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 1-6 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 1-6 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 and 2, 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 1-6 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).
Regarding claims 1 and 2, 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 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 discussion on Imamura from paragraphs 4 and 5 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 4, although Aoyama is silent on a coated electric wire, given the teaching in Aoyama and Imamura of fluororesins of overlapping scope, the teaching in Aoyama on suitability of copolymer (A) in ozone-resistant molding material, 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.
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/192020 (reference application, amendment dated 2/6/26). 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 and an amount of perfluoro(propyl vinyl ether) within claimed ranges, and the number of groups within the claimed upper limit, given the recitation of overlapping ranges for the melt flow rate and perfluoro(propyl vinyl ether content, and noting that the recitation of “50 or less” includes 0 as the lower limit, it would have been obvious to one of ordinary skill in the art to provide for a copolymer that obviates claims 1 and 2 of the present invention. 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 3-6, copending claims 3, 4, 6-8 obviate the claimed limitation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-10 of copending Application No. 18/449,898 (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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Additionally, according to copending 5, fluoro(alkyl vinyl ether) is perfluoro (propyl vinyl ether).
Although the copending claims are silent on a copolymer having a melt flow rate, an amount of perfluoro(propyl vinyl ether) and the number of functional groups within the upper limit, given the recitation of overlapping ranges for the melt flow rate and content of perfluoro(propyl vinyl ether), and noting that the recitation of “90 or less” includes 0 as the lower limit, it would have been obvious to one of ordinary skill in the art to provide for a copolymer that obviates claims 1 and 2 of the present invention. 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 3-6, copending claims 7-10 obviate the claimed limitation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-10 of copending Application No. 18/451213 (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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Additionally, according to copending 5, fluoro(alkyl vinyl ether) is perfluoro (propyl vinyl ether).
Although the copending claims are silent on a copolymer having a melt flow rate (MFR), perfluoro(propyl vinyl ether) units content, and a number of functional groups as claimed, given the recitation of overlapping ranges for the melt flow rate, a content of perfluoro(alkyl vinyl ether) and perfluoro(propyl vinyl ether) as a species thereof, and noting that the recitation of “90 or less” includes 0 as the lower limit, it would have been obvious to one of ordinary skill in the art to provide for a copolymer that obviates claims 1 and 2 of the present invention. 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 3-6, copending claims 7-10 obviate the claimed limitation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/451525 (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 MFR and the amount of perfluoro(propyl vinyl ether) units within the claimed ranges, given the recitation on overlapping ranges, it would have been obvious to one of ordinary skill in the art to provide for a copolymer that obviates claims 1 and 2 of the present invention. 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 3-6, copending claims 3-6 obviate the claimed limitation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-9 of copending Application No. 18/450762 (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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Additionally, according to copending 5, fluoro(alkyl vinyl ether) is perfluoro(propyl vinyl ether).
Although the copending claims are silent on a copolymer having claimed MFR and perfluoro(propyl vinyl ether) in the claimed range, and having claimed groups within the upper limit, given the recitation of overlapping ranges for the melt flow rate, on the content of perfluoro(alkyl vinyl ether) and perfluoro(propyl vinyl ether) as a species thereof, and noting that the recitation of “70 or less” includes 0 as the lower limit, it would have been obvious to one of ordinary skill in the art to provide for a copolymer that obviates claims 1 and 2 of the present invention. 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 3-6, copending claims 6-9 obviate the claimed limitation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-9 of copending Application No. 18/452868 (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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Additionally, copending claim 5 recites the total number of functional groups (as presently claimed) at 50 or less per 106 main-chain carbon atoms.
Although the copending claims are silent on a copolymer having a MFR, perfluoro(propyl vinyl ether) units in amounts as claimed, and having the number of groups within the claimed upper limit, given the recitation of overlapping ranges for the melt flow rate and the amount of perfluoro(propyl vinyl ether), and noting that the recitation of “50 or less” includes 0 as the lower limit, it would have been obvious to one of ordinary skill in the art to provide for a copolymer that obviates claims 1 and 2 of the present invention. 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 3-6, copending claims 6-9 obviate the claimed limitation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/893198 (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 and perfluoro(propyl vinyl ether) units in an amount as claimed, given the recitation on overlapping ranges for the same, it would have been obvious to one of ordinary skill in the art that the copending claim 1 obviates claims 1 and 2 of the present invention. 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 3-6, copending claims 3-6 obviate the claimed limitation.
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
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