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.
Claim Rejections - 35 USC § 112
Claims 1, 2, 4-9, and 11-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection since there does not appear to be support in the specification as originally filed for a weight ratio of (I) to (II) of 2:8 to 9:1. While the upper limit of 9:1 is supported by paragraphs 0323-0324 of the specification as originally filed, the lower limit of 2:8 does not appear to be supported. While Example 4-4 is shown in Table 1 as containing a weight ratio of 8:2 for chemical solutions B and E, chemical solution B contains compound (A) that correspond to formula (I-1) in claim 1 as well as compounds (B) and (D) that correspond to perfluoropolyether group-containing silane compounds having an OCF2 unit according to formula (B1) and formula (C1), respectively. As illustrated in the Table set forth on page 2 in the reply filed 31 October 2025, the (I):(II) weight ratio of 2:8 does not account for the (II) compounds present in chemical solution B.
Claim Rejections - 35 USC § 103
Claims 1, 2, 4-9, and 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hoshino et al. (WO 2019/039186 A1) in view of Ishii et al. (WO 2017/130973 A1).
Note: since WO 2019/039186 A1 and WO 2017/130973 A1 were not published in the English language, citations in this action refer to US 2020/0157376 A1 and US 2019/0031828 A1, respectively, which are publications based on their respective US national stage applications.
Hoshino et al. is directed to a fluorinated ether coating composition capable of forming a surface layer on a substrate having water/oil repellency (paragraphs 0001-0002). The composition comprises a compound having a fluorinated ether substituent and hydrolysable silane group bonded to a ring (paragraphs 0010-0021). The composition comprises this compound and another fluorinated ether compound (paragraph 0201). The other fluorinated ether compound may be a known fluorinated ether compound used in the same application (paragraph 0202). The composition may contain a solvent (paragraph 0214-0215). The substrate may be a display screen or lens (paragraph 0230), i.e., an optical member. The composition may be applied by vacuum deposition (paragraph 0234). The composition may be impregnated into a pellet (paragraph 0234).
The compound having a fluorinated ether substituent and hydrolysable silane group bonded to a ring is represented by the formula A-O-(Rf1O)m-Rf2-Z1-Q1-(R1)b (paragraph 0050). The ring of this compound, i.e. Q1, may be an isocyanate ring (paragraph 0141). R1 is a monovalent organic group having at least one hydrolysable silyl group (paragraph 0017), such as -Q2-[SiR4nL3-n]p (paragraph 0024). Z1 may be a group represented by -(CR2R3)c- wherein both R2 and R3 may be hydrogen and c may be one (paragraphs 0015, 0019, and 0020), i.e. -CH2-. Rf2 is a linear fluoroalkylene group (paragraph 0014), preferably -CF2CF2- (paragraph 0128). A preferred structure for (Rf1O)m is -(CF2CF2CF2O)m4 wherein m4 is an integer from 2 to 500 (paragraphs 0103 and 0116). Component A is a C1-20 perfluoroalkyl group (paragraph 0010), which includes CF3CF2CF2-. That is, formula A-O-(Rf1O)m-Rf2-Z1-Q1-(R1)b is a genus that encompasses formula (I-1) of instant claim 1.
It would have been obvious to one of ordinary skill in the art to use any of the groups disclosed by Hoshino et al. suitable for use as A, Rf1, Rf2, Z1, Q1, and R1 in formula (A-O-(Rf1O)m-Rf2-Z1-Q1-(R1)b.
Regarding the limitation is claim 1 directed to the weight ratio of (I) to (II), Hoshino et al. teach a content of 60-100 wt% of their compound having a fluorinated ether substituent and hydrolysable silane group bonded to a ring and 0-40 wt% of another fluorinated ether compound. These ranges overlap the weight ratio recited in claim 20 and the courts have held that a prima facie case of obviousness exists for overlapping ranges. See MPEP 2144.05.
The limitations of claims 2 and 4 are met since these claims, while further limiting groups found in formula (I-2), do not require the surface-treating agent to comprise formula (I-2).
Regarding claims 5-7, Hoshino et al. teach that Q2 is preferably a saturated hydrocarbon group having 2 to 12 carbon atoms (paragraph 0147), which includes -C2H4-, -C3H6-, and -C4H8-, and L is preferably a C1-4 alkoxy group (paragraph 0152). That is, the structure -Q2-[SiR4nL3-n] satisfies the limitations of claim 5 when Ra, Rb, and Rc are alkoxy groups having 1-4 carbon atoms and v is zero. The structure further reads on -L2-Si(OR6)3 of claim 6 when Q2 is -C2-4H4-8-, L is C1-4 alkoxy, and n is zero. Moreover, this structure satisfies the limitations of claim 7 wherein Ra is an alkoxy group having 1 to 4 carbon atoms, s is three, t=u=v=zero, and n is one.
