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 .
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 7/9/26, claims 1-10 are currently pending in the application.
The terminal disclaimer filed on 7/16/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration dates of Appl. Nos. 18892976, 18451921, 18888343, 18889006, 19013016, 18885918, 18888421, 18889631, 18893024, 18452075, 18891479, 18888452, 18893049, 18888922, 18895509, 18895522, 18449898, 18449990, 18450496 and 18451213 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 1-5, 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al. (WO 2019/187725 A1, of record).
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 1-4, Imamura teaches fluororesins, such as 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), and disclosed 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, and having the claimed MFR.
Regarding claim 5, Imamura teaches a fluororesin having a total number of functional groups per 106 main-chain carbon atoms, at preferably 6 or less, in order to obtain superior high-frequency electrical properties (Ab., col. 3, line 16-col. 4 line 6), wherein said functional groups include -CF═CF2, -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, ref. claim 1).
Regarding claims 7-10, Imamura teaches injection, transfer and extrusion molding of the fluororesins for forming articles, including a coated electric wire (Ab., col. 9, line 55-col. 10, line 66).
Claims 1-4, 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al. (EP 1260526 A1).
Regarding claims 1-4, Hiraga teaches 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 and monomer units in claimed amounts in a single embodiment as claimed.
As stated in paragraph 9 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.
Given the teaching in Hiraga on MFR and monomer unit amounts 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 (propyl vinyl ether) (PPVE) in claimed amounts, having the claimed MFR.
Regarding claim 6, although Hiraga is silent on the number of -CF2H groups as in the claimed invention, Hiraga teaches fluororesins containing a very small amount of an alkali metal and an alkali earth metal, not substantially having unstable terminal groups in the fluorine-containing polymer, such as, with terminal groups substantially comprising -CF2H ([0017]-[0022], Example 1). A skilled artisan would reasonably expect a substantial or an entire total number of terminal -CF2H groups in fluroresins having monomer units and MFR overlapping scope to fall within the scope of the claimed invention, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claims 7-10, disclosed coated wire of Example 3 is produced molding using an extruder (Ab., [0036]). As such, the recitations “extrusion formed” and transfer molded” in claims 7 and 8 are product-by-process limitations in claims drawn to articles. It is well settled that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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 art product was made by a different process." (MPEP 2113, quoting In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985)). Therefore, absent probative evidence of criticality regarding the presently claimed "extrusion formed" or "transfer molded" feature and given that Hiraga meets the requirements of the claimed articles, Hiraga clearly fulfills the requirements of said claims.
Claims 1-4, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi et al. (US 2017/0204233 A1).
Regarding claims 1-4, Nakanishi teaches a film having excellent mechanical strength and abrasion resistance, comprising a fluororesin (II) (Ab.), said fluororesin having a melt flow rate (MFR) at 372oC, in the range of 0.1 to 100g/10 min [0055], and comprising units of tetrafluoroethylene (TFE), hexafluoropropylene (HFP) and perfluoro(alkyl vinyl ether), at 80-98.5:1.5 to 20:0-0.9 on a mol% basis [0052]-[0053]. Disclosed perfluoro(alkyl vinyl ether)s preferably include C1-C3 perfluoro groups, i.e., encompass perfluoro(propyl vinyl ether (PPVE) [0045]-[0047].
Nakanishi is silent on a fluororesin having a melt flow rate and monomer units in claimed amounts in a single embodiment as in the claimed invention.
As stated in paragraph 9 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.
Given the teaching in Nakanishi on suitable MFR and suitable monomer unit amounts in the fluororesin, 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 Nakanishi, including those comprising hexafluoropropylene (HFP) and perfluoro (propylvinyl ether) (PPVE) in claimed amounts, having the claimed MFR. The calculated mass% ranges for the disclosed flouroresins overlap in scope with those of the claimed invention. For instance, for a TFE:HFP:PPVE fluororesin having units at 92.78:7.0:0.22 mol%, the calculated mass% ratio is 89.33:10.10:0.55 and having a MFR of overlapping scope would read on the claimed fluorine-containing copolymer.
