DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per response dated 6/25/26, claims 1-8 are currently pending in the application.
The terminal disclaimer filed on 6/26/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration dates of Appl. Nos. 18449927, 18450567, 18451213, 18451927, 18452849, 18452878 and 18452808 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al. (WO 2019/187725 A1, of record).
The rejections as set forth in paragraphs 4-9 of the office action dated 3/25/26 are incorporated herein reference.
Claims 1-5, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kitahara et al. (US 2010/0314154 A1), alone, or in view of Yokotani et al. (US 2019/0382544 A1) (references of record).
The rejections as set forth in paragraphs 11-16 of the office action dated 3/25/26 are incorporated herein reference.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Brothers et al. (US 2007/0292685 A1), in view of Imamura et al. (WO 2019/187725 A) (references of record).
The rejections as set forth in paragraphs 18-22 of the office action dated 3/25/26 are incorporated herein reference.
Response to Arguments
In view of the submission of a proper terminal disclaimer, the double patenting rejections of record are withdrawn. Additionally, Examiner inadvertently missed presenting an obviousness type double patenting rejection over claims in copending Appl. no. 18/452,892, wherein copending claim 1 recites an overlapping range for PPVE amount and MFR, a lower limit of HFP that is close to the claimed upper limit, and copending claim 5 recites a total number of claimed groups, per 106 main chain carbons, as in the presently claimed invention. Although Examiner is not levying a new ground of rejection in order to maintain compact prosecution, Applicant is alerted to the issue for future reference.
Additionally, Applicant’s arguments and the Affidavit dated 6/25/26 have been duly considered. Applicant argues that the applied primary documents (i.e., Imamura, Kitahara, and Brothers) are very broad compared to claim 1, and the references lack a teaching on HFP and FAVE contents, and claimed MFR and number of functional within the claimed ranges. Referring to the Affidavit and the data on record, Applicant asserts that the claimed fluoropolymer is advantageous in providing for a beautiful injection molded article molded at a high injection speed, in extrusion forming method into a thin coating layer at a high speed on a core wire small in diameter, and can formed articles with advantages, i.e., hardly causes cracks even when contacted with chemical solutions, excellent in 80°C abrasion resistance, ozone resistance, low air permeation, 120°C tensile creep resistance, and compression repulsion, and hardly make fluorine ions to dissolve out in chemical solutions.
Specifically, referring to Examples in the primary documents applied and asserting that the Comparative Examples of the present application are closer in scope to claim 1 than the closest actual embodiment of the prior art, Applicant points out that Comp. Ex. 5 with 8.1 mass% HFP fails to provide satisfactory 120oC tensile creep resistance, Comp. Ex. 3 with lower FAVE amount and Comp. Ex.2 with a higher MFR than that claimed do not yield articles having excellent 80oC abrasion resistance and ozone resistance, while Comp. Ex. 4 with low MFR cannot form articles having excellent low air permeation.
In response, as an initial matter, it is noted that Imamura teaches ranges for HFP and FAVE amounts, and a MFR range that overlap with the claimed ranges, in addition to an advantage for limiting the total number of functional groups per 106 main chain carbons, to preferably 6 or less.
The Kitahara reference also prescribes ranges for HFP and FAVE amounts, and a MFR range of overlapping scope. In addition, Kitahara teaches fluoropolymers with preferably few or no thermally unstable end group, such as -COOH, -CH2OH, -COF, -CF=CF-, -CONH₂, -COOCH₃ and the like in the chain, and preferably, with less than or equal to 5 of -CF2H groups, per 10⁶ carbon atoms [0027]-[0028]. Thus, Kitahara, alone, or in combination with Yokotani that prescribes a sum total of claimed groups in a wire insulation as providing a low dissipation factor within a high frequency region (10 GHz or higher), obviates the claimed limitations.
Brothers teaches fluoropolymers having PAVE and HFP contents, and a MFR of overlapping scope, while Imamura teaches fluorpolymers a low number of claimed groups as being advantageous.
Thus, the cited references, alone or in combination, teach fluoropolymers of overlapping scope. Additionally, a teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. 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 MPEP 2123.
Regarding the asserted unexpected results, in comparing the results of properties of Inv. Ex. 1-8 against those of Comp. Ex. 1-5 in Table 4, Examiner agrees that one or more properties for Inv. Ex. 1-8 are superior to those of Comp. Ex. 1-5. However, the data is also limited, at best, to fluoropolymers of Ex. 1-8 in Table 3 having a HFP content and PPVE content ranging from 5.2 to 6.8 mass% and 1.7 to 2.4 mass%, respectively, a MFR ranging from 11 to 38 g/10 min, and a total number of claimed groups per 106 main chain carbons, at best, at <28, i.e., (a total of CF2H and functional groups in Table 3). It is not clear why this limited data would be considered to be reasonably representative of claim 1, which is of a much broader scope. In other words, the data on record is not reasonably commensurate in scope with the claim language to overcome the rejections of record.
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights