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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 7/1/2026. In particular, new claims 8-9, not previously presented and therefore not previously considered, are added.
It is noted that the newly introduced limitations were not present at the time of the preceding action. For this reason, it is proper to make the present action FINAL.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chapman et al. (US 2017/0025204).
Chapman et al. teach a copolymer comprising TFE/HFP/PAVE, wherein TFE is tetrafluoroethylene, HFP is hexafluoropropylene, and PAVE is perfluoroalkylvinyl ether which is preferably PEVE (perfluoro (ethyl vinyl ether)). See ¶39-40. In the TFE/HFP/PAVE copolymer (wherein PAVE is perfluoroalkylvinyl ether which is preferably PEVE (perfluoro (ethyl vinyl ether))), the HFP content is about 9 to 17wt%, the PAVE (which is preferably PEVE) is about 0.2 to 3wt%, the TFP is the remainer. The copolymer has a melt flow rate, measured at 372ºC of at least 20 g/10 min and preferably less than 36 g/10 min (see ¶38 and ¶40). The copolymers of Chapman have no greater than 10 per 106 carbon atoms of thermally unstable end groups, including CH2OH, and -CF2H. Chapman et al. also teach replacement of almost all of the thermally unstable end groups by fluorination of the perfluoropolymer (¶52). This means that the thermally unstable end groups, which are no greater than 10 per 106 carbon atoms, would also necessarily include -CF=CF2. This falls within the range of instant claim 1 and the range of newly presented claim 9, which recites a total number of -CF2H, carbonyl group-containing terminal groups, -CF=CF2 and -CH2OH of 90 or less per 106 main-chain carbon atoms (claim 1) or a total number of -CF2H, carbonyl group-containing terminal groups, -CF=CF2 and -CH2OH of 40 or less per 106 main-chain carbon atoms (claim 9).
The amount of perfluoro (ethyl vinyl ether) and hexafluoropropene of the TFE/HFP/PAVE copolymers of Chapman et al. overlaps the amounts recited in instant claims 2-3. The melt flow rate of the copolymers of Chapman overlaps the melt flow rate recited in instant claims 1 and 4, and newly presented claim 8. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings Chapman, to use amounts of hexafluoropropylene and perfluoro(ethyl vinyl ether) which meet the instant claim limitations of instant claims 1-3, to produce a copolymer having a melt flow rate which meets instant claims 1, 4, and 8 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
The copolymer of Chapman described above is used to produce coating layers for electrical cables (wires), which are formed articles. Chapman et al. also describes tubes which form insulation for conductor (electrical) wires. See ¶51-53. This meets instant claims 6-7. The copolymer is used to provide an insulation layer (i.e. coating; see ¶30) for electronic wires (¶26).
Instant claim 5 recites a product-by-process by use of the language “injection-molded” article. Case law holds that:
Even 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The copolymers of Chapman described above are used to produce a coating for electric wires (see ¶26), which are identical to the articles of instant claims 6-7. Evidence is therefore provided that the articles formed in Chapman, which comprise an identical copolymer as recited in instant claims 1-4, used to produce the same article recited in instant claims 6-7, is the same as the articles of the instant claims, including the article of instant claim 5, regardless of the method by which the article is produced. The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary.
Response to Arguments
Applicant's arguments filed 7/1/2026 have been fully considered but they are not persuasive.
Applicant argues, on page 5, third full paragraph of the Remarks filed on 7/1/2026, that:
“…the copolymer of claim 1 is excellent in extrusion formability, which can give a foamed article which is excellent in metal mold followability and can also give a formed article which is excellent in 65ºC abrasion resistance, ozone resistance, solvent crack resistance, the air low permeability, the creep resistance, and 140ºC tensile creep resistance, and hardly makes fluorine ions to dissolve out in chemical solutions. See e.g., paragraph [0005] of the specification, the Declaration, and Examples 1-3 of the present application.”
It is noted that none of the features cited by Applicant are recited in the instant claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Chapman is broader than the instantly claimed invention and does not disclose an example which falls within the scope of the instantly claimed invention.
This is not persuasive.
The claims are rejected under 35 U.S.C. 103 as obvious over Chapman et al. (US 2017/0025204). If Chapman disclosed an Example falling with the scope of the claimed invention, the rejection would be anticipatory under 35 U.S.C. 102(a)(1).
Furthermore, the examples of Chapman which fall within the scope of the instantly claimed invention render the instantly claimed invention obvious for the reasons set forth in the rejection above, particularly, “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Applicant argues that the Declaration shows “inferior results” of the Comparative examples.
This is not persuasive. Inferior results do not amount to unexpected results. It appears the Declaration of 7/1/2026 and the Remarks of 7/1/2026 are attempting to show that properties of the instantly claimed invention are not present in the prior art. However, those properties are not present in the instant claims, and thus is not necessary that the prior art disclose those properties for the purpose of a rejection under 35 U.S.C. 103. As stated above, Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
If Applicants are attempting to argue unexpected results, neither the Declaration nor the data of the instant specification provide persuasive evidence of unexpected results.
First, inferior results, does not amount to unexpected results. It is a requirement that data showing unexpected results show a result that is unexpected, not inferior. What trend would be expected by those of ordinary skill in the art, and how does the instantly claimed invention deviate from that trend? Neither the Declaration nor the data of the instant specification answer this question.
As stated in MPEP 716.02(a), evidence must show unexpected results. As stated in MPEP 716.02(b), the burden is on the Applicants to demonstrate:
"that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP § 716.02(c).”
Neither the data nor the Declaration explain how the differences in results are in fact unexpected and unobvious. Again, inferior results do not amount to unexpected results, and mere conclusions of superior properties are not evidence that said superior properties are unexpected.
