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 .
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 1-3, and 5-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/452,015 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the amounts of hexafluoropropylene, perfluoro(alkyl vinyl ether), and MFR overlap the amounts of the instant claims. Further it is noted that the features of instant claim 1 regarding the amounts of -CF=F2, -CF2H, -COF, COOH, -COOCH3, CONH2 and -CH2OH groups are found in an overlapping range in copending claim 5.
It would have been obvious to one of ordinary skill in the art to choose any amount in the disclosed range including those in the claimed range and thereby arrive at the claimed invention.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 6-7, it would appear that “extrusion formed” and “transfer molded” are merely product by process limitations and although the copending claims do not disclose the processes as claimed, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed processes and given that the copending claims meets the requirements of the instant claims, the copending claims clearly meet the requirements of the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al. (EP 1260526 A1) in view of Isaka et al. (US 2017/0008986 A1).
Regarding claims 1-9, Hiraga discloses a fluorine containing polymer for coating an electric wire or cable, wherein the fluorine containing polymer comprises tetrafluoroethylene, hexafluoropropylene and perfluoroalkyl vinyl ether, having a melt flow rate at 372°C in a range of 0.1 to 100, wherein the polymer may comprise 5 to 25% by weight of hexafluoropropylene and 0 to 20% by weight of perfluoroalkyl vinyl ether, and wherein the perfluoroalkyl vinyl ether may be a perfluoropropyl vinyl ether (i.e. a fluorine -containing copolymer, comprising tetrafluoroethylene unit, hexafluoropropylene unit and perfluoro(propyl vinyl ether) unit, wherein the copolymer has a content of hexafluoropropylene unit overlapping 10.4% to 12.0% or 10.8% to 11.5% by mass with respect to the whole of the monomer units, a content of perfluoro(propyl vinyl ether) unit overlapping 1.3 to 2.9% or 1.5 to 2.4% by mass with respect to the whole of the monomer units, and a melt flow rate at 372°C overlapping 0.7 to 5.0 g/10min or 1.0 to 4.0 g/10min; a coated electric wire comprising a coating layer comprising the fluorine-containing copolymer; a formed article comprising the fluorine-containing copolymer, wherein the formed article is an electric wire)(abstract, [0011]-[0015], [0023] claims 1-6).
It would have been obvious to one of ordinary skill in the art to choose any amount in the disclosed range including those in the claimed range and thereby arrive at the claimed invention.
Hiraga discloses that the number of unstable end groups such as -CF=CF2, and -COF should be at most 20 per 106 carbon atoms of the polymer (i.e. 70 or less per 106 main-chain carbon atoms)(Hiraga [0022]). Hiraga does not recite a limitation on -CF2H, -COOH, -COOCH3, -CONH2, or CH2OH.
Isaka discloses a tetrafluoroethylene/hexafluoropropylene copolymer and that -CF2H and unstable end groups such as -COOH, -COOCH3, -CONH2, or CH2OH should be 120 or less per 106 main-chain carbon atoms to prevent lump formation (i.e. overlapping 70 or less per 106 main-chain carbon atoms)([0057]-[0061]).
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art to limit the -CF2H and -COOH, -COOCH3, -CONH2, or CH2OH groups as taught by Isaka in order to prevent lump formation and would thereby arrive at the claimed amount of the -CF2H groups and -COOH, -COOCH3, -CONH2, or CH2OH groups.
Regarding claims 6-7, Hiraga discloses that the coating may be for an electric wire (i.e. an article)(abstract).
Although Hiraga does not disclose injection molded or extrusion formed or transfer molded as claimed, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed injection molded or extrusion formed or transfer molded and given that Hiraga meets the requirements of the claimed article, Hiraga clearly meets the requirements of the present claims.
Regarding claims 8-9, Hiraga discloses that the coating may be for an electric wire (abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C YAGER whose telephone number is (571)270-3880. The examiner can normally be reached 9-6 EST 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, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C YAGER/Primary Examiner, Art Unit 1782