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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: Tables 3-4 are blurry.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 and 4-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kenny et al. (US 7,592,406).
Regarding claims 1-2 and 4: Kenny et al. (US ‘406) discloses fluoropolymers [abstract] prepared from tetrafluoroethylene (TFE), hexafluoropropylene (HFP) and a perfluoro(alkyl vinyl ether) (PAVE), wherein the PAVE is perfluoro(ethyl vinyl ether) or perfluoro(propyl vinyl ether) (PPVE) [5:21-44]. Kenny et al. (US ‘406) discloses the Example [Ex. 1; 6:33-64] prepares a copolymer from a feed composition of 59.3 wt% hexafluoropropylene, 16.5 wt% tetrafluoroethylene and 1.6 wt% perfluoro(propyl vinyl ether) {note: perfluoro(propyl vinyl ether) exchanged for perfluoro(ethyl vinyl ether) as the perfluoro(alkyl vinyl ether) [5:34-37]; see MPEP 2131.02} [Ex. 1; 6:33-64]. The polymer composition is 7.4 wt% HFP, 1.5 wt% PPVE and remainder (91.1 wt%) TFE, and has a melt flow rate (MFR; 372 oC [6:19-28]) of 10.8 g/10 min [Ex. 1; 6:33-64].
Regarding claim 5: Kenny et al. (US ‘406) discloses acid fluoride (-COF) end groups on the polymer are 31 per million carbon atoms; and no -CONH2, -COOH, and -CF=CF2 end groups detected [Ex.; 6:50-54].
The claimed effects and physical properties, i.e. a total number of -CF2H, -COOCH3, -CH2OH of 90 or less per 106 main-chain carbon atoms [instant claim 5], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 6: Kenny et al. (US ‘406) discloses extrusion coating [6:28-31; 6:65-7:5].
Kenny et al. (US ‘406) does not disclose an injected molded article. However, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Regarding claims 7-8: Kenny et al. (US ‘406) discloses the copolymer was extruded onto 28 gauge copper wire [Ex; 6:65-7:5].
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.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kenny et al. (US 7,592,406) as applied to claim 1 above.
Regarding claim 3: Kenny et al. (US ‘406) discloses the basic claimed copolymer [as set forth above with respect to claim 1]; wherein Kenny et al. (US ‘406) discloses about 1.2 to 2 wt% perfluoro(propyl vinyl ether) [5:42-44].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kenny et al. (US 7,592,406) as applied to claim 1 above, and further in view of Isaka et al. (US 2017/0008986).
Regarding claim 5: Kenny et al. (US ‘406) discloses the basic claimed copolymer [as set forth above with respect to claim 1]; wherein Kenny et al. (US ‘406) discloses acid fluoride (-COF) end groups on the polymer are 31 per million carbon atoms; and no -CONH2, -COOH, and -CF=CF2 end groups detected [Ex.; 6:50-54].
Kenny et al. (US ‘406) does not specifically disclose a total number of -CF2H, -COOCH3, -CH2OH of 90 or less per 106 main-chain carbon atoms [instant claim 5]. However, Isaka et al. (US ‘986) discloses fluorine-containing copolymers (TFE/HFP) for wire coating [abstract], wherein the copolymer should contain a sum of -CF2H and unstable end-groups (-COF, -CONH2, -COOH, -COOCH3, -CH2OH) of 120 or less per 1x106 carbon atoms, preferably 50 or less per 1x106 carbon atoms [0057-0061]. Kenny et al. (US ‘406) and Isaka et al. (US ‘986) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of fluorine-containing copolymers for wire coating. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined a sum of -CF2H and unstable end-groups (-COOCH3, -CH2OH) of 50 or less per 1x106 carbon atoms, as taught by Isaka et al. (US ‘986) in the invention of Kenny et al. (US ‘406), and would have been motivated to do so since Isaka et al. (US ‘986) suggests a sum of -CF2H and unstable end-groups (-COF, -CONH2, -COOH, -COOCH3, -CH2OH) of 120 or less per 1x106 carbon atoms, preferably 50 or less per 1x106 carbon atoms affords a copolymer that is less likely to form a lump during formation of an electric wire [0057-0061].
