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 .
Response to Amendment
This action is responsive to applicant’s amendment filed 10/2/2025.
Claims 1-4, 8-10, 12-14, 17-20, 23, 27-31 are pending. Claims 8-10, 12-14, 17-20, 22, and 23 are withdrawn from consideration as being drawn to nonelected inventions.
The previous rejection of claims 1, 3, 4, and 24-28 under 35 U.S.C. 102(a)(1) as being anticipated by the Material Safety Data Sheet (MSDS) of 1,1,1,2,2,3,4,5,5,5-Decafluoropentane (2H,3H-Decafluoropentane) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 1, 3, 4, and 24-28 under 35 U.S.C. 102(a)(1) as being anticipated by the SOLVENT, CLEANING, 1, 1, 1,2,3,4,4,5,5,5-DECAFLUOROPENTANE, SPECIFICATION- NASA 2001) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 1- 4, and 24-28 under 35 U.S.C. 102(a)(1) as being anticipated by Yamada et al (US6,312,759) is withdrawn in view of applicant’s amendment.
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 § 102
Claims 1, 3- 4, and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Katano et al (Journal of Electroanalytical Chemistry 788 (2017) 232–234).
Regarding claims 1 and 31, Katano discloses a fluorine-containing substance (tetrabutylammonium bis(nonafluorobutanesulfonyl)imide (TBABNSI)) dissolved in 1,1,1,2,2,3,4,5,5,5-Decafluoropentane (C5F10). See pages 232-233. The tetrabutylammonium bis(nonafluorobutanesulfonyl)imide (TBABNSI) forms at least one fragment ion having a gas chromatography mass spectrometry (GC-MS) peak selected from the group consisting of 69 mass-to-charge ratio (m/Z) for CF3, 100 m/Z for C2F4, 119 m/Z for C2F5, 131 m/Z for C3F5, 169 m/Z for C3F7, 181 m/Z for C4F7, and 219 m/Z for C4F9
Regarding claims 3-4, Katano discloses the claimed solvent but is silents with respect to the solvent’s normal boiling point. However, the solvent of prior art is identical or substantially identical that