DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
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
Claim(s) 1-4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0020792 (herein Aoyama) optionally in view of US 2016/0194491 (herein Taguchi) and US 6,066,707 (herein Colainna).
As to claim 1, Aoyama discloses a copolymer comprising tetrafluoroethylene (TFE) and perfluoro propyl vinyl ether (PPVE) units. See abstract, paragraph 15, and examples.
The PPVE is taught as 3.5 to 6 mass% (paragraph 34-35) and exemplified within the claimed range at 4.2 mass% and 5.5 mass% which is within the claimed range.
The melt flow rate at 372 oC is taught as 0.5 to 40 g/10min (paragraph 45), which overlaps the claimed range.
The unstable terminal groups per 1x106 carbon atoms is taught as 50 or less, preferably less than 5 (see abstract, paragraph 14, 48 and examples).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
Moreover, Taguchi teaches similar copolymers. See abstract and examples. Paragraph 120 of Taguchi teaches that the melt flow rate should be within the range in order to balance moldability and mechanical properties. Indeed, it would stand to reason that one would want the melt flow rate to be high enough so that it is flows in a melt at the appropriate temperature to be processable, however not being too fluid as to be too difficult to handle.
Further, Colainna at col. 1, lines 29-35 discloses that an optimal amount of PPVE in TFE polymers is between 2 and 3 mol% (about 5 to 7.6 mass%) in order to strike a balance between mechanical properties and processability.
In light of the discussion above, it would have been obvious at the time of the invention to have modified the PPVE unit amount and the melt flow rate of Aoyama in order to balance mechanical properties and processability as suggested by Taguchi and Colainna.
As to claim 2, extruded (extrusion) molded articles (paragraphs 58, 68 and 70 and examples) such as valves (paragraph 67) comprising the copolymer are taught.
As to claim 3, blow molded articles are taught. See paragraph 68.
As to claim 4, transfer molded articles are taught. See paragraph 68.
As to claim 6, formed articles such as tubes, pipping etc. are taught. See paragraphs 66-67.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/004083 optionally in view of US 2016/0194491 (herein Taguchi) and US 6,066,707 (herein Colainna).
In setting forth the instant rejection, the English equivalent, EP 3816214 (herein Hitoshi), is relied upon for the English translation of the WO document.
As to claim 1, Hitoshi teaches that similar copolymers comprising tetafluoroethylene units and perfluoro(propyl vinyl ether) units (PPVE). See paragraph 11, 29 and examples.
The PPVE is present in 1 to 10 mass% with example 5 at 5.5 mass%. See paragraph 37, 40-42 and examples.
As to the melt flow rate (at 372 oC and 5 kg) is taught as 1 to 30 g/10min. See paragraph 47 and examples.
The contains 0 to 700 per 106 main chain carbon atoms of -CF=CF2, -CF2H, -COF, -COOH, COOCH3, -CONH2 and -CH2OH. See paragraph 48 and examples, which are exemplified at e.g. 5.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
Moreover, Taguchi teaches similar copolymers. See abstract and examples. Paragraph 120 of Taguchi teaches that the melt flow rate should be within the range in order to balance moldability and mechanical properties. Indeed, it would stand to reason that one would want the melt flow rate to be high enough so that it is flows in a melt at the appropriate temperature to be processable, however not being too fluid as to be too difficult to handle.
Further, Colainna at col. 1, lines 29-35 discloses that an optimal amount of PPVE in TFE polymers is between 2 and 3 mol% (about 4 to 5.8 mass%) in order to strike a balance between mechanical properties and processability.
In light of the discussion above, it would have been obvious at the time of the invention to have modified the PPVE unit amount and the melt flow rate of Hitoshi in order to balance mechanical properties and processability as suggested by Taguchi and Colainna.
As to claim 2, extrusion formed articles are taught. See paragraph 14 and examples.
As to claim 3, inflation (blow) molding articles are taught. See paragraph 93.
As to claim 4, transfer molded articles are taught. See paragraph 93.
As to claims 5-6, Hitoshi discloses that the copolymer is used to produce to coating layer for a coated electric wires (paragraph 106-107).
Terminal Disclaimer
The terminal disclaimer filed on 7/19/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of application number 18/452,769, 18/451,455 and 18/452,146 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Note that in light of the declaration, all rejections except those utilizing Aoyama and Hitoshi as the primary reference have been withdrawn.
The rejections utilizing Aoyama and Hitoshi have been maintained as both exemplify values for the PPVE the total number of functional groups within the claimed range.
Applicant argues unexpected results over Aoyama and Hitoshi arguing the claimed PPVE ranges, the claimed MFR ranges and the claimed functional group ranges.
In response, as shown below, the PPVE and total number of functional groups as claimed is within the claimed range, so arguments of unexpected/surprising results pertaining to those ranges are moot.
PPVE
(mass%)
MFR
(g/10min)
Total Number
(per 106 carbon)
Claimed
3.9 to 5.5
2.8 to 4.0
20 or less
Aoyama
(example 1)
4.2
16.2
Below 1
Aoyama
(Example 2)
5.5
15.0
Below 1
Hitoshi
(Example 5)
5.5
13
5
As to the MFR, the MFR above the claimed range in both Aoyama and Hitoshi. Applicant argues that an MFR too high yields articles difficult to shape (form films) and not excellent in creep resistance pointing to comparative example 3 of the original specification.
In response, as to the creep resistance the data shows that data shows a creep resistance in comparative example 3 of 24% as opposed to 26 to 32% for values within the claimed range. Given the large variance in the working examples and only a 2% difference, it is unclear how these results are unexpected. One would expect some natural variance in the samples since they are not identical. Also, applicant has not explained why the results are unexpected and significant. MPEP 716.02(b) states that the burden is on applicant to establish that the results are unexpected and significant. Applicant has the burden of explaining proffered data. In the instant case, again, how is such a small change in creep significant and unexpected since the data shows a large variance in the creep resistance.
As to the difficulty in shaping (forming films) of the examples, the prior art is consistent in stating the MFR modifies the processability (moldability, see paragraph 120 of Taguchi). As outlined in the prior art rejections, given that the MFR measures how much a polymer flows at a given temperature, one would have been motivated to modify the MFR to a temperature high enough wherein it flows but not too fluid to make it difficult to handle or form films. Indeed, Eigenbrod (US 4,999,221) puts it distinctly:
“the processing temperature in this step must still be high enough to ensure that the melt flows sufficiently to form a film and to bond with the previously applied layers, but it must be kept low enough, having regard to the lower flowability of the base layer, to ensure that the gravity run-off limit of the base layer”
In other words, the MFR, coupled with the processing temperature, is essential in yielding appropriate films. Therefore, one would have expected applicant’s results when the MFR and processing temperature were not optimal.
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 MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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