DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 7/8/26, claims 1-8 are currently pending in the application.
The terminal disclaimer filed on 7/15/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Appl. Nos. 18450792, 18452015, 18887392, 18450012, 18450504, 18452808, 18452109, 18885900, 18449927 and 18452849 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al. (WO 2019/187725 A1).
At the outset, it is noted that the WIPO publication to Imamura is relied upon for date purposes and the US 11,926,753 patent is relied upon herein below as its English equivalent.
Regarding claims 1-5, Imamura teaches a fluororesin having a total number of functional groups per 106 main-chain carbon atoms, at preferably 6 or less and particularly preferably at 0, in order to obtain superior high-frequency electrical properties (Ab., col. 3, line 16-col. 4 line 6), wherein said functional groups may be of CF═CF2, -CF2H, -COF, -COOH, -COOCH3, -CONH2 (i.e., carbonyl group-containing group) and CH2OH present in the main chain or side chain (col. 5, lines 14-67). Thus, Imamura teaches type of groups and an upper limit for the total number thereof within the scope of the claimed invention.
Disclosed fluororesins include a copolymer of tetrafluoroethylene (TFE), hexafluoropropylene (HFP) and perfluoro (alkyl vinyl ether) (PAVE) (TFE/HFP/PAVE) copolymer. Disclosed mass ratio of the constituent units in TFE/HFP/PAVE copolymer is (75 to 99.8):(0.1 to 25):(0.1 to 25) (col. 7, lines 36-62), wherein said fluororesin has a melt flow rate (MFR), preferably of from 0.1-40 g/10 min (per ASTM D1238, 372oC) (col. 6, line 9- col. 8, line 54). Additionally, the small genus of disclosed PAVE monomers includes perfluoro(propyl vinyl ether) (PPVE) as a preferred species (col. 6, lines 28-57). Thus, Imamura teaches overlapping ranges for the MFR and the amounts of claimed monomer units for both copolymers.
Imamura is silent on fluororesins having the claimed MFR and amounts of monomer units in a single embodiment as claimed.
At the outset, it is noted that 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). See MPEP § 2144.05.
Given the teaching in Imamura on fluororesins of overlapping scope, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for any fluororesin within the scope of Imamura, including those comprising hexafluoropropylene (HFP) and perfluoro (propylvinyl ether) (PPVE) in claimed amounts, having the claimed MFR and the claimed type and number of functional groups.
Regarding claims 6-8, Imamura teaches injection and extrusion molding of the fluororesins, and forming articles such as coated electric wires (Ab., col. 9, line 55-col. 10, line 66, col. 11, lines 14-44).
Claims 1-5, 7, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al. (EP 1260526 A1) in view of Yokotani et al. (US 2019/0382544 A1).
Hiraga teaches an electric wire or a cable, which is coated with a fluorine-containing polymer comprising tetrafluoroethylene and hexafluoropropylene and, if necessary, perfluoroalkyl vinyl ether, wherein a melt flow rate (MFR) at 372oC is within a range from 0.1 to 100, and comprising 70 to 95% by weight of tetrafluoroethylene, 5 to 25% by weight of hexafluoropropylene and 0 to 20% by weight of perfluoroalkyl vinyl ether, such as perfluoropropyl vinyl ether (Ab., [0011]-[0015]).
Hiraga is silent on a fluoropolymer having a melt flow rate, monomer units in claimed amounts, and having a number and type of functional groups as in the claimed invention.
As stated in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
The secondary reference to Yokotani teaches fluororesins suitable for wire insulation, having a number, i.e., the sum of all unstable groups, e.g., -COF, -COOH, -COOCH3, -CONH2 (read on carbonyl group containing CH2OH, -CF2H, and -CF═CF2 groups, at 20 or smaller or 0, per 106 carbon atoms, in order to achieve a low dissipation factor within a high frequency region (10 GHz or higher) [0172], [0230].
In view of the advantages taught in Yokotani, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for fluoropolymers comprising units in claimed amounts, having a MFR and HFP/PPVE units with the ranges as prescribed by Hiraga, including those of the claimed invention, absent evidence to the contrary.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Brothers et al. (US 2007/0292685 A1), in view of Imamura et al. (WO 2019/187725 A).
Regarding claims 1-5, Brothers teaches fluoropolymers for producing insulated wires, comprising units of tetrafluoroethyelene (TFE), hexafluoropropylene (HFP) and perfluoro (alkyl vinyl ether) (PAVE), such as a TFE/HFP/PAVE terpolymer, wherein the HFP content is about 6-17 wt. %, and the PAVE, e.g., perfluoro (propyl vinyl ether) (PPVE), content is about 0.2 to 3.0 wt. %, the remainder being TFE to total 100 wt % of the copolymer, and having a melt flow rate (MFR) of at least 10, and most preferably, at least 26g/10min (per ASTM D-1238) (Ab., [0013]). Thus, the monomer units and amounts thereof, and the melt flow rate of Brothers’ fluoropolymers overlap in the scope with those of the claimed invention.
Brothers further teaches that the polymer end groups are -CF₃, that unstable groups e.g., -CONH₂, -COOH, -COF may be converted by fluorination and that hydrogen containing groups, COF, -COOH and -CF=CF2 are absent as a result of fluorination [0016]-[0017].
Brothers is silent on a fluoropolymer having a total number and type of functional groups as claimed within the claimed upper limit.
