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.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Miyatani et al. (US 2004/0204536) in view of Fukuoka et al. (JP 2005-320497). Note: A machine translation is being used for JP 2005-320497.
Considering Claims 1-5: Miyatani et al. teaches a fluorine containing polymer comprising tetrafluoroethylene, 5 to 25 mass percent of hexafluoropropylene and 0.01 to 5, preferably 0.05 to 2% by mass of a perfluoro(alkyl vinyl ether) (¶0011-13; 0030), where the perfluoro alkyl vinyl ether is preferably perfluoro(propyl vinyl ether) (¶0028), and where the polymer has a melt flow rate of 1 to 30 g/10 minutes (¶0013). Miyatani et al. teaches an example having a melt flow rate of 7 g/10 minutes (Example 1).
Miyatani et al. teaches any overlapping amount of hexafluorpropylene with the claimed range. Miyatani et al. teaches that the amount of hexafluoropropylene controls the stress cracking resistance and heat resistance of the copolymer (¶0029). In the case where the claimed ranges "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). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the amount of hexafluoropropylene within the range of Miyatani et al. and the motivation to do so would have been, as Miyatani et al. suggests, to control the stress cracking resistance and heat resistance (¶0029).
Miyatani et al. is silent towards the functional group content of the polymer. However, Fukuoka et al. teaches a tetrafluoroethylene copolymer having a functional group content of unstable terminal groups of 10 to 100 per 106 main chain carbon atoms (Abstract). As the claimed structures would fall within the category of unstable terminal units, the disclosure of Fukuoka et al. covers the claimed property. Miyatani et al. and Fukuoka et al. are analogous art as they are concerned with the same field of endeavor, namely tetrafluoroethylene copolymers. It would have been obvious to a person of ordinary skill in the art to have controlled the number of functional groups in the polymer of Miyatani et al., as in Fukuoka et al., and the motivation to do so would have been, as Fukuoka et al. suggests, to provide excellent crack resistance and low dielectric loss tangent (pg. 2).
Considering Claims 6-8: Miyatani et al. teaches a molded article made from the copolymer (¶0054-55).
The terms injected molded, extrusion formed, and transfer molded are product by process limitations. "[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) (citations omitted). See MPEP § 2113.
Considering Claims 9 and 10: Miyatani et al. does not teach a coated electrical wire. However, Fukuoka et al. teaches using a tetrafluoroethylene copolymer as the coating layer in a coated wire (pg. 4). It would have been obvious to a person of ordinary skill in the art to have used the copolymer of Miyatani et al. in a coated wire, as in Fukuoka et al., and the motivation to do so would have been, as Fukuoka et al. suggests, they have excellent thermal stability and crack resistance (pg. 4).
Response to Arguments
Applicant’s arguments with respect to claims 1-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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