Prosecution Insights
Last updated: April 19, 2026
Application No. 18/451,524

FLUORINE-CONTAINING COPOLYMER

Non-Final OA §103§DP
Filed
Aug 17, 2023
Examiner
TESKIN, FRED M
Art Unit
1762
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Daikin Industries Ltd.
OA Round
1 (Non-Final)
90%
Grant Probability
Favorable
1-2
OA Rounds
2y 3m
To Grant
97%
With Interview

Examiner Intelligence

Grants 90% — above average
90%
Career Allow Rate
1176 granted / 1313 resolved
+24.6% vs TC avg
Moderate +8% lift
Without
With
+7.8%
Interview Lift
resolved cases with interview
Typical timeline
2y 3m
Avg Prosecution
34 currently pending
Career history
1347
Total Applications
across all art units

Statute-Specific Performance

§101
1.0%
-39.0% vs TC avg
§103
38.7%
-1.3% vs TC avg
§102
17.0%
-23.0% vs TC avg
§112
27.6%
-12.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1313 resolved cases

Office Action

§103 §DP
DETAILED ACTION Status of Application This action is responsive to continuing application filed 08/17/2023 as a continuation of PCT/JP2022/008463, filed 02/28/2022. Original claims 1-8 are currently pending and under examination herein. 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. However, 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 a 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. Information Disclosure Statement(s) The information disclosure statement (s) (IDS) filed on 12/05/2023, 01/31/2024, 03/14/2024, 01/16/2025, 04/17/2025, 08/28/2025 and 10/24/2025 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action. Foreign Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Rejections – Nonstatutory 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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 19/013,081 (reference application; published as US 2025/0145816 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 recites numerical ranges for content s of hexafluoropropylene and perfluoro( propyl vinyl ether), and for value of MFR , which respectively overlap the range s recited for the corresponding parameters in pending claim 1 . Further , it is noted that the features of pending claim 1 regarding the total number of -CF 2 H, carbonyl group-containing terminal groups, -CF=F 2 , and -CH 2 OH groups are recited in overlapping range s in copending claim s 5 -6 . It would have been obvious to one of ordinary skill in the art to choose any amount/value within the ranges of the copending claims including those falling within the overlapping portions of the ranges claimed herein and thereby arrive at the claimed invention. As set forth in MPEP 2144.05, in case s where the claimed range s "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 ); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- 8 of copending Application No. 1 8 / 452 ,1 26 (reference application; published as US 202 3 /0 391928 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 recites numerical ranges for contents of hexafluoropropylene and perfluoro( propyl vinyl ether), and for value of MFR, which respectively overlap the ranges recited for the corresponding parameters in pending claim 1. Further, copending claim 1 also recites the features of pending claim 1 regarding the total number of -CF 2 H, carbonyl group-containing terminal groups, -CF=F 2 , and -CH 2 OH groups in overlapping ranges with that pending claim. It would have been obvious to one of ordinary skill in the art to choose any amount/value within the ranges of the copending claims including those falling within the overlapping portions of the ranges claimed herein and thereby arrive at the claimed invention. As set forth in MPEP 2144.05, in cases 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 ); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1 and 4 -8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 - 8 of copending Application No. 1 8 / 45 1,9 2 1 (reference application; published as US 202 3 /0 399 435 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 recites numerical ranges for contents of hexafluoropropylene and perfluoro( propyl vinyl ether), and for value of MFR, which respectively abut the ranges recited for the corresponding parameters in pending claim 1. C opending claim 1 also recites the feature of pending claim 1 regarding the total number of carbonyl group-containing terminal groups, -CF=F 2 , and -CH 2 OH groups as a range that is subsumed by the range recited in pending claim 1. Further, it is noted that the feature of pending claim 1 regarding the total number of -CF 2 H is recited in an overlapping range in copending claim 5 . Given the close proximity in mutually recited ranges between the pending and copending claims, one skilled in the art would have reasonably expected the respective inventions to possess similar properties. See Titanium Metals v. Banner , 227 USPQ 773, 779 (Fed. Cir. 1985) ( prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties ). Accordingly, i t would have been obvious to one of ordinary skill in the art to choose any amount/value proximate the r anges of the copending claims, including those falling within the ranges claimed herein and thereby arrive at the claimed invention. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Common Ownership Notice 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. Claim Rejections – 35 U . S . C . 