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 .
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 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.
Response to Arguments
Applicants’ terminal disclaimer filed June 30, 2026 with respect to the nonstatutory double patenting rejection over Application No. 18/448234 is approved. The nonstatutory double patenting rejection has been withdrawn.
Applicants’ arguments filed June 30, 2026 with respect to the 35 USC 103 rejection have been fully considered but they are not persuasive.
Applicants’ argument that the examples of the present application provide evidence supporting the patentability of the claimed invention over Sumi in view of Imbalzano is not well taken. While the experimental data demonstrates that example 4 (2.75 mol% PPVE, 48.0 MFR and functional group number of 15 per C106) exhibits better oxygen permeability, electrolytic solution permeability and tensile creep strain as compared to comparative example 4 (2.71 mol% PPVE, 47.0 MFR and functional group number of 341 per C106), such is inadequate to demonstrate an unobvious result critically associated with the presently claimed functional group number narrower range of 50 or less 15 per C106. The comparison of the single comparative inventive 4 having a functional group number of 341 per C106 does not evince criticality for the presently claimed narrower upper limit of 50 functional groups per C106. To establish unexpected results over a claimed narrower range, applicants should compare a sufficient number of tests both inside and outside the claimed range which are closer to the maximum upper limit of 50 to show criticality of the claimed range, In re Hill, 128 USPQ 197.
In response to applicants’ argument that the present invention achieves entirely different and unexpected technical effects which are not related to reduction of metal corrosion as disclosed by Imbalzano, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Moreover, it is noted that the features upon which applicants rely (i.e., excellent oxygen low permeability, chemical solution low permeability, etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 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
Prosecution Insights