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 Objections
Claim 1 is objected to because it should recite at 5 kg. From the specification, it is clear that applicant intended to list the load (5 kg) along with the temperature (372 oC), which are standard conditions for melt flow rate.
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.
Claim(s) 1-3 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 claims 1-2, 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% 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 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 Aoyama in order to balance mechanical properties and processability as suggested by Taguchi and Colainna.
As to claim 3, injection molded articles (paragraphs 68 and 70) such as valves (paragraph 67) comprising the copolymer are taught.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0382544 (herein Yokotani) optionally in view of US 2016/0194491 (herein Taguchi) and US 6,066,707 (herein Colainna).
As to claims 1-2, Yokotani teaches that similar copolymers comprising tetafluoroethylene units and perfluoro(propyl vinyl ether) units (PPVE). See paragraph 9, 36, 145, 149 and examples.
The PPVE is present in 1 to 10 %mass, which overlaps the claimed range. See paragraphs 145-155 and examples.
As to the melt flow rate (at 372 oC and 5 kg) is taught as 2 to 30 g/10min. See paragraph 15 and 128.
The copolymer contains 20 or less per 106 main chain carbon atoms of -CF=CF2, -CF2H, -COF, -COOH, COOCH3, -CONH2 and -CH2OH. See paragraph 172.
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 Yokotani in order to balance mechanical properties and processability as suggested by Taguchi and Colainna.
Claim(s) 1-3 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 1-2, 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 2 at 4 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 3, Hitoshi discloses that the copolymer is used in injection molding (paragraph 94) to produce coating layers for electric wires (paragraph 106), joints (paragraph 109), etc.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0046058 (herein Pham) in view of US 2019/0382544 (herein Yokotani) and US 2005/0245626 (herein Hoaglund) optionally in view of US 2016/0194491 (herein Taguchi) and US 6,066,707 (herein Colainna).
As to claims 1-2, Pham teaches a copolymer of tetrafluoroethylene (TFE) and perfluoro propyl vinyl ether (PPVE). See paragraph 35 and examples. The PPVE is present in 1 to 10 wt% with examples (pfa-2) at 3.8 mass%. See paragraph 35. The melt flow rate (same conditions) is taught as 0.5 to 50 g/10min depending on the type of melt molding (i.e. is adjusted on the type such as injection molding). See paragraph 50.
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 Pham in order to balance mechanical properties and processability as suggested by Taguchi and Colainna.
As to the total number of functional groups listed in claim 1, Pham is silent. However, Yokotani teaches similar compositions and teaches that the copolymer should contains 20 or less per 106 main chain carbon atoms of -CF=CF2, -CF2H, -COF, -COOH, COOCH3, -CONH2 and -CH2OH in order to achieve a low dissipation factor within a high frequency region. See paragraph 172. It is known that a low dissipation factor is advantageous for the coating layers of coated electrical wires. See paragraph 7 of Hoagland.
Turning back to Pham, Pham is directed towards utilizing the copolymer as coating layers in coated (film) electrical wires via injection molding. See abstract, paragraph 18, 21 and examples.
Therefore, it would have been obvious at the time of the invention to have modified the copolymer and coated electrical wire of Pham to have the total functional groups of Yokotani within the claimed range because one would want to have achieve low dissipation factor to be suitable for electrical wires.
As to claims 3, Pham discloses that the copolymer is used in injection molding (paragraph 25 and 31) to produce coating layers for electric wires (see paragraph 2 and claim 7 of Hitoshi), valves (paragraph 52), etc.
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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 3 of copending Application No. 18/446,746 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 1-2, copending claim 1 is identical with the proviso that the copending claims have a PPVE range of 3.3 to 4.2 mass% and a melt flow rate of 27 to 35 g/10min, which overlaps the claimed range. This is substantially overlap as to read on the claims. 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.
As to claim 3, see copending claim 3.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of copending Application No. 18/452,107 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 1-2, copending claim 1 is identical with the proviso that the PPVE is taught as 3.5 to 4.2 mass%, and the melt flow rate is 34 to 42, which overlaps the claimed range. 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.
As to claim 3, see copending claim 2.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of copending Application No. 18/452,146 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 1-2, copending claim 1 is identical with the proviso that the PPVE is taught as 2.14 to 3 mol% (4.21 to 5.82 mass%), and the melt flow rate is 33 to 50, which overlaps the claimed range. 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.
As to claim 3, see copending claim 2.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764