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 7/27/26, claims 1-8 are currently pending in the application.
The terminal disclaimer filed on 8/20/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration dates of Appl. Nos. 18451524, 18451205, 19008105, 19013081, 18893049, 18893024, 18892976, 18885918, 19013016, 18452075 and 18451921 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).
The rejections as set forth in paragraph 4-9 of the office action date 3/25/26 are incorporated herein by reference.
Claims 1-5, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al. (EP 1260526 A1) in view of Yokotani et al. (US 2019/0382544 A1).
The rejections as set forth in paragraph 11-15 of the office action date 3/25/26 are incorporated herein by reference.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al. (EP 1260526 A1) view of Imamura et al. (WO 2019/187725 A).
The rejections as set forth in paragraph 17-21 of the office action date 3/25/26 are incorporated herein by reference.
Response to Arguments
In view of the filing of a terminal disclaimer, the double patenting rejections of record are all withdrawn. Applicant’s arguments and the Declaration filed on 7/27/26 have been duly considered.
Referring to the Declaration, the data in the disclosure and the advantageous results of the claimed fluorine-containing copolymer disclosed therein, Applicant argues that the primary documents to Imamura and Hiraga are very broad compared to claim 1, and the documents do not disclose regulating the contents of HFP and FAVE, MFR and the recited functional groups to fall within claimed ranges to provide the advantageous results of the claimed copolymer. Applicant further contends that the primary documents do not disclose examples that fall within the scope of claim 1, and that the comparative Examples of the present disclosure are closer in scope to claim 1 than the closest actual embodiment of the prior art, rendering the comparisons highly probative of nonobvious.
In response, the general disclosure to Imamura teaches fluororesins based on tetrafluoroethylene (TFE) (70-99.8 mass%), hexafluoropropylene (HFP) (0.1-25 mass%) and perfluoro (alkyl vinyl ether) (PAVE) (0.1-25 mass%) with perfluoro(propyl vinyl ether) (PPVE) being a preferred species thereof. Disclosed melt flow rate (MFR) is, preferably, of from 0.1-40.
Hiraga teaches a copolymer comprising units of TFE (70 to 95% wt.%), HFP (5 to 25 wt.%) and PAVE (0 to 20 wt.%), e.g., PPVE, having a MFR within a range from 0.1 to 100.
Although the primary documents fail to teach all the claimed elements in a single embodiment, it is noted that Examiner has only relied on obviousness rejections on the basis that all the primary documents teach the claimed elements in overlapping ranges. Moreover, 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.
It is further noted that Examples 1-4 in the disclosure demonstrate one or more superior properties when compared to Comp. Examples 1-6 (Tables 3 and 4). However, the data on record in support of the superior performance is limited, at best, to copolymers having monomer units TFE, HFP (10.0-11.5 mass%) and PPVE (0 mass%), with a MFR of 4.5-7.5 g/10 min and having functional groups of type and amount within the scope of Examples 1-4. It is not clear why this limited data would be considered 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
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