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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-6, in the reply filed on 5/8/2026 is acknowledged.
Claims 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/8/2026.
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/451213 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending application ‘213 claims a fluorine-containing copolymer, comprising: tetrafluoroethylene unit; hexafluoropropylene unit; and perfluoro (alkyl vinyl ether) unit, wherein the copolymer has a content of hexafluoropropylene unit of 5.0 to 7.5% by mass with respect to the whole of the monomer units, a content of perfluoro (alkyl vinyl ether) unit of 0.8 to 2.9% by mass with respect to the whole of the monomer units, and a melt flow rate at 372°C of 0.7 to 9.5 g/10 min, and a total number of -CF=CF2, -CF₂H, -COF, -COOH, -COOCH3, -CONH₂ and -CH2OH of 90 or less per 10⁶ main-chain carbon atoms. This overlaps instant claims 5-6. Copending application ‘213 recites that the perfluoro (alkyl vinyl ether) unit is perfluoro (propyl vinyl ether).
The amount of hexafluoropropylene of copending application ‘213 overlaps the amount of hexafluoropropylene of instant claims 1-2. The amount of perfluoro (alkyl vinyl ether) unit of copending application ‘213 overlaps the amount of perfluoro (propyl vinyl ether) of instant claims 1 and 3. The melt flow rate of copending application ‘213 overlaps the melt flow rate of instant claims 1 and 4.
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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 3-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-5 of copending Application No. 18/451868 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending application ‘868 claims a fluorine-containing copolymer, comprising: tetrafluoroethylene unit; hexafluoropropylene unit; and perfluoro (propyl vinyl ether) unit, wherein the copolymer has a content of hexafluoropropylene unit of 7.6 to 10.3% by mass with respect to the whole of the monomer units, a content of perfluoro (propyl vinyl ether) unit of 1.3 to 2.9% by mass with respect to the whole of the monomer units, and a melt flow rate at 372°C of 0.7 g/10 min or higher and lower than 4.5 g/10 min (claim 1).
The amount of hexafluoropropylene of copending application ‘868 overlaps the amount of hexafluoropropylene of instant claim 1. The amount of perfluoro (propyl vinyl ether) unit of copending application ‘868 overlaps the amount of perfluoro (propyl vinyl ether) of instant claims 1 and 3. The melt flow rate of copending application ‘868 overlaps the melt flow rate of instant claims 1 and 4.
Copending application ‘868 recites that the copolymer has a content of perfluoro (propyl vinyl ether) unit of 1.5 to 2.4% by mass with respect to whole of the monomer units. This overlaps the range of instant claims 1 and 3.
Copending application ‘868 recites that the copolymer has a melt flow rate at 372ºC of 0.7 to 4.0 g/10 min. This overlaps the range of instant claims 1 and 4.
Copending application ‘868 recites that the fluorine-containing copolymer has a total number of -CF=CF2, -CF₂H, -COF, -COOH, -COOCH3, -CONH₂ and -CH2OH of 50 or less per 10⁶ main-chain carbon atoms. This meets or overlaps instant claims 5-6.
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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 3-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/449898 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending application ‘898 claims a fluorine-containing copolymer, comprising: tetrafluoroethylene unit; hexafluoropropylene unit; and a fluoro (alkyl vinyl ether) unit, wherein the copolymer has a content of hexafluoropropylene unit of 7.5 to 10.3% by mass with respect to the whole of the monomer units, a content of fluoro (alkyl vinyl ether) unit of 0.8 to 2.9% by mass with respect to the whole of the monomer units, and a melt flow rate at 372°C of 0.7 to 9.5 g/10 min, and a total number of -CF=CF2, -CF₂H, -COF, -COOH, -COOCH3, -CONH₂ and -CH2OH of 90 or less per 10⁶ main-chain carbon atoms. The CF=CF2, -CF₂H, -COF, -COOH, -COOCH3, -CONH₂ and -CH2OH content of 90 or less per 10⁶ main-chain carbon atoms overlaps instant claims 5-6. Copending application ‘898 recites that the fluoro (alkyl vinyl ether) unit is perfluoro (propyl vinyl ether) unit (claim 5 of ‘898).
The amount of hexafluoropropylene of copending application ‘898 overlaps the amount of hexafluoropropylene of instant claim 1. The amount of fluoro (alkyl vinyl ether) unit of copending application ‘898 overlaps the amount of perfluoro (propyl vinyl ether) of instant claims 1 and 3. The melt flow rate of copending application ‘898 overlaps the melt flow rate of instant claims 1 and 4.
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).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Funaki et al. (US 2008/0200627).
Funaki et al. teach a tetrafluoroethylene/hexafluoropropylene/perfluoro(alkyl vinyl ether) copolymer, also called an EPA (¶52). In the EPA, the hexafluoropropylene is preferably present in an amount of from 5 to 10wt%. This overlaps the amount of instant claims 1-2. The perfluoro(alkyl vinyl ether) is preferably present in an amount of from 0.2 to 2wt%. See ¶54. This overlaps the amount of instant claims 1 and 3. The melt flow rate, measured at 372ºC for EPA (tetrafluoroethylene/hexafluoropropylene/perfluoro(alkyl vinyl ether) copolymer), is most preferably from 1 to 30 g/min, which is 0.1 to 3 g/10 min. See ¶55. This overlaps the range of melt flow rate of instant claims 1 and 4.