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. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness . Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al (EP 1260526 A1) (‘ Hiraga ’) in view of Isaka et al (US 2017/0008966 A1) (‘ Isaka ’). Regarding Claims 1-4, reference to Hiraga discloses a fluorine containing polymer for coating an electric wire or cable, wherein the fluorine containing polymer comprises tetrafluoroethylene, hexafluoropropylene and perfluoroalkyl vinyl ether, having a melt flow rate at 372°C in a range of 0.1 to 100, wherein the polymer may comprise 5 to 25% by weight of hexafluoropropylene and 0 to 20% by weight of perfluoroalkyl vinyl ether, and wherein the perfluoroalkyl vinyl ether may be a perfluoropropyl vinyl ether (i.e. a fluorine -containing copolymer, comprising tetrafluoroethylene unit, hexafluoropropylene unit and perfluoro(propyl vinyl ether unit ) , wherein : the copolymer has a content of hexafluoropropylene unit overlapping claimed range of 11.5 to 12.5% by mass with respect to the whole of the monomer units ; a content of perfluroro (propyl vinyl ether) unit overlapping claimed ranges of 0 to 0.5% by mass and 0 to 0.1% by mass with respect to the whole of the monomer units ; and a melt flow rate at 372 o C overlapping claimed ranges of 0.8 to 4.0 g/10 min and 1.0 to 3.2 g/10 min; and a coated electric wire comprising a coating layer comprising the fluorine-containing copolymer (wherein the formed article is an electric wire) (see [0011]-[0015], [0023] and claims 1-6) . Each of the disclosed ranges substantially overlaps the range recited in present claims 1-3 for the corresponding parameter , and it has consistently been held that even a slight overlap in ranges establishes a prima facie case of obviousness. See MPEP 2144.05. Thus, it would have been obvious to one of ordinary skill in the art to choose any amount /value within the disclosed range s including those falling with in the respective ranges claimed herein and thereby arrive at the claimed invention. Further with respect to total number of terminal groups, Hiraga discloses that the number of unstable end groups such as -CF=CF 2 and -COF should be at most 20 per 10⁶ carbon atoms of the polymer (i.e. , 5 0 or less per 10⁶ main-chain carbon atoms) ( Hiraga [0022]). Hiraga does not directly disclose a limitation on -CF 2 H, carbonyl group-containing terminal groups, or CH 2 OH. However, in the same technical field, Isaka discloses a tetrafluoroethylene/hexafluoropropylene copolymer and teaches that the sum of the numbers of -CF 2 H and unstable end groups such as -COOH, -COOCH 3 , -CONH₂, or CH 2 OH should be 120 or less per 10⁶ main-chain carbon atoms to prevent lump formation (i.e. , o verlapping claimed range of 5 0 or less per 10⁶ main-chain carbon atoms) ( see [ 0057]- [0061]) ; wherein the -COOH, -COOCH 3 and -CONH₂ end groups are specific species of “carbonyl group-containing terminal groups” according to the present invention ( cf ., Spec ., [0028]). Accordingly, at the time of effective filing, it would have been obvious to one of ordinary skill in the art to limit the total number of -CF 2 H and -COOH, -COOCH 3 , -CONH₂ groups (corresponding in aggregate to claimed “ carbonyl group-containing terminal groups ”) and - CH 2 OH groups as taught by Isaka in order to prevent lump formation and would thereby arrive at the claimed amount of the -CF 2 H groups , carbonyl group-containing terminal groups, and - CH 2 OH groups. Regarding Claims 5-6, while Hiraga does not disclose “extrusion formed” or “transfer molded” as claimed, it is noted that these features are product-by-process limitations of claims drawn to articles. It is well settled that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E] ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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 art product was made by a different process.” (MPEP 2113, quoting In re Thorpe , 227 USPQ 964, 966 (Fed. Cir. 1985)). Therefore, absent probative evidence of criticality regarding the presently claimed “ extrusion formed ” or “ transfer molded ” feature and given that Hiraga meets the requirements of the claimed article s , Hiraga clearly fulfills the requirements of said claims. Regarding Claim s 7-8, Hiraga discloses that the coating may be for an electric wire (i.e., an article) (Abs.). Conclusion Claims 1-8 are rejected. No claims are in condition for allowance at this time. Correspondence Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272 1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice . If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones , can be reached at (571) 27 0 -77 33 . The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form. /FRED M TESKIN/ Primary Examiner, Art Unit 1762 / FMTeskin / 03-29-26
Read full office action

Prosecution Timeline

Aug 17, 2023
Application Filed
Mar 29, 2026
Non-Final Rejection — §103, §DP (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
90%
Grant Probability
97%
With Interview (+7.8%)
2y 3m
Median Time to Grant
Low
PTA Risk
Based on 1313 resolved cases by this examiner. Grant probability derived from career allow rate.

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