8 mass %, wherein said perfluorovinylether may be perfluoro(propyl vinyl ether (PPVE). Additionally, disclosed Example 1 has a perfluoro(propyl vinyl ether content within the scope of the claimed invention (Ab., [0029]-[0035], [0045], [0101], Ex. 1, ref. claims).
Aoyama further teaches that the copolymer (A) has not more than 50, or not more than 5 unstable terminal groups per 106 carbon atoms, or as unstable terminal groups not necessarily being present. Disclosed unstable end groups include -COF, -COOH, -COOCH3, -CONH2, and/or -CH2OH [0047]-[0058].
Aoyama is silent on a fluoropolymer having a melt flow rate, an amount of perfluoro(propyl vinyl ether) within the claimed ranges, and all 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.
The discussion on Imamura from paragraphs 5 and 6 above is incorporated herein by reference. Imamura teaches fluororesins that overlap in scope with those of Aoyama, having a number of functional groups, per 106 main-chain carbon, at preferably 6 or less and particularly preferably at 0, for providing superior high-frequency electrical properties, wherein the number of functional groups may be the total number of -CF═CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2, and CH2OH.
Given the teaching in Imamura on advantages of a fluororesin having groups within the claimed upper limit, and the teaching on Aoyama on a fluoropolymers having an overlapping MFR and a perfluoro(propyl vinyl ether content, 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 claimed units, and having claimed MFR and a the functional groups in an amount as prescribed by Imamura so as to provide for a superior high-frequency electrical properties, absent evidence to the contrary.
Regarding claims 3, 4 and 6, Aoyama teaches the use of copolymer (A) in molding/shaped articles, e.g., piping materials, and shaped articles formed by extrusion, injection molding and transfer molding (Ab., [0065]-[0068]).
Regarding claim 5, although Aoyama is silent on a coated electric wire, given the teaching in Aoyama and Imamura on fluororesins of overlapping scope, the teaching in Aoyama on suitability of copolymer (A) in ozone-resistant molding materials, and the teaching in Imamura suitability of fluororesins for coated electric wires and having superior high-frequency electrical properties, it would have been obvious to a skilled artisan to utilize the fluororesins of the combination to provide for coated electric wires having ozone-resistance and superior high-frequency electrical properties.
Response to Arguments
In view of the filing of a disclaimer (dt. 7/1/26), 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 Imamura and Aoyama disclosures are very board compared to claim 1, and pointing to the advantages of the claimed fluorine-containing copolymer disclosure in the instant specification, notes that the comparative Examples of the present application are closer in scope to claim 1 than the applied art, and that Examples 1-3 of the present application show unexpectedly superior results.
In response, Examiner maintains the applied primary documents to Imamura and Aoyama each 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 teaches 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, absent evidence of criticality for the claimed ranges.
Specifically, the general disclosure to Imamura teaches fluororesins based on tetrafluoroethylene (TFE) and perfluoro (alkyl vinyl ether) (PAVE, 1.0 to 10% by mass), with perfluoro(propyl vinyl ether) (PPVE) being a preferred species of PAVE, having a melt flow rate (MFR), preferably, of from 0.1-40. Aoyama teaches a copolymer having a melt flow rate (MFR) of 0.1-50 g/10 min, said copolymer comprising units of tetrafluoroethylene (TFE), and perfluorovinylether (PVFE) at not less than 3.5 mass % to 8 mass %, wherein perfluorovinylether may be perfluoro(propyl vinyl ether (PPVE). Disclosed Example 1 therein has a perfluoro(propyl vinyl ether) content within the scope of the claimed invention.
Alluding to the Declaration, Applicant notes that in Examples 1 to 5, Imamura teaches a TFE/PPVE copolymer having a PPVE content of 5.5% by mass and a MFR of 26.0 g/10 min, which fall outside the presently claimed range, and that Comparative Example 1 shows that a copolymer having an excessively high PPVE content cannot provide formed articles that have sufficient water vapor low permeability, excellent carbon dioxide low permeability and high-temperature rigidity. Referring to Example 2 in Aoyama, Applicant notes the a relatively high PPVE content of 5.5 % by mass cannot provide formed articles having stated advantages. Applicant asserts that the neither Imamura nor Aoyama disclose the claimed MFR that is shown to be critical in the present invention, and concludes that unexpectedly superior results provided by the claimed copolymer would rebut the alleged prima facie case of obviousness.
In response, as an initial matter, although the cited references fail to teach all the claimed elements in a single embodiment, 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.
Additionally, referring to the data in the instant disclosure, it is noted that inventive Examples 1-3 demonstrate superior sheet and pipe formability, in addition to one or more superior properties listed in Table 4, compared to comparative Examples 1-6. However, the data on record in support of the superior performance is limited to copolymers having monomer units TFE and PPVE (3.3-4.4 mass%), with a MFR of 0.7-1.3 g/10 min and a total number of claimed groups at <6 per 106 main chain carbon atoms. It is not clear why this limited data would be considered reasonably representative of claim 1, which is of a much broader scope, i.e., 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