Prosecution Insights
Last updated: April 19, 2026
Application No. 18/450,567

FLUORINE-CONTAINING COPOLYMER

Non-Final OA §103§112§DP
Filed
Aug 16, 2023
Examiner
REDDY, KARUNA P
Art Unit
1764
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Daikin Industries Ltd.
OA Round
1 (Non-Final)
42%
Grant Probability
Moderate
1-2
OA Rounds
3y 8m
To Grant
51%
With Interview

Examiner Intelligence

Grants 42% of resolved cases
42%
Career Allow Rate
350 granted / 829 resolved
-22.8% vs TC avg
Moderate +9% lift
Without
With
+8.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 8m
Avg Prosecution
62 currently pending
Career history
891
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
54.1%
+14.1% vs TC avg
§102
12.0%
-28.0% vs TC avg
§112
20.3%
-19.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 829 resolved cases

Office Action

§103 §112 §DP
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. Claims filed 8/16/2023 are made of record. Claims 1-9 are currently pending in the application. 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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-8 of copending Application No. 18/452,878 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to fluorine-containing copolymer comprising tetrafluoroethylene unit s , hexafluoropropylene unit s and perfluoro(propyl vinyl ether) unit s in overlapping amounts and the fluorine-containing co polymers have MFR at 372 0 C in overlapping ranges. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim s 1 and 3- 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 and 3 -8 of copending Application No. 18/452,892 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to fluorine-containing copolymer comprising tetrafluoroethylene units, hexafluoropropylene units (HFP) and perfluoro(propyl vinyl ether) units in overlapping amounts and fluoropolymer copolymer have MFR at 372 0 C in overlapping ranges . Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim s 1, 3, 5-6 and 8-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 3, 5, and 8-9 of copending Application No. 18/452,868 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to fluorine-containing copolymer comprising tetrafluoroethylene units, hexafluoropropylene units (HFP), and perfluoro(propyl vinyl ether) units in overlapping amounts. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05 . Copending claims differ with respect to the MFR at 372 0 C. However, i t is the examiner’s position that MFR at 372 0 C of l ower than 4.5 g/10 min in copending claims and that in present claims i.e., 4.5 g/10 min are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner , 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where, despite a slight difference in the ranges, court held that such a difference did not “render the claims patentable,” or, alternatively, that “a prima facie case of obviousness exists where the claimed range and prior art range do not overlap, but are close enough so that one skilled in the art would have expected them to have the same properties . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim s 1-3 and 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-3 and 5 -8 of copending Application No. 18/451,927 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to fluorine-containing copolymer comprising tetrafluoroethylene units, hexafluoropropylene units (HFP) and perfluoro(propyl vinyl ether) units in overlapping amounts and fluor ine-containing co polymer s hav e MFR at 372 0 C in overlapping ranges. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim s 1-3 and 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-3 and 5-8 of copending Application No. 18/451,915 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to fluorine-containing copolymer comprising tetrafluoroethylene units, hexafluoropropylene units (HFP) and perfluoro(propyl vinyl ether) units in overlapping amounts and fluorine-containing copolymers have MFR at 372 0 C in overlapping ranges. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim s 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-6 and 9-10 of copending Application No. 18/451,213 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to fluorine-containing copolymer comprising tetrafluoroethylene units, hexafluoropropylene units (HFP) and perfluoro(propyl vinyl ether) units in overlapping amounts and fluorine-containing copolymers have MFR at 372 0 C in overlapping ranges. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim s 1 and 3-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 3-6 and 9-10 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 both are drawn to fluorine-containing copolymer comprising tetrafluoroethylene units, hexafluoropropylene units (HFP) and perfluoro(propyl vinyl ether) units in overlapping amounts and fluorine-containing copolymers have MFR at 372 0 C in overlapping ranges. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05 . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b ) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the appl icant regards as his invention. Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 recites the limitation "the monomer units" in lines 6 and 8. There is insufficient antecedent basis for this limitation in the claim. Claims 2-9 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim 1. 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. Claim s 1- 4 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al ( EP 1 260 526 A1). Regarding claims 1 and 4, Hiraga et al disclose in example 1, a copolymer comprising tetrafluoroethylene (i.e., TFE and reads on tetrafluoroethylene unit in present claim 1) and hexafluoropropylene (i.e., HFP and reads on the hexafluoropropylene unit in present claim 1) having an MFR of 5 (paragraph 0030) which is measured a t 372 0 C in units of g/10 min (paragraph 0028) reads on the MFR in present claims 1 and 4. HIraga fails to disclose as in present claims a copolymer comprising perfluoro (propyl vinyl ether) and its amount, and amount of HFP. However, Hira g a et al in the general disclosure teach that fluorine-containing polymer comprises 5 to 25% by weight of hexafluoropropylene (i.e., overlaps with the amount of HFP in present claim 1) and 0 to 20% by weight of perfluoroalkyl vinyl ether (paragraph 0011) which overlaps with the amount of perfluoro (propyl vinyl ether) in present claim 1. Examples of perfluoroalkyl vinyl ether preferably include perfluoropropyl vinyl ether (paragraph 0015) which reads on perfluoropropyl vinyl ether in present claim 1. