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
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1260526 (hereinafter, HIRAGA).
Regarding claims 1 and 6, HIRAGA teaches an electric wire or cable which is coated with a fluorine-containing polymer (Abstract; [0025]) comprises tetrafluoroethylene/perfluoroalkyl vinyl ether copolymer (PFA), the copolymer comprises 92 to 99% by weight of tetrafluoroethylene and 1 to 8% by weight of perfluoropropyl vinyl ether [0015] (when converted from wt% to mol%, the amount of perfluoropropyl vinyl ether is 0.56 mol% to 4.28 mol% which is within the claimed range)
wherein the melt flow rate (MFR)(g/10 min., ASTM D2116) at 372oC is within the range from 0.1 to 100 (Abstract). The fluorine-containing polymer has -CF2H accounts for at least half of polymer chain terminals comprise -CF2H, as used herein, the expression “does not substantially have unstable terminal groups” refers to the state that the number of unstable terminal groups (e.g., COOH, -COF and -CF=CF2) is at most 20 per 106 carbon atoms of the polymer [0021-0022].
However, HIRAGA does not teach a preferred embodiment wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 2.14 to 2.75 mol% and a copolymer has a melt flow rate at 372oC of 3.0 to 4.2 g/10.
Given HIRAGA teaches tetrafluoroethylene/perfluoroalkyl vinyl ether copolymer (PFA) wherein 1 to 8% by weight of perfluoropropyl vinyl ether [0015] (when converted from wt% to mol%, the amount of perfluoropropyl vinyl ether is 0.56 mol% to 4.28 mol% (which is within the claimed range)) and wherein the melt flow rate (MFR)(g/10 min., ASTM D2116) at 372oC is within the range from 0.1 to 100 (Abstract) (which is within the claimed range), it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 2, HIRAGA teaches the copolymer is extruded by to form the wire or cable (Example 1; [0030-0032]; Claim 5).
Regarding claim 5, HIRAGA teaches an electric wire or cable which is coated with the fluorine-containing polymer comprising tetrafluoroethylene (TFE) and perfluoroalkyl vinyl ether (PVE) (perfluoropropyl vinyl ether) (Abstract; [0015]). When coated, the examiner takes the position that at least the outer/outside layer of the electric wire or cable will contain the coating.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1260526 (hereinafter, HIRAGA) in view of ABE et al. (U.S. Publication No. 2016/0340455, hereinafter ABE).
Regarding claims 3 and 4, HIRAGA substantially teaches the present invention, see paragraphs 6-8 above. More specifically, HIRAGA teaches an electric wire or cable which is coated with the fluorine-containing polymer comprising tetrafluoroethylene (TFE) and perfluoroalkyl vinyl ether (PVE) (perfluoropropyl vinyl ether) (Abstract; [0015]).
However, HIRAGA does not teach a transfer molded article comprising the copolymer according to claim 1 (claim 3) and a transfer molded article comprising the copolymer according to claim 1 (claim 4).
In the same field of endeavor of producing molded articles, ABE teaches the method of producing electric wire using fluororesin (Abstract; [0015]; [0061-0067]; [0090-0107]). The electric wire comprising a conductor and an insulating layer containing a fluororesin and covering the surface of the conductor [0017-0018]. The melt molding method can be extrusion molding, injection molding, compression molding, blow molding, transfer molding or calendar molding [0163].
Given HIRAGA teaches an electric wire or cable which is coated with the fluorine-containing polymer, it would have been obvious to a person of ordinary skill in the art to utilize the melt molding method (i.e., blow molding and transfer molding) of ABE with the electric wire or cable of HIRAGA for the benefit of improving the abrasion resistance of the perfluoro fluororesin [0193].
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 5, and 6 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 3-5 of co-pending Application No. 2023/0383032(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
US Application No. ‘032 claims a copolymer comprising tetrafluoroethylene unit and a perfluoro(propyl vinyl ether) unit, wherein the copolymer has a content of the perfluoro(propyl vinyl ether) unit of 2.26 to 2.75 mol% with respect to the whole of the monomer units, a melt flow rate at 372oC of 4.0 to 11.0 g/10 min, and the total number of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and CH2OH of 50 or less per 106 main-chain carbon atoms.
The scope of US Application No. ‘032 encompasses the present invention.
This is a provisional non-statutory 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 DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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