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 .
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kono et al (US 2011/0203830) in view of Bacino (US 2012/0064273).
Regarding claims 1-2, Kono teaches a copolymer which comprises a tetrafluoroethylene unit ([0055]) and a perfluoro (propyl vinyl ether) unit ([0058]). The perfluoro (propyl vinyl ether) unit is present in the amount from 0 to 10 wt. % ([0062]). Kono teaches that the copolymer has a melt flow rate from 1 to 50 g/10 min ([0066]) and has fewer than 20 per 106 carbon atoms of thermally unstable terminal groups which are terminal groups other than -CF3 ([0079]).
However, Kono fails to teach that the melt flow rate is at a temperature of 273 C.
Bacino teaches that melt flow rate is usually tested at 372 C ([0088]) via a standard test method for melt flow rates ([0088]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the melt flow rate of Kono to have been tested at the temperature as taught by Bacino. One would have been motivated to do so in order to receive the expected benefit of using a temperature that is part of the standard protocol for measuring melt flow index (Bacino, [0088]).
Regarding claim 3, Kono teaches an injection molded article comprising the copolymer according to claim 1 ([0092]).
Regarding claim 4, Kono teaches a coated electric wire comprising a coating layer comprising the copolymer according to claim 1 ([0092]).
Regarding claim 5, Kono teaches a formed article comprising the copolymer according to claim 1 wherein the formed article is an electric wire coating ([0092]).
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/448,291 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the both recite a copolymer with the same tetrafluoroethylene unit and perfluoro (propyl vinyl ether) unit, overlapping amounts of the perfluoro(propyl vinyl ether) units, melt flow rater and total number of terminal groups.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 6 of copending Application No. 18/451,455 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the both recite a copolymer with the same tetrafluoroethylene unit and perfluoro (propyl vinyl ether) unit, overlapping amounts of the perfluoro(propyl vinyl ether) units, melt flow rater and total number of terminal groups.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 of copending Application No. 18/452,806 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the both recite a copolymer with the same tetrafluoroethylene unit and perfluoro (propyl vinyl ether) unit, overlapping amounts of the perfluoro(propyl vinyl ether) units, melt flow rater and total number of terminal groups.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/453,690 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the both recite a copolymer with the same tetrafluoroethylene unit and perfluoro (propyl vinyl ether) unit, overlapping amounts of the perfluoro(propyl vinyl ether) units, melt flow rater and total number of terminal groups.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 4-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 5-6 of copending Application No. 18/453,709 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the both recite a copolymer with the same tetrafluoroethylene unit and perfluoro (propyl vinyl ether) unit, overlapping amounts of the perfluoro(propyl vinyl ether) units, melt flow rater and total number of terminal groups.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/892,985 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the both recite a copolymer with the same tetrafluoroethylene unit and perfluoro (propyl vinyl ether) unit, overlapping amounts of the perfluoro(propyl vinyl ether) units, melt flow rater and total number of terminal groups.
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 DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764