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in general disclosure of Hira g a et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to have selected the overlapping range, of 6.0 to 7.6% by mass of HFP and 1.5 to 2.4% by mass of perfluoro ( propyl vinyl ether ) , to prepare the fluorine-containing polymer , absent evidence to the contrary. Regarding claim 2, Hira g a et al teach that fluorine-containing polymer comprises 5 to 25% by weight of hexafluoropropylene (paragraph 0011) which overlaps with the amount of HFP in present claim 2. Regarding claim 3, Hira g a et al teach that fluorine-containing polymer comprises 0 to 20% by weight of perfluoroalkyl vinyl ether (paragraph 0011) which overlaps with the amount of perfluoro (propyl vinyl ether) in present claim 3. Regarding claims 8 and 9, Hira g a et al teach an electric wire coating with a fluorine-containing polymer (abstract) which reads on coated electric wire in present claim 8 and formed article is an electric wire coating in present claim 9. Claim s 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al (WO 2019/187725 A1) . It is noted that WO 2019/187725 A1 (WO) is being utilized for date purposes. However, since WO is not in English, US equivalent for WO, namely, Imamura et al (US 2021/0024769 A1) is referred to in the body of the rejection below. All column and line citations are to the US equivalent. Regarding claim 1, Imamura et al disclose a fluororesin which is preferably a TFE/HFP/PAVE copolymer (paragraph 0038) i.e., a copolymer comprising TFE (i.e., reads on tetrafluoroethylene in present claim 1), HFP (i.e., reads on hexafluoropropylene in present claim1), and PAVE (i.e., perfluoroalkyl vinyl ether). Among the PAVE is preferably PPVE (i.e., reads on perfluoro(propyl vinyl ether in present claim 1) . Imamura et al fails to disclose the presently claimed fluorine-containing copolymer; and melt flow rate of the fluorine-containing copolymer. However, Imamura et al in the general disclosure teach that when copolymer contains TFE unit, HFP unit and PAVE unit, the mass ratio of TFE/HFP/PAVE is preferably 75 to 98/1.0 to 15 (i.e., overlaps with the amount of hexafluoropropylene in present claim 1) /1.0 to 10 % by mass (paragraph 0051) which overlaps with the amount of PPVE in perfluoro(propyl vinyl ether in present claim 1. The melt flow rate (MFR) at 372 0 C is 0.5 g/10 min or more and 40 g/10 min or less (paragraph 0061) which overlaps with the melt flow rate in present claim 1. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in general disclosure of Imamura et al and case law, it would have been obvious to one skilled in art prior to the filing of present application, to prepare a fluorine-containing copolymer comprising TFE, HFP and PPVE in overlapping amounts and exhibiting an MFR in overlapping ranges, absent evidence to the contrary. Regarding claim 2, Imamura et al teach that copolymer contains TFE unit, HFP unit and PAVE unit, the mass ratio of TFE/HFP/PAVE is preferably 75 to 98/1.0 to 15 (i.e., overlaps with the amount of hexafluoropropylene in present claim 2) /1.0 to 10 % by mass (paragraph 0051). Regarding claim 3, Imamura et al teach that copolymer contains TFE unit, HFP unit and PAVE unit, the mass ratio of TFE/HFP/PAVE is preferably 75 to 98/1.0 to 15/1.0 to 10 % by mass (paragraph 0051) which overlaps with the amount of PPVE in perfluoro(propyl vinyl ether in present claim 3. Regarding claim 4, Imamura et al teach that melt flow rate (MFR) at 372 0 C is 0.5 g/10 min or more and 40 g/10 min or less (paragraph 0061) which overlaps with the melt flow rate in present claim 4. Regarding claim s 5 and 6 , Imamura et al teach that number of functional groups per 10 6 main carbon chain atoms is preferably 6 or less (paragraph 0021). The number of functional groups may be the total number of -CF=CF 2 , -CH 2 F , -COOH, -COOCH 3 and -CH 2 OH (paragraph 0030) which reads on the number of carbonyl group-containing terminal groups, -CF=CF 2 , -CH 2 OH in present claim 5; and number of CF 2 H in present claim 6. Regarding claim 7, Imamura et al teach that fluororesin may be molded into a desired shape (paragraph 0071) by methods such as injection molding (paragraph 0072). Regarding claims 8 and 9 , Imamura et al teach a coated electric wire including a solid insulating coating layer made of the fluororesin material (abstract). E xamples of shape of the fluororesin materia l include film and tube (paragraph 0073). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT KARUNA P REDDY whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-6566 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 8:30 AM to 5:00 PM 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, FILLIN "SPE Name?" \* MERGEFORMAT Arrie (Lanee) Reuther can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-7026 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KARUNA P REDDY/ Primary Examiner, Art Unit 1764
Read full office action

Prosecution Timeline

Aug 16, 2023
Application Filed
Mar 03, 2026
Non-Final Rejection — §103, §112, §DP (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
42%
Grant Probability
51%
With Interview (+8.8%)
3y 8m
Median Time to Grant
Low
PTA Risk
Based on 829 resolved cases by this examiner. Grant probability derived from career allow rate.

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