DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on July 13, 2026 has been fully considered. The addition of new claims 7-8 is acknowledged. In light of the amendment, the previous rejections cited below are maintained for the reasons set forth in “Response to Arguments” section below. Thus, the following action is properly made final.
Examiner-initiated interview
3. An Examiner-initiated interview with Michael G. Raucci was conducted on September 1, 2026 to discuss further possible amendments to instant claims to prepare the application for allowance. However, no response was received.
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.
4. Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al (US 2016/0319089) only, or alternatively in view of Namura (US 2002/0099143).
5. The rejection is adequately set forth on pages 2-6 of an Office action mailed on March 11, 2026 and is incorporated here by reference.
6. With respect to newly added claims 7-8
1) Imamura et al discloses a modified fluorine-containing copolymer obtained by irradiating a copolymer of tetrafluoroethylene (TFE) unit and perfluoroalkyl ether unit (PAVE), the modified copolymer having as low as 10 functional groups -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH per 106 carbon atoms (Abstract, [0030]-[0031]), wherein:
- the TFE/PAVE copolymer is having preferably more than 5%wt and preferably less than 7%mass of PAVE units ([0070]);
- MFR of preferably 0.5 g/10 min or more and less than 40 g/10 min ([0109]);
- PAVE is preferably perfluoro propyl vinyl ether (PPVE) ([0068]).
Based on the teachings of Imamura et al, it would have been obvious to a one of ordinary skill in the art to choose and use the TFE/PPVE copolymer having 5-7%mass of PPVE and MFR of 0.5 g/10 min, or 0.7 g/10 min, and subject said TFE/PPVE copolymer to irradiation to produce the final modified TFE/PPVE copolymer having as low as 10 functional groups of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH per 106 main-chain carbon atoms, as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
All ranges referring to the TFE/PAVE (TFE/PPVE) copolymer of Imamura et al are overlapping with the corresponding ranges of those as claimed in instant invention. 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).
2) Namura discloses TFE/PAVE copolymers, wherein PAVE is preferably PPVE ([0011]), comprising at least 4%wt of PAVE and MFR of about 0.5-3 g/10 min (Abstract, [0012]),
wherein Namura specifically exemplifies said copolymers having both content of PEVE of 6.6%wt and MFR of 1 g/10 min (Example 2, Table1); PEVE content of 5.1%wt and MFR of 1.2 g/10 min (Example 5 in Table 3) and PPVE content of 5.2%wt and MFR of 1.5 g/10 min (Example 7, Table 3).
It is noted that the content of PAVE units of 5.2%wt of Namura is very close to the content of that of 5.5%wt as claimed in instant claim 7, and the content of PAVE of 6.6%wt of Namura is very close to the content of that of 6.4%wt of instant claim 7. It is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
7. Claims 1-4, 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Aoyama et al (US 7,169,868) only, or alternatively in view of Namura (US 2002/0099143).
8. The rejection is adequately set forth on pages 6-10 of an Office action mailed on March 11, 2026 and is incorporated here by reference.
9. With respect to newly added claims 7-8,
Aoyama et al discloses a copolymer of tetrafluoroethylene and perfluoropropyl vinyl ether (PPVE) having:
1) 3.5-6%mass, preferably over 4%mass of PPVE (col. 6, lines 40-45);
2) MFR of 0.1-50 g/10 min, preferably 0.5 g/10 min (col. 6, lines 52-54);
3) not more than 5 of unstable terminal groups per 1x106 carbon atoms (col. 7, lines 35-47).
Based on the teachings of Aoyama et al, it would have been obvious to a one of ordinary skill in the art to choose and use the TFE/PPVE copolymer having 4-6%mass of PPVE, or 5.5-6%mass and MFR of 0.5 g/10 min, or 0.7 g/10 min, and subject said TFE/PPVE copolymer to fluoride treatment to produce the final modified TFE/PPVE copolymer having less than 5 functional groups of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH per 106 main-chain carbon atoms, as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
All ranges referring to the TFE/PAVE (TFE/PPVE) copolymer of Aoyama et al are overlapping with the corresponding ranges of those as claimed in instant invention. 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).
10. Namura discloses TFE/PAVE copolymers, wherein PAVE is preferably PPVE ([0011]), comprising at least 4%wt of PAVE and MFR of no greater than 4 g/10 min, or about 0.5-3 g/10 min (Abstract, [0012]),
wherein Namura specifically exemplifies said copolymers having both content of PEVE of 6.6%wt and MFR of 1 g/10 min (Example 2, Table1); PEVE content of 5.1%wt and MFR of 1.2 g/10 min (Example 5 in Table 3) and PPVE content of 5.2%wt and MFR of 1.5 g/10 min (Example 7, Table 3).
It is noted that the content of PAVE units of 5.2%wt of Namura is very close to the content of that of 5.5%wt as claimed in instant claim 7, and the content of PAVE of 6.6%wt of Namura is very close to the content of that of 6.4%wt of instant claim 7. It is the examiner’s position that the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Response to Arguments
11. Applicant's arguments and the Declaration under 37 CFR 1.132 filed on July 13, 2026 have been fully considered.
12. With respect to Applicant’s arguments regarding unexpected results of instant invention, also referring to the Declaration, it is noted that:
1) Instant claims are silent with respect to any properties of the claimed TFE/PPVE copolymer, specifically, “hardly deforming, capability of easily providing a thick sheet having a uniform thickness by extrusion, a low compression set, etc…” as argued by Applicant, or “haze, compression set, tensile strength, test of deformation, abrasion lowss” as shown in Table 4 of instant specification. It is not clear what properties and at what level are the goal of instant invention.
