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 .
This Office action is in response to the amendment filed 7/6/2026. Claims 1-3 are amended; claim 5 is cancelled. Accordingly, claims 1-4 and 6-9 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claims 1-3 are objected to because of the following informalities:
Claim 1 recites “whole of all monomer units” (lines 4 and 5-6). The use of “whole” and “all” to refer to the monomer units of the copolymer is redundant. Applicant is advised to rephrase them as “all monomer units” or “all the monomer units” as appropriate.
Claim 2 recites “the whole of all monomer units” (line 3). The use of “whole” and “all” to refer to the monomer units of the copolymer is redundant. Applicant is advised to rephrase it as “all the monomer units”.
Claim 3 recites “the whole of all monomer units” (line 3). The use of “whole” and “all” to refer to the monomer units of the copolymer is redundant. Applicant is advised to rephrase it as “all the monomer units”
Appropriate correction and/or clarification are required.
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 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over (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 claims 1 and 6, 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). The number of functional groups per 106 main carbon chain atoms is preferably 6 or less (paragraph 0021). The number of functional groups may be the total number of -CF=CF2, -CH2F, -COOH, -COOCH3 and -CH2OH (paragraph 0030) which reads on the number of carbonyl group-containing terminal groups, -CF=CF2, -CH2OH in present claim 1; and number of CF2H in present claim 6.
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 3720C 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 3720C 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 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). Examples of shape of the fluororesin material include film and tube (paragraph 0073).
Response to Arguments
The obviousness-type double patenting rejections as set forth in paragraphs 7-13, of Office action mailed 3/5/2026, are withdrawn in view of the filing of a proper terminal disclaimer.
The rejections under 35 U.S.C. 103 as set forth in paragraphs 20-21, of Office action mailed 3/5/2026, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 12 below).
Applicant's arguments and Declaration under 37 CFR 1.132, filed 7/6/2026, have been fully considered but they are not persuasive. Specifically, general thrust of Applicant’s argument is that there is a showing of unexpected results with respect to abrasion resistance, high temperature rigidity, tensile creep resistance, crack resistance, low oxygen permeation forming thick pipes uniform in thickness (see comparative examples 1-5 and A) when the fluorine containing polymer includes HFP and PPVE in presently claimed amounts in combination with MFR at 3720C in a range of 4.5 to 9.5 g/10 min, and the total number of carbonyl group containing terminal groups, -CF-CF2 and CH2OH.
In response, it is the Office’s position that showing of unexpected results is not commensurate with scope of present claims. Specifically, the showing of unexpected results is with a fluorine-containing copolymer comprising HFP in the range of 6.2 to 7;2% by mass; PPVE in an amount of 1.7 to 2.2 mass%, MFR of 5.0 to 8.9 g/10 min; and terminal groups less than 33 * 106.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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