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/452,849 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire of Application No. 18/452,849 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire. In the case where the claimed ranges (7.0 to 9.4 mass% HFP; 7.2 to 9.2 mass% HFP) “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
While Application No. 18/452,849 claims a melt flow rate (372 oC) of 15-40 g/10 min [claim 1]; a melt flow rate (372 oC) of 16-38 g/10 min [claim 4], a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/451,927 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire of Application No. 18/451,927 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire. While Application No. 18/451,927 claims a melt flow rate (372 oC) of 9-40 g/10 min [claim 1]; a melt flow rate (372 oC) of 11-38 g/10 min [claim 4]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
While Application No. 18/451,927 claims 5.0 to 7.0% by mass HFP [claim 1]; 5.0 to 6.8% by mass HFP [claim 2], a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/451,915 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PAVE), articles and coated electric wire of Application No. 18/451,915 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire. While Application No. 18/451,915 does not claim perfluoro(propyl vinyl ether) as the perfluoro(alkyl vinyl ether) in claim 1, it would have been obvious to have employed perfluoro(propyl vinyl ether), as claim 5 claims perfluoro(propyl vinyl ether) as the perfluoro(propyl vinyl ether) [claim 5].
While Application No. 18/451,915 claims a melt flow rate (372 oC) of 9-40 g/10 min [claim 1]; a melt flow rate (372 oC) of 11-38 g/10 min [claim 4]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
While Application No. 18/451,915 claims 5.0 to 7.0% by mass HFP [claim 1]; 5.0 to 6.8% by mass HFP [claim 2], a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/449,927 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PAVE), articles and coated electric wire of Application No. 18/449,927 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire. While Application No. 18/449,927 does not claim perfluoro(propyl vinyl ether) as the perfluoro(alkyl vinyl ether) in claim 1, it would have been obvious to have employed perfluoro(propyl vinyl ether), as claim 5 claims perfluoro(propyl vinyl ether) as the perfluoro(propyl vinyl ether) [claim 5].
In the case where the claimed ranges (7.0 to 9.4 mass% HFP; 7.2 to 8.1 mass% HFP) “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
While Application No. 18/449,927 claims a melt flow rate (372 oC) of 15-40 g/10 min [claim 1]; a melt flow rate (372 oC) of 17-37 g/10 min [claim 4], a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/449,977 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire of Application No. 18/449,977 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire.
While Application No. 18/449,977 claims a content of HFP unit of 9.4 to 10.3 mass% [claim 1]; 9.6 to 10.2 mass% [claim 2], a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
The claimed effects and physical properties, i.e. a sum of -CF2H, -COF, -CONH2, -COOH, -COOCH3, -CH2OH of 90 or less per 1x106 carbon atoms [instant claim 5], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/891,240 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PPVE), article and coated electric wire of Application No. 18/891,240 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire.
While Application No. 18/891,240 claims a content of HFP unit of 8.5 to 9.5 mass% [claim 1]; 8.6 to 9.2 mass% [claim 2], a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
In the case where the claimed ranges (1.2 to 1.8 mass% PPVE; 1.2 to 1.7 mass% PPVE) “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-8 of copending Application No. 18/893,036 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PPVE), article and coated electric wire of Application No. 18/893,036 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire.
While Application No. 18/893,036 claims a content of HFP unit of 9.4 to 10.7 mass% [claim 1]; 9.7 to 10.5 mass% [claim 2], a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
In the case where the claimed ranges (0.5 to 1.7 mass% PPVE) “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
The claimed effects and physical properties, i.e. a sum of -CF2H, -COF, -CONH2, -COOH, -COOCH3, -CH2OH of 90 or less per 1x106 carbon atoms [instant claim 5], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 19/013,016 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PAVE), articles and coated electric wire of Application No. 19/013,016 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire. While Application No. 19/013,016 does not claim perfluoro(propyl vinyl ether) as the perfluoro(alkyl vinyl ether) in claim 1, it would have been obvious to have employed perfluoro(propyl vinyl ether), as claim 5 claims perfluoro(propyl vinyl ether) as the perfluoro(propyl vinyl ether) [claim 5].
While Application No. 19/013,016 claims a melt flow rate (372 oC) of 4.6-14.4 g/10 min [claim 1]; a melt flow rate (372 oC) of 5.1-14.0 g/10 min [claim 4]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
While Application No. 19/013,016 claims 8.6 to 11.9% by mass HFP [claim 1]; 9.1 to 11.0% by mass HFP [claim 2], a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/895,522 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire of Application No. 18/895,522 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire.