2) Regarding the Declaration under 37 CFR 1.132,
I) In said Declaration Applicants provided the same Inventive examples 1-3 and Comparative examples 1-5 and their properties as disclosed in instant specification.
II) However,
i) Though Comparative example 1, comprising 4.4%wt of PPVE, shows haze higher than those of inventive examples, all other properties including compression set, tensile strength, test of deformation, are having the same or very close values as for all inventive examples.
ii) Though Comparative examples 2 and 3 are cited as being “difficult to produce a thick sheet having uniform thickness”, said comparative examples 2-3 are having compression set, tensile strength, abrasion loss, creep resistance having the same or very close values as for inventive examples 1-3.
iii) Though Comparative example 5 shows increased extrusion pressure during forming, said comparative example 5 shows the same values of compression set, tensile strength, permeability, creep resistance as those of inventive examples.
iv) Comparative example 4 shows low haze value, which is even lower than that of inventive examples, has compression set, tensile strength, deformation test, abrasion loss having values about the same as those of inventive examples. Further, Comparative example 4 shows the number of functional groups of 58 per 106 carbon atoms, which is about 10 times more than that of the inventive examples, and therefore, is having increased amount of dissolved fluorine ions.
III) With respect to “Unexpected technical effect of the present invention”, it is noted that
MPEP 716.02(a) recites that “Evidence Must Show Unexpected Results”
"A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue." In re Corkill, 771 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985).
MPEP 716.02 (b) further states:
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP 716.02(c).
Thus, the Declaration does not provide a clear demonstration how the differences in the results/properties are unexpected and unobvious. Both inventive and comparative examples of instant specification and the Declaration show good or excellent properties, such as either or all of abrasion resistance, crack resistance, haze value, compression set, tensile strength.
IV) It is further noted that the scope of instant claims is broader than the evidence of unexpected results provided in the Declaration and the instant specification. Thus, Inventive examples 1-3 show TFE/PPVE copolymers having only specific combination of PPVE content and MFR. Instant claim 1 recites the content of PPVE being 4.9-7.0% by mass and MFR of 0.5-1.5 g/10 min, the number of functional groups being 20 or less per 106 main-chain carbons.
However, inventive examples 1-5 show a combination of the content of PPVE of 5.5-6.4%wt with MFR of 0.7-0.9 g/10 min and number of functional groups of less than 6 per 106 carbon atoms.
No inventive examples showing: the content of 4.9-5.5%mass PPVE with MFR of 1.5 or 0.5 g/10 min; the content of PPVE of 6.4-7.0 %mass and MFR of 0.5 g/10 min or 1.5 g/10 min were presented. Further, the claimed number of functional groups present is 20 or less per 106 main-chain carbon atoms. All inventive examples show the number of functional groups of less than 6 per 106 main-chain carbon atoms. No inventive examples showing the TFE/PPVE copolymers having the number of functional groups of 6-20 per 106 carbon atoms have been presented.
Therefore, the scope of instant claims is significantly broader than the evidence of unexpected results presented in the Declaration and instant specification.
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). See MPEP 716.02(d).
V) With respect to Applicant’s arguments regarding the teachings of Imamura et al (US 2016/0319089),
Imamura et al clearly teaches the TFE/PPVE copolymer having more than 5%wt and less than 7%wt of PPVE, MFR within the range of 0.5 g/10 min or more, including the value in the range of 0.5 g/10 min as well, and the content of functional groups of 10 or less per 106 carbon atoms and depending on the desired single property or combination of properties, it would have been obvious to a one of ordinary skill in the art to choose and use the copolymer having MFR in said range 0.5 g/10 min, including the range of as well, since it would have been obvious to choose material based on its suitability, depending on the specific desired properties of the copolymer. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Even if Imamura et al teaches adjusting the PAVE content, the MFR and the number of functional groups “for the purposes of enhancing the effects of irradiation treatment”, there is no evidence that the copolymer of Imamura et al would not have at least one of the properties as discussed by Applicant in the Declaration and the Arguments, especially since it is not clear what specific properties and at what level are the goal of instant invention.
VI) With respect to Applicant’s arguments regarding the teachings of Namura (US 2002/0099143),
i) Namura (US 2002/0099143) is a secondary reference which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
ii) With respect to Applicant’s arguments stated below:
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it is noted that, since instant claims are silent with respect to the properties of instant invention, it is not clear what are the specific “technical effects that are achieved by the present invention”, since as demonstrated by the examples of instant invention, depending on the amounts of PAVE, MFR and the number functional groups, even within the claimed ranges, the TFE/PPVE copolymer having various properties can be obtained.
VII) With respect to Applicant’s arguments regarding the teachings of Aoyama et al (US 7,169,868),
Referring to Applicant’s statement that:
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It is noted that the tensile strength, compression set, deformation test of the claimed TFE/PPVE copolymer as discussed in the Declaration are characteristics of the mechanical strength as well; extrusion pressure is a characteristic of moldability.
Conclusion
THIS ACTION IS MADE FINAL. 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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 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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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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