Regarding claims 7 and 8, Nakanishi teaches extrusion melt molding to form a film [0080]-[0085]. Additionally, the recitation “transfer molded” in claim 8 is a product-by-process limitation in a claim drawn to an article. It is well settled that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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 art product was made by a different process." (MPEP 2113, quoting In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985)). Therefore, absent probative evidence of criticality regarding the presently claimed "extrusion formed" or "transfer molded" feature and given that Hiraga meets the requirements of the claimed articles, Hiraga clearly fulfills the requirements of said claims.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al. (EP 1260526 A1) in view of Isaka et al. (US 2017/0008986 A1).
The discussion on Hiraga from preceding paragraphs, as applied to claim 1, is incorporated herein by reference. Hiraga further teaches unstable terminal groups, such as -COOH, -COF and -CF=CF2 in the fluorine-containing polymer is at most 20, i.e., 90 or less, per 106 carbon atoms of the polymer [0022].
Hiraga is silent on the number of -CF2H or -CH2OH groups per 106 carbon atoms as in the claimed invention.
In a related field of endeavor, Isaka teaches fluororesins such as tetrafluoroethylene/hexafluoropropylene copolymers and terpolymers thereof including perfluoro(propyl vinyl ether) units [0030]-[0038]. Isaka further teaches that a sum of -CF2H and unstable end groups of 120 or less, per 106 carbon atoms, as preventing the formation of a lump during the formation of an electric wire. said unstable end groups including -COF group, a -COOH group, a -COOCH3 group, a -CONH2 group, and a -CH2OH group [0059]-[0061].
In view of the advantage taught in Isaka, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to limit the number of -CH2OH and -CF2H groups in Hiraga’s fluororesins, including to those within the scope of the claimed invention. As stated in paragraph 9 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.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hiraga et al. (EP 1260526 A1) in view of Imamura et al. (WO 2019/187725 A1).
The discussion on Hiraga from preceding paragraphs, as applied to claim 1, is incorporated herein by reference.
Although Hiraga is silent on a molded article as claimed, incorporating the discussion on Imamura from paragraphs 4 and 5 above, Imamura is in a related field of endeavor and teaches the suitability of fluororesins, of overlapping scope with those of Hiraga, for use in extrusion moldings and in transfer moldings alike (col. 9, line 55-col. 10, line 66). Thus, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention to utilize Hiraga’s fluororesins in extrusion moldings or in transfer moldings. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Response to Arguments
In view of the filing of a terminal disclaimer, the double patenting rejections of record are all withdrawn. Applicant’s arguments and the Declaration filed on 7/9/26 have been duly considered.
Referring to the Declaration, to the data in the disclosure and to the advantageous results of the claimed fluorine-containing copolymer therein, Applicant argues that the primary documents to Imamura, Hiraga and Nakanishi are all very broad compared to claim 1, the documents do not disclose regulating the contents of HFP and PPVE and MFR 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) (PAVE) (0.1-25 mass%) with perfluoro(propyl vinyl ether) (PPVE) being a preferred species thereof. Additionally, TFE/HFP/PAVE having a mass ratio of (75-98)/(1.0-15)/(1.0 to 10) is taught as being more preferred. Disclosed melt flow rate (MFR) is, preferably, of from 0.1-40.
Hiraga teaches a copolymer comprising units of TFE (70 to 95% wt.%), HFP (5 to 25 wt.%) and PAVE (0 to 20 wt.%), e.g., PPVE, having a MFR within a range from 0.1 to 100.
Nakanishi teaches a fluororesin comprising units of TFE, HFP and PAVE at (80-98.5):(1.5 to 20):(0-0.9) on a mol% basis, with PPVE being a preferred species, having a melt flow rate of 0.1 to 100g/10 min. The calculated wt.% of the monomer units fall within the claimed range as shown in the rejections above as shown in the rejections.
Although the primary documents fail to teach all the claimed elements in a single embodiment, it is noted that Examiner has only relied on obviousness rejections on the basis that all the primary documents teach the claimed elements in overlapping ranges. 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 a 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 2 has a -CF2H content at <9, which falls outside of the claimed lower limit of 50 of claim 6 (Table 3). Despite the -CF2H content in Example 2 being so low, the properties are comparable to those of the inventive Examples 1, 3 and 4.
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 (9.6-11.3 mass%) and PPVE (0.4-0.6 mass%), with a MFR of 1.5-7.2 g/10 min and having functional groups within the scope of Examples 1-4. It is not clear why this limited data would be considered reasonably representative of claim 1, which is of a much broader scope. In other words, the data on record is not reasonably commensurate in scope with the claim language to overcome the rejections of record.
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
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