As stated in paragraph 7 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Incorporating the discussion on Imamura from paragraphs 4 and 5 above, and given the generic teaching in Brothers on fluoropolymers suitable for forming an insulated wire, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for fluoropolymers having a MFR and units in claimed amounts, and having a number of functional groups as prescribed by Imamura so as to provide for a superior high-frequency electrical properties, absent evidence to the contrary.
Regarding claims 6-8, Brothers teaches the use of the fluoropolymers in injection molding, and extrusion molding to form an insulated wire coating (Ab., [0018], [0027]).
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 1-9 of copending Application No. 19/058232 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 1 is as follows:
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Although the copending claims are silent on a copolymer having the type and number of functional groups as claimed, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970). To that end, according to the copending disclosure (PGPUB: [0050]-[0052]), the fluorine-containing copolymer may have a total number of a carbonyl group-containing terminal group, -CF═CF2 and -CH2OH is 90 or less per 106 main-chain carbon atoms, and may not have e -CF2H, or may have 50 or more of these groups.
Given that the copending claims recite a copolymer having monomer units and MFR of overlapping scope, and given the teaching on the total number of functional groups per 106 main-chain carbon atoms in the copending disclosure, it would have been obvious to one of ordinary skill in the art to provide for a copolymers within the scope of the claimed invention (obviates claims 1-5).
Regarding claims 6-8, copending claims 7 and 9 obviate the claimed limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
In view of the filing of a terminal disclaimer, the double patenting rejections of record, except those over claims in copending Appl. No. 19/058232. Applicant’s arguments and the Declaration filed on 7/8/26 have been duly considered.
Referring to the Declaration and to the advantageous results of the claimed fluorine-containing copolymer in the disclosure, Applicant argues that the primary documents to Imamura, Hiraga and Brothers are very broad compared to claim 1, the documents do not disclose regulating the contents of HFP and PPVE, MFR and the number of functional groups in combination to fall within claimed ranges to provide the advantageous results of the claimed copolymer. Applicant further contends that the primary documents do not disclose examples that fall within the scope of claim 1, and that the comparative Examples of the present disclosure are closer in scope to claim 1 than the closest actual embodiment of the prior art, rendering the comparisons highly probative of nonobvious.
In response, the general disclosure to Imamura teaches fluororesins based on tetrafluoroethylene (TFE) (70-99.8 mass%), hexafluoropropylene (HFP) (0.1-25 mass%) and perfluoro (alkyl vinyl ether) (0.1-25 mass%), with perfluoro(propyl vinyl ether) (PPVE) being a preferred species, and TFE/HFP/PAVE having a mass ratio of 75 to 98/1.0 to 15/1.0 to 10 as being more preferred. Disclosed melt flow rate (MFR) is, preferably, of from 0.1-40, and a total functional groups CF=CF2, -CF2H, -COF, -COOH, -COOCH₃, -CONH₂ (i.e., carbonyl group-containing group) and CH₂OH present per 10⁶ main-chain carbon atoms at preferably, 6 or less, and particularly preferably at 0, in order to obtain superior high-frequency electrical properties. In addition, Imamura teaches Examples 6 and 7 having HFP content and MFR of overlapping scope with the claimed invention.
Hiraga teaches a fluorine-containing copolymer having HFP and PPVE contents, and MFR of overlapping scope, while Yokotani teaches that limiting the number of unstable groups, including those of the claimed invention, to an upper limit of 20 per 10⁶ main-chain carbon atoms is advantageous in achieving a low dissipation factor within a high frequency region. Thus, the combination obviates the claimed invention.
Brothers teaches TFE/HFP/PAVE terpolymers having monomer contents and MFR of overlapping scope, and that unstable end groups may be converted by fluorination, while Imamura teaches limiting the functional groups within the claimed upper limit as being advantageous in obtaining superior high-frequency electrical properties. Thus, the combination, as a whole, teaches the claimed limitations. In disclosed Example 1, HFP and MFR fall within the claimed ranges.
Although the primary documents fail to teach all the claimed elements in a single embodiment, noting that only obviousness rejections have been made, a teaching contained in a reference's broader disclosure may be relied upon despite not appearing in the reference's examples. Disclosed examples and preferred embodiments do not constitute teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. V. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
As an initial matter, it is noted that inventive Example 3 (Table 3) has a -CF2H content of 480, which falls outside of the claimed upper limit of 120 of claim 5. Despite this value being so high, many of the properties are comparable to those of the other inventive Examples.
It is further noted that Examples 1-4 in the disclosure demonstrate one or more superior properties when compared to Comp. Examples 1-5 (Tables 3 and 4). However, the data on record in support of the superior performance is limited, at best, to copolymers having monomer units TFE, HFP (10.5-11.4 mass%) and PPVE (1.5-2.2 mass%), with a MFR of 24.2-35.0 g/10 min, having a total number of claimed groups, at best, at <39 per 10⁶ main chain carbon atoms. It is not clear why this limited data would be considered reasonably representative of claim 1, which is of a much broader scope, i.e., the data on record is not reasonably commensurate in scope with the claim language to overcome the rejections of record.
As for the arguments of double patenting rejections over copending Appl. No. 19/058232, Applicant’s arguments are not deemed persuasive. The claimed invention is directed to a fluorine-containing copolymer and for reasons stated in rejections of record and herein above, the claimed copolymer is deemed obvious over the copolymer component of the composition in claims of the copending application.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights