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 .
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.
3. Claims 1-8 are pending as amended on 07/06/26.
4. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
6. This application is a CON of PCT/JP2022/008444 02/28/2022.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application JAPAN 2021-031105 02/26/2021 filed on 09/29/23.
Terminal Disclaimer
The terminal disclaimer filed on 07/06/26 disclaiming the terminal portion of anypatent granted on this application which would extend beyond the expiration date of U.S. Patent Application Serial No. 18451915, should the patent granted, have been reviewed and were approved on 07/16/26. The terminal disclaimer has been recorded.
Information Disclosure Statement
8. The information disclosure statement (IDS) submitted on 05/13/26, 06/09/26, 08/28/26 have filed after the mailing date of the non-final Office action on 03/04/26. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
9. Applicant's amendment filed on 07/06/26, has been fully considered and entered.
Response to Arguments
10. Applicant's arguments with respect to rejection of claims 1-8 under 35 U.S.C. 103 as being unpatentable over Imamura (WO 2019/187725; for English translation US 2021/0024769 applied) filed on 07/06/26, have been fully considered but are not persuasive. Imamura teaches fluorine containing copolymer comprising hexafluoropropylene (HFP) and perfluoropropyl vinyl ether (PPVE) wherein ranges for HFP and PPVE amounts, and a MFR encompasses the claimed ranges. In addition Imamura teaches an advantage for limiting the total number of functional groups per 10⁶ main chain carbons, to preferably 6 or less. Further, a teaching contained in Imamura's broader disclosure may be relied upon despite not appearing in the Imamura'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 alleged unexpected results, in comparing the results of properties of instant invention’s examples, including comparative examples and versus the Imamura’s teaching including examples, Examiner agrees that one or more properties discussed in inventive examples are superior to those of comparative examples.
However, the data is limited, at best, to fluoropolymers of Ex. 1-7 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 <9, 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 at least to the copolymer with undefined total number of undefined functional groups, even dependent claim 5 is broader defining too many functional groups compared to the experimental results shown. In other words, the data on record is not reasonably commensurate in scope with the claim language to overcome the rejections of record.
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.
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 Imamura (WO 2019/187725; for English translation US 2021/0024769 applied).
(Elements of this rejection are set forth in the action dated 03/04/26, reiterated below in its entirety).
Regarding claims 1-4, Imamura discloses a fluorine-containing copolymer comprising tetrafluoroethylene unit, hexafluoropropylene unit and perfluoro(propyl vinyl ether) unit (para [0043], [0050], [0051]), wherein the copolymer has a content of hexafluoropropylene unit of 0.1 to 25% by mass (para [0051]-[0052], [0055], encompassing claim 1 range of 5.0 to 7.0 mass or claim 2 range of 5.2 to 6.8% by mass, perfluoro(propyl vinyl ether) unit of 0.1 to 10% by mass (para [0043], [0051]-[0053], [0055]), encompassing claim 1 range of 1.5 to 2.6% by mass or claim 3 range of 1.7 to 2.4% by mass with respect to the whole monomer units, a melt flow rate at 372 0C of 0.5 to 40 g/10 min (para [0061]), encompassing claim 1 range of 9 to 40 g/10 min or claim 4 range of 11 to 38 g/10 min.
A prima facie case of obviousness exists for the copolymer, wherein Imamura discloses the content of hexafluoropropylene unit of 0.1 to 25% by mass, perfluoro (propyl vinyl ether) unit of 0.1 to 10% by mass, and a melt flow rate at 372 0C of 0.5 to 40 g/10 min, encompassing the requirement of claims 1-4. It is well-settled that where 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, 267 (CCPA 1976).
Regarding claim 5, Imamura discloses total number of CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2, and -CH2OH of 6 or less per 106 main-chain carbon atoms (para [0021], [0027], table 1), fall into claimed range of 90 or less per 106 main-chain carbon atoms.
Regarding claim 6, Imamura incorporated the limitations of claim 1 and further discloses an injection molded article comprising the copolymer (para [0072], [0080]).
Regarding claim 7, Imamura incorporated the limitations of claim 1 and further discloses a coated electric wire comprising a coating layer comprising the copolymer (para [0072], [0081]).
Regarding claim 8, Imamura incorporated the limitations of claim 1 and further discloses an electric wire comprising a core wire and a coating layer installed on the periphery of the core wire and obtained from an electric wire coating material comprising the fluorine-containing copolymer (para [0081]-[0083]).
Conclusion
References EI Du Point (JP 52-109588), Daikin Industries (WO 01/18076), Daikin Industries (JP 2020-100823), and EI Du Point (JP 10-292054) were cumulative in nature to the above rejection and thus not set forth.
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 KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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