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 .
This application is a Continuation of application No. PCT/JP2022/003649, filed on Jan. 31, 2022.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. JP 2021-031096 and JP 2021-162126 filed 2/26/2021 and 9/30/2021 respectively, which papers have been placed of record in the file.
Claims 1-4 are pending.
Information Disclosure Statement
An applicant’s duty of disclosure of material information is not satisfied by presenting a patent examiner with "a mountain of largely irreverent data from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical data. It ignores the real world conditions under which the examiners work.” Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1573, 220 U.S.P.Q. 289 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). An applicant has a duty to not just disclose pertinent prior art references but to make a disclosure in such a way as not to “bury” it within other disclosures of less relevant art. See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 U.S.P.Q. 2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc., 26 U.S.P.Q. 2d 1889, 1899 (D. Del. 1992); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. et al., 175 U.S.P.Q. 260, 272 (S.D. Fl. 1972). It is unreasonable for the Examiner to review all of the cited references thoroughly. By signing the accompanying 1449 forms, the Examiner is merely acknowledging the submission of the cited references and indicating that only a cursory review has been made.
In the present case, a cursory review of the 17 page IDS filed 1/10/2024 has been made.
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/192,077 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
While copending ‘077 claims a PPVE content of 4.0-6.0% by mass and a MFR of 26-37 g/10 min, this overlaps the claimed PPVE content and MFR values. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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.
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 Brothers et al. (US 2007/0292685).
Regarding claim 1: Brothers is directed to a copolymer comprising tetrafluoroethylene unit (TFE) and a perfluoro(propyl vinyl ether) unit P(PVE), wherein the copolymer has a content of the perfluoro(propyl vinyl ether) unit of 3.5 to 4.2% by mass with respect to the whole of the monomer units and a melt flow at 372 ˚C of 35 to 45 g/10min.
Specifically, the copolymer has a content of PPVE of 1-15 wt% of the whole of monomer units ([0013]).
The melt flow is at least 26 g/10 min at 372 ˚C according to ASTM D1238.
The total number of -CF2=CF2, -CF2H, -COF, -COOH, -COOCH3, CONH2 and -CH2OH is 50 or less per 106 main chain carbon atoms when fluorination treatment is practiced in accordance with the invention ([0017]). The end group analysis is determined by infrared spectrum of films as discussed in EP0226668 (cited in [0017] Brothers) and therefore the end groups of Brothers includes the claimed total number of functional groups / 106 carbon atoms.
While a specific copolymer simultaneously comprising the claimed PPVE content, MFR, and total number of -CF2=CF2, -CF2H, -COF, -COOH, -COOCH3, CONH2 and -CH2OH groups in a single copolymer is not mentioned, it would have been obvious to one skilled in the art to have selected such a copolymer since Brothers discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a copolymer within the scope of claim 1.
Regarding claim 2: An injection molded article is disclosed ([0018]).
Regarding claims 3-4: A coated wire comprising a coating layer comprising the copolymer is disclosed in Example 2 ([0029]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764