While Application No. 18/895,522 claims a melt flow rate (372 oC) of 9.0-14.0 g/10 min [claim 1]; a melt flow rate (372 oC) of 9.5-12.8 g/10 min [claim 4]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
While Application No. 18/895,522 claims 9.5 to 11.4% by mass HFP [claim 1]; 9.9 to 10.9% by mass HFP [claim 2], a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/888,922 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PPVE), article and coated electric wire of Application No. 18/888,922 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire.
While Application No. 18/888,922 claims 8.0 to 9.4% by mass HFP [claim 1]; 8.1 to 9.1% by mass HFP [claim 2]; melt flow rate (372 oC) of 6.8 to 9.9 g/10 min [claim 1]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
While Application No. 18/888,922 claims 0.6 to 1.5% by mass of PPVE, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
The claimed effects and physical properties, i.e. a sum of -CF2H, -COF, -CONH2, -COOH, -COOCH3, -CH2OH of 90 or less per 1x106 carbon atoms [instant claim 5], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/452,892 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire of Application No. 18/452,892 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire.
While Application No. 18/452,892 claims 7.6 to 10.3% by mass HFP [claim 1]; 7.8 to 9.8% by mass HFP [claim 2]; 1.4 to 2.4% by mass of PPVE [claim 1]; melt flow rate (372 oC) of 4.5 to 9.5 g/10 min [claim 1]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/451,213 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PAVE), articles and coated electric wire of Application No. 18/451,213 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire. While Application No. 18/451,213 does not claim perfluoro(propyl vinyl ether) as the perfluoro(alkyl vinyl ether) in claim 1, it would have been obvious to have employed perfluoro(propyl vinyl ether), as claim 5 claims perfluoro(propyl vinyl ether) as the perfluoro(propyl vinyl ether) [claim 5].
While Application No. 18/451,213 claims 5.0 to 7.5% by mass HFP [claim 1]; 5.2 to 7.2% by mass HFP [claim 2]; 0.8 to 2.9% by mass of PPVE (see above) [claim 1]; 1.2 to 2.2% by mass of PPVE (see above) [claim 3]; melt flow rate (372 oC) of 0.7 to 9.5 g/10 min [claim 1]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/450,567 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire of Application No. 18/450,567 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire.
While Application No. 18/450,567 claims 6.0 to 7.6% by mass HFP [claim 1]; 6.2 to 7.2% by mass HFP [claim 2]; 1.5 to 2.4% by mass of PPVE [claim 1]; melt flow rate (372 oC) of 4.5 to 9.5 g/10 min [claim 1]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
The claimed effects and physical properties, i.e. a sum of -CF2H, -COF, -CONH2, -COOH, -COOCH3, -CH2OH of 90 or less per 1x106 carbon atoms [instant claim 5], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/449,977 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PPVE), article and coated electric wire of Application No. 18/449,977 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire.
While Application No. 18/449,977 claims 9.4 to 10.3% by mass of PPVE [claim 1]; 9.6 to 10.2% by mass of PPVE [claim 2], a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) [See MPEP 2144.05].
The claimed effects and physical properties, i.e. a sum of -CF2H, -COF, -CONH2, -COOH, -COOCH3, -CH2OH of 90 or less per 1x106 carbon atoms [instant claim 5], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/449,898 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing copolymer (TFE/HFP/PAVE), articles and coated electric wire of Application No. 18/449,898 substantially overlap in scope with the instant claimed fluorine-containing copolymer (TFE/HFP/PPVE), articles and coated electric wire. While Application No. 18/449,898 does not claim perfluoro(propyl vinyl ether) as the perfluoro(alkyl vinyl ether) in claim 1, it would have been obvious to have employed perfluoro(propyl vinyl ether), as claim 5 claims perfluoro(propyl vinyl ether) as the perfluoro(propyl vinyl ether) [claim 5].
While Application No. 18/449,898 claims 7.5 to 10.3% by mass HFP [claim 1]; 7.8 to 9.8% by mass HFP [claim 2]; 0.8 to 2.9% by mass of PPVE (see above) [claim 1]; 1.5 to 2.4% by mass of PPVE (see above) [claim 3]; melt flow rate (372 oC) of 0.7 to 9.5 g/10 min [claim 1]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
See attached form PTO-892.
Correspondence
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767