The limitations of claim 8 are satisfied since p may be an integer of more than one in the structure -Q2-[SiR4nL3-n]p.
While Hoshino et al. teach that their composition contains a second fluorinated ether compound, the reference does not teach that this second fluorinated ether compound has a structure represented by one of (A1) and (A2), (B1) and (B2), (C1) and (C2), or (D1) and (D2) as recited in claim 1.
Ishii et al. is directed to a surface treating agent comprising a silane compound containing a perfluoropolyether group that provides excellent water- and oil-repellency (paragraphs 0001-0002). The silane compound containing a perfluoropolyether group may be at least one of (A1), (A2), (B1), (B2), (C1), (C2), (D1), and (D2) (paragraph 0012), compounds that correspond to (A1), (A2), (B1), (B2), (C1), (C2), (D1), and (D2) of instant claim 1. PFPE in compounds (A1), (A2), (B1), (B2), (C1), (C2), (D1), and (D2) in Ishii et al. contain -OCF2 when d is at least 1 (paragraph 0013).
It would have been obvious to use one of the silane compounds containing a perfluoropolyether group of Ishii et al. as the second fluorinated ether compound since the silanes of Ishii et al. are used as surface treating agents to provide water- and oil-repellency and Hoshino et al. explicitly teach that known fluorinated ether compound used in the same application (i.e., as a surface treatment providing water/oil repellency) may be used as the second fluorinated ether compound.
Additionally, it would have been obvious to use a mixture of silanes disclosed by Ishii et al. as the second fluorinated ether compound of Hoshino et al. since: (i) Ishii et al. teach that their surface treating agent is at least one of the disclosed compounds which suggests using more than one, and (ii) the courts have held that that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (see MPEP 2144.06).
Regarding claim 17, the limitation of this claim is met since n1 in the compounds of Ishii et al. may be 3 (paragraph 0019).
Regarding claim 18, the limitation of this claim is met since l2 in the compounds of Ishii et al. may be 3 (paragraph 0070).
Response to Arguments
Applicant's arguments filed 31 October 2025 have been fully considered but they are not persuasive.
The applicant argues that the invention as claimed requires compound II to be a mixture of a PFPE compound having an Si atom at only one end of the molecule and a PFPE compound having an Si atom at both ends of the molecule while Ishii et al. do not teach or suggest using a mixture of PFPE compounds having Si atom and one end and compounds having Si atoms at both ends. The applicant asserts that the data presented in the specification illustrates unexpected results that are commensurate in scope with the claims.
This is not persuasive for the following reasons. The unexpected results relied on to demonstrate non-obviousness must be commensurate in scope with the claims, with the burden resting on the applicant to explain the proffered data so as to establish that the results are unexpected and significant (see MPEP 716.02(b)). While the results in Table 2 illustrate improvements in the dynamic friction coefficient, erasure durability, and steel wool friction durability that would not have been expected by one of ordinary skill in the art based on the teaching by Ishii et al. of the functional equivalence a perfluoropolyether group containing compound with a silane at one end and a mixture of perfluoropolyether group containing compounds with silanes at one and both ends, applicant has failed to meet this burden since the applicant has not demonstrated the claims to be commensurate in scope with the showing. Formulae (I-1) and (I-2) as well as (A1) through (D1) are broad structures and the applicant has not offered any reason or argument that the specific compounds used in the Examples of the specification provide evidence of non-obviousness for the more generic formulae recited in the claims. For example, while the claims recite that compounds (II) may be of formulae (A1) and (A2), (B1) and (B2), (C1) and (C2), or (D1) and (D2), the showing only employs compounds J and K:
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These compounds read on formulae (B1) and (B2) with very specific structures for X105, as opposed to formulae (B1) and (B2) in the claims wherein X105 may be a single bond or any di- to decavalent organic group. While the non-obviousness of a broad claim can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would have been able to determine a trend in the exemplified data allowing the artisan to reasonably extend the probative value of the results (MPEP 716.02(d)I.), the burden is on the applicant to explain the proffered data (MPEP 716.02(b)).
Additionally, the fourteen exemplary embodiments listed in Table 1 are formed from a combination of (a) either chemical solutions A or B and (b) any one of chemical solutions C, D, or E. Chemical solutions A and B are mixtures of particular (I) compound(s) and particular (II) compounds while chemical solutions C, D, and E are mixtures of particular (II) compounds - with the mixtures in each case being reported as molar, rather than weight, ratios. As such, the weight ratios listed in Table 1 cannot be readily converted to weight ratios of compound (I) to compound (II), making it problematic to determine unexpected results arising from the weight ratio in the absence of explanation by the applicant - whose burden it is to explain proffered data.
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 RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787