DETAILED ACTION
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 1-7 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, 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.
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. 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 and 4, 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.
Conclusion
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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/K. BOYLE/Primary Examiner, Art Unit 1766