DETAILED ACTION
This Office Action is in response to the Amendment filed on 7/6/2026.
Claim(s) 6 have been added.
Claim(s) 1-6, are now pending in the application.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US2009/0038821 to Sato et al. (as found on the IDS dated 1/10/2024) in view of WO2019208492 to Isaka et al. For the purposes of examination, citations for Isaka are taken from the English equivalent document, US20210246237.
Regarding Claim(s) 1 and 2, Sato teaches a tetrafluoroethylene copolymer [0022] comprising PAVE units [0022] such as perfluoro(propyl vinyl ether) [0034] in a preferred amount of 5.5-8 mass % relative to all monomer units [0036] and the said copolymer has a MFR at 372°C [0045] of 0.5 to 35 g/10 min [0044]. Sato further teaches the copolymer comprises less than 10 per 1x106 carbon atoms of unstable terminal groups [0039] of COF, COOH, COOCH3, CONH2, and CH2OH [0040].
Though the MFR prior art range (0.5-35 g/10 min) is not identical to the claimed range (17.0-23.0 g/10 min of claim 1 and 17.0-21.0 g/10 min of claim 2), it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Sato is silent regarding the total number of -CF=CF2 and -CF2H groups.
However, Isaka teaches a method for producing a purified fluoropolymer [title] that contains less than 50 fluoridable end groups such as -CF=CF2, -CF2H, -COF, -COOH, -COOCH3 relative to 106 main-chain carbon atoms [0099]. Sato and Isaka are analogous art as they are from the same field of endeavor, namely fluoropolymers comprising PAVE units and reduced unstable terminal groups.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use Isaka’s purifying method to have reduced fluoridable end groups including CF=CF2 and -CF2H in Sato’s copolymer, thereby arriving at the claimed invention.
The motivation to modify Sato with Isaka is that purification of fluoropolymers reduces the unreacted end groups, therefore making a more stable copolymer [Isaka, 0019].
Regarding Claim(s) 3-5, Sato teaches the copolymer of claim 1, wherein the resin mixture is injection molded into an article such as an electric wire covering [Sato, 0155].
Regarding Claim 6, Sato teaches the copolymer of claim 1, comprising PAVE units [0022] such as perfluoro(propyl vinyl ether) [0034] in a preferred amount of 5.5-8 mass % relative to all monomer units [0036].Though the prior art range is not identical to the claimed range (4.9-5.8 mass%), it does overlap. It has been held that, 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Terminal Disclaimer
The terminal disclaimer filed on 7/6/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US applications 18/895,515 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicants’ arguments filed 7/6/2026 have been fully considered but they are not persuasive.
Applicant states Sato is broad compared to claim 1 and Sato does not disclose regulating PPVE content, MFR, and number of functional groups in combination.
The office respectfully disagrees that the PPVE content and functional group content is too broad, as Sato teaches the instantly claimed components such as a preferred PPVE content of 5.5-8 mass% [0036] and less than 10 per 1x106 carbon atoms of unstable terminal groups [0039]. Although the MFR range of Sato is broader than the instantly claimed range, it does encompass the somewhat narrower claimed range. It has been held that a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003) (MPEP 2144.05). In the instant case, Sano teaches a MFR range of 0.5 to 35 g/10 min [0044] that encompasses the narrower claimed range of 17.0-23.0 g/10 min.
Applicant states Sato does not disclose an example that falls within the scope of claim 1. Additionally, Applicant submits a Declaration filed 7/6/2026 that discusses the results based on the comparison of Sato’s examples and the comparative examples of instant specification.
Applicant compares Sato Example 1 with instant specification Comparative Example 3 demonstrating that a PPVE unit content exceeding the claimed range is insufficient to achieve excellent transparency, abrasion resistance, and long-term ozone resistance.
Applicant compares Sato Example 2 with instant specification Comparative Example 2 and Comparative Example 4 stating Sato’s Example having an excessively high melt flow rate is not expected to provide the above-described effects.
Applicants use comparative example 5 to demonstrate that controlling the number of functional groups is critical to achieving the above-descried properties.
Regarding arguments (C)(a), (C)(b), (C)(c), disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123).
Furthermore, it is noted that Sato teaches the copolymer of the instant claims wherein all ingredients are within or overlap with the claimed ranges. With respect to the overlapping ranges, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to select the portions of the ranges which overlap with the instantly claimed ranges for the reasons detailed in the grounds of rejection of Claim 1 under 35 U.S.C. 103 above. Therefore, the desired properties of excellent transparency, abrasion resistance, and long-term ozone resistance would naturally flow from the copolymer taught by broader disclosure of Sato.
Applicant states the unexpectedly superior results / criticality provided by the claimed copolymer would rebut the alleged prima face case of obviousness based on Sato in view of Isaka.
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)). The examples of instant specification are not commensurate in scope with the instant claims. For example, the examples test a copolymer consisting of only TFE and PPVE, wherein instant claims are limited by any copolymer comprising any amount of TFE and any additional monomers as long as the copolymer still comprises 4.8-6.2 mass% PPVE. This does not provide sufficient evidence to conclude that any copolymer comprising any amount of TFE and 4.8-6.2 mass% PPVE along with any additional monomers will necessarily achieve the alleged unexpected results.
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). Instant specification has only two comparative examples with PPVE content outside of the claimed range (CEx1 with PPVE content of 4.4% by mass and CEx2 with PPVE content of 6.6% by mass) [Table 3]. Sato teaches a PPVE lower limit of 5% [0035] and therefore CEx1 is not representative of the closest prior art. Additionally applicant hasn’t provided a sufficient number of tests at the 6.2% PPVE upper limit such as inventive examples at 6.2% as well as tests just below and just outside this upper limit to confirm that 6.2% is the upper limit endpoint to establish criticality.
For these reasons, Applicant's arguments are not persuasive.
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 DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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