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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “the whole of the monomer units” in line 5 of Claim 1. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim will be interpreted as “the copolymer’s monomer units”.
Claim 1 recites the limitation “the total number of… and -CH2OH of 50 or less per 106 main-chain carbon atoms” in line 7 of Claim 1. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim will be interpreted as “a total number of....and CH2OH functional groups of 50 or less per 10^6 main chain-carbon atoms in the copolymer”.
Claims 2-5 are rejected as being dependent on a rejected claim.
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) 1-5 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].
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4 of copending Application No. 18/895,515. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the co-pending application set forth substantially the same copolymer comprising a tetrafluoroethylene unit and substantially the same perfluoro(propyl vinyl ether) unit range(5.6-6.3% by mass versus the instantly claimed 4.8 to 6.2% by mass) which has substantially the same melt flow rate (17.1 to 23.0 g/10 min versus the instantly claimed 17.0 to 23.0 g/10 min), and less than 50 identical functional groups or less per 106 main chain carbon atoms, as well as an injection molded article comprising said copolymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached on (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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