CTNF 18/452,146 CTNF 62263 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 112 07-34-01 Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In claim 1, the method conditions under which the recited melt flow rate and total number of functional groups are determined in not apparent. In claim 1, the recitation “the total number of … “ does not have express antecedent basis given that neither the tetrafluoroethylene nor perfluoro(propyl vinyl ether) contain the recited groups. That is, the source of the recited functional groups is not apparent. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2003/0114615 (Sumi) in view of US 4,743,658 (Imbalzano) . Sumi discloses a copolymer comprising tetrafluoroethylene (TPE) units ( meets Applicants’ tetrafluoroethylene ) and perfluoro(propyl vinyl ether) (PPVE) units ( meets Applicants’ perfluoro(propyl vinyl ether) ), wherein the copolymer has a PPVE unit content ranging from 1.9 to 5.0 mol% ( overlaps presently claimed 2.14 to 3.00 mol %) and a melt flow rate (MFR) at 372°C of 35 to 60 g/10 min ( overlaps presently claimed 33.0 to 50.0 g/10 min ) (e.g., abstract, examples, claims). Sumi expressly sets forth Example 3 [0047] (PPVE = 2.4 mol% and MFR = 47 g/10 in) meeting the presently claimed requirements in terms of the PEVE content and MFR. In essence, Sumi differs from present claim 1 in not disclosing that the copolymer contains the presently recited functional groups (and total number thereof). From Imbalzano it is known that that the number of unstable units, such as -COOH, -CONH2, -COF etc., in copolymers comprising tetrafluoroethylene (TPE) and perfluoro(propyl vinyl ether) (PPVE) units must be lowered by a fluorination treatment to prevent corrosive products (C1:40-C2-25). Thus, it would have been obvious to one having ordinary skill in the art to reduce the number of any unstable functional group in Sumi’s TPE/PPVE copolymer (inclusive of presently claimed total number) to avoid the production of corrosive products. As to claim 2, Sumi’s Example 3 is used to produce an injection molded article [0048]. As to claims 3 and 4, Sumi discloses using the copolymer as a coating material for electric cables, implicitly including electrical wires . Double Patenting 08-33 AIA 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. 08-35 Claim s 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-5 of copending Application No. 18/448234 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims embrace a similarly-constituted copolymer having a melt flow rate of 33.0 g/10 min and the same total number of functional groups . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm. 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, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ANA L. WOODWARD/Primary Examiner, Art Unit 1765 Application/Control Number: 18/452,146 Page 2 Art Unit: 1765