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 Analysis
Summary of Claim 1:
A copolymer, comprising tetrafluoroethylene unit and perfluoro(propyl vinyl ether) unit,
wherein the copolymer has a content of perfluoro(propyl vinyl ether) unit of 4.6 to 5.2% by mass with respect to the whole of the monomer units,
a melt flow rate at 372°C of 22.0 to 28.0 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.
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, 3, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 110790854 as listed on IDS dated January 10, 2024) in view of Kitahara et al. (US 20100314154 as listed on IDS dated June 27, 2025).
The examiner refers to the English translation of Wang et al. provided by the applicant.
Regarding claim 1, Wang et al. disclose in Example 2 a copolymer comprising a tetrafluoroethylene and perfluoro(propyl vinyl ether) [0093-0099]. Wang et al. disclose the copolymer comprises 3.26 wt% of perfluoro propyl vinl ether and a melt flow rate of 26.4 g/10 min at 372°C as shown in Table 1 (machine translation provided below), thereby lying within the claimed ranges.
PNG
media_image1.png
972
808
media_image1.png
Greyscale
Wang et al. is silent on the total number of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH as recited in the instant claim.
Kitahara et al. teach a tetrafluoroethylene/hexafluoropropolynee copolymer (claim 1). Kitahara et al. teach the amount of thermally unstable end groups such as --COOH, --CH2OH, --COF, --CF=CF--, --CONH2 , --COOCH3 is less than or equal to 50 per 1×106 carbon atoms [0027-0028], thereby reading on the claimed range. Kitahara et al. offer the motivation that the unstable end groups cause a decrement in thermal resistance and an increment of attenuation of the electrical wire obtained from the resin because the end group is chemically unstable [0028]. Wang et al. is also concerned with reducing the number of unstable end groups [0017].
Regarding claim 3 and 4, Wang et al. do not teach Example 2 is used to form an electric wire coating or a formed article.
However, Wang et al. teach the PTFE resin is widely used for insulation sheaths for wires and cables [0005], thereby reading on the coated electric wire of claim 3 and the article of claim 4. Therefore, it would have been obvious to one of ordinary skill in the art to use the composition of Wang et al. to form a coating for an electric wire since it is well known in the industry.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 110790854 as listed on IDS dated January 10, 2024) in view of Kitahara et al. (US 20100314154 as listed on IDS dated June 27, 2025) in further view of Sawaki et al. (US 20150158988 as listed on IDS dated January 10, 2024).
The copolymer of claim 1 is incorporated herein by reference.
Regarding claim 2, Wang et al. is silent on if the composition is used to form an injection molded article.
Sawaki et al. teach a fluorine containing copolymer consisting of tetrafluoroethylene and perfluoro(alkyl vinyl ether) units (claim 1). Sawaki et al. teach a molded article is formed from the copolymer by injection molding (claim 4). Wang et al. is also concerned with tetrafluoroethylene-perfluoroalkyl vinyl ether copolymer (claim 1). Therefore, it would have been obvious to one of ordinary skill in the art to use the composition of Wang et al. to form an injection molded article as taught by Sawaki et al. since it is well known in the industry that the tetrafluoroethylene-perfluoroalkyl vinyl ether copolymers can be injection molded.
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, 2, 3, and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 4, and 5 of copending Application No. 18451502 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications refer to a copolymer comprising overlapping amounts of perfluoro(propyl vinyl ether) unit, overlapping melt flow rates, and overlapping amount of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 2, and 3 of copending Application No. 1885870 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications refer to a copolymer comprising overlapping amounts of perfluoro(propyl vinyl ether) unit, overlapping melt flow rates, and overlapping amount of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12459176. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications refer to a copolymer comprising overlapping amounts of perfluoro(propyl vinyl ether) unit, overlapping melt flow rates, and overlapping amount of -CF=CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 and -CH2OH.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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.
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.
/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763