Furthermore, as stated in MPEP 716.02(d):
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
MPEP 716.02(d), II. further states:
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
The data cited to by Applicants is not commensurate in scope with the claimed invention and does not compare a sufficient number of tests inside and outside the claimed range, which is necessarily to show unexpected results and criticality.
The range of HFP in the instant claims is 9.5 to 11.6wt%. The examples only show the results of 10.1, 10.9, and 11.5wt% HFP. What occurs at the claimed value of 9.5wt%? Will the allegedly same “superior” results be achieved? This is especially true given that the comparative examples contain amounts which fall within the scope of the range, but do not achieve the alleged superior results. Likewise, the claimed amount of PEVE is from 1.2 to 2.9wt%. What occurs at 2.9wt%, which falls within the scope of the instant claims? What occurs at 3wt%, outside the scope of the claims? There is nothing to suggest that an example at 2.9wt% will provide the allegedly improved properties, while an example at 3.0 or 3.5wt%, outside the claimed range, will not provide the same properties. The range cannot be said to be critical, which is required to show unexpected results, if the entire range is not shown in the data.
Likewise, the range of MFR is from 19.0 to 27.0. What happens at 19.0 g, which falls within the claimed range? Why would an MFR of 19.0 g/10 min provide the same result as 20 g/10 min? This is especially true given Comparative Example 6. What happens at 22 g/10 min? There is no ascertainable trend from the data which falls within the instantly claimed range, let alone one which deviates from what would be expected by one of ordinary skill in the art. Calling a range critical, is not evidence that the range is actually critical. Any evidence that a range is critical must show embodiments over the entire range and not merely a few values which fall within said range.
The data in Table 4 provides evidence against the criticality of the instantly claimed ranges. Comparative Example 6 has an identical creep resistance at Inventive Example 1 and an identical amount of fluorine ions as Inventive Examples 2 and 3. Comparative Example 6 has a better amount of fluorine ions that Inventive Example 1. Comparative Example 6 achieves “good” for both ozone exposure and chemical immersion. It appears a low air permeation coefficient is desired, based on ¶38 of the instant specification. Comparative Example 6 achieves a lower air permeation coefficient than any of Inventive Examples 1, 2 and 3, as does Comparative Example 1, 2, 4, and 7. Comparative Example 7 has an 85ºC load deflection which is identical to that of Inventive Examples 1, 2, and 3.
In Summary, Applicant assert that improvements in properties are achieved with Examples falling with the scope of the instant claims. The Declaration merely describes the data shown in the instant specification. The data shown in the instant specification demonstrates that the best of certain properties are actually achieved with embodiments falling outside the scope of the instantly claimed range. The best (which appears to be the highest value) of 65ºC abrasion loss, is in Comparative Examples 1, 2, 4. Comparative Example 5 has an identical abrasion loss as Inventive Example 2. Thus, “superior” abrasion loss is not, in fact, achieved with the instantly claimed invention. Comparative Examples 3, 5, 6 and 7 all achieve “good” ozone exposure and “good” chemical immersion, so improvements in these are also not a result of using values only within the instant claims. The lowest air permeation is achieved in Comparative Examples 1, 2, 4, and 6-7, all of which achieve lower air permeation than the Inventive Examples 1, 2, and 3, so improvements are not achieved by using values within the scope of the instant claims, as the data clearly shows improvements in air permeation with examples falling outside the claimed invention. If a high load deflection is desirable, the best results are achieved in Comparative Examples 3 and 5, while Comparative Example 7 achieves the same results as Inventive Examples 1 and 3. It appears low tensile creep strain is desired, as evidenced by ¶157 of the instant specification. The lowest tensile creep strain, is at Comparative Example 4, meaning the superior tensile creep strain occurs using embodiments outside the scope of the instantly claimed invention. Comparative Examples 1, 2, and 7 also achieve tensile creep strain which is “superior” to the Inventive Examples 1, 2, and 3. Comparative Example 6 has a better tensile creep strain that Inventive Example 3. A low extrusion pressure appears to be desired based on paragraph 156 of the instant specification. The lowest extrusion pressure is Comparative Example 2. Comparative Example 4 has an identical Extrusion pressure as Inventive Example 1 and better than both Inventive Example 2 and Inventive Example 3. The amount of fluorine atoms is the same for Comparative Examples 1, 2, and 6 as it is for Inventive Examples 2-3. Inventive Example 1 has an inferior amount of fluorine items compared to every Comparative Example except comparative example 7. What the data shows, is that different properties are achieved by changing the HFP and PEVE amounts, or by changing PEVE to PPVE. Different results do not amount to unexpected results.
Furthermore, a large number of improvements (see above) are achieved outside the scope of the instant claims, which is evidence against criticality and unexpected results.
With regards to the footnote on page 6, the case law cited by Applicant states that Applicant need not compare the instant invention with subject matter that does not exist in the prior art. That case law is not relevant to the rejection of the instant claims over Chapman. Chapman does, in fact, teach a numerical range of an amount of HFP which overlaps the instant claims, a numerical amount of PEVE which overlaps the instant claims, and a MFR which overlaps the instant claims, present in a copolymer which meets the requirements of the instant claims. Thus, the instantly claimed invention is disclosed by Chapman. It is not a requirement that Chapman provide an example which meets the instant claims for the purposes of applying the reference under 35 U.S.C. 103. If Chapman contained an example which met the instant claims, the rejection would be anticipatory. However, the rejection is under 35 U.S.C. 103 as obvious over Chapman for the reasons articulated in the rejection above.
The data argued by Applicants in the Remarks and Declaration filed on 7/1/2026 does not provide evidence of any unexpected results over the instantly claimed invention. In fact, the data provides evidence against criticality and unexpected results. Thus, the claims are still properly rejected as obvious over Chapman for the reasons discussed in the rejection above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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