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). It would have been obvious to one of ordinary skill in the art, based on the teachings of Funaki et al. to produce a copolymer of tetrafluoroethylene/hexafluoropropylene/ perfluoro(alkyl vinyl ether) (PAVE) copolymers with amounts of hexafluoropropylene and PAVE which meet the instant claim limitations of instant claims 1-3, wherein the tetrafluoroethylene/hexafluoropropylene/ perfluoro(alkyl vinyl ether) (PAVE) copolymer has a melt flow rate which meets instant claims 1 and 4, because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Funaki et al. do not expressly recite that the perfluoro(alkyl vinyl ether) is perfluoro(propyl vinyl ether). However, it would have been obvious to one of ordinary skill in the, if not at once envisaged, to use perfluoro(propyl vinyl ether) given a disclosure of perfluoro(alkyl vinyl ether). Alternatively, see the rejection below in view of Kono et al. (US 2003/0153701).
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Funaki et al. (US 2008/0200627) and further in view of Kono et al. (US 2003/0153701).
Funaki et al. teach the copolymer as described above. Funaki et al. does not expressly state that the perfluoro(alkyl vinyl ether) is perfluoro(propyl vinyl ether).
However, Kono et al. teach copolymers of tetrafluoroethylene/hexafluoropropylene/ perfluoro(alkyl vinyl ether) (PAVE) (¶30), wherein the perfluoro(alkyl vinyl ether) (PAVE) is preferably PPVE (perfluoro(propyl vinyl ether)) (¶36).
Both Funaki and Kono relate to the field of tetrafluoroethylene/hexafluoropropylene/ perfluoro(alkyl vinyl ether) copolymers, used for, for example, wire coverings (see ¶4 and ¶6 of Kono et al. and ¶75 of Funaki et al.). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use PPVE (perfluoro(propyl vinyl ether)) as disclosed in Kono et al. as the PAVE in the invention of Funaki et al. in order to increase the speed of coating extrusion of the compositions of Funaki et al. See ¶36 of Kono et al.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Funaki et al. (US 2008/0200627) and further in view of Hiraga (EP 1170303).
Funaki et al. teach the copolymer as described above, the rejection of which is incorporated by reference in its entirety. Funaki et al. does not expressly state the end group content of instant claims 5-6.
However, Hiraga teaches examples of fluoropolymers having 480 end groups -CF2H groups per 106 carbon atoms (Table 1) and 0 end groups of -COF, COOH (carbonyl containing end groups) and 0 end groups of -CF=CF2 (Table 1). The amount of -CF2H end groups taught by Hiraga meets instant claim 5 and the amount of carbonyl group containing end groups and of -CF=CF2 meets instant claim 6.
Both Hiraga and Funaki relate to the field of fluorine containing copolymers (see ¶ 1 of the instant specification) which are melt processable (see ¶12 of the instant specification). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to treat the fluoropolymers of Funaki to arrive at the claimed amount of end groups as taught in Higara because in order to provide an article which is free from bubbles and no coloration arises due to the unstable groups being present (abstract). In other words, using the amount of end groups disclosed in Higara in the invention of Funaki et al. would produce copolymers which have no unstable groups and thereby have no bubbles or coloration.
Other Relevant Close Prior Art
Isaka et al. (US 2017/0008986) teaches a tetrafluoroethylene/hexafluoropropylene copolymer having not more than 120 -CF2H groups per 1x106 carbon atoms (abstract). The copolymer preferably has a unit derived from tetrafluoroethylene, a unit derived from hexafluoropropylene, and a polymerized unit derived from a perfluoro(alkyl vinyl ether) (¶20). The perfluoro(alkyl vinyl ether) is preferably perfluoro(propyl vinyl ether) (¶21). The amount of the hexafluoropropylene is preferably 3 to 20%. The mass ratio of the PAVE (perfluoro(alkyl vinyl ether), which is preferably perfluoro(propyl vinyl ether), is from 0.3 to 5% by mass. The copolymer has a melt flow rate at 372ºC of 35.0 to 45.0 g/10 min.
The melt flow rate of the copolymer of Isaka et al. is well outside the range required for the instantly claimed invention.
Kenny et al. (US 2008/0090065) teach a tetrafluoroethylene/hexafluoropropylene/ perfluoro(alkyl vinyl ether) (PAVE) copolymers, wherein the perfluoro(alkyl vinyl ether) is preferably perfluoro(ethyl vinyl ether) (PEVE) or perfluoro(propyl vinyl ether) (PPVE). See ¶22. The PAVE is present in an amount of from 1.2 to 2wt% based on the total weight of the copolymer. See ¶22. The hexafluoropropylene is present in an amount of from 3.5 to 8wt%. See ¶22. Kenny et al. teaches that the disclosed copolymer as a melt flow rate of at least about 10g/10 min (See claim 4 of Kenny et al.) measured at 372ºC (see ¶26 of Kenny et al.).
The melt flow rate of the copolymers formed in Kenny et al. is outside the range required for the instantly claimed invention. It would not have been obvious, based on Kenny et al., to produce a copolymer having a melt flow rate in a range of from 2.8 to 4.4 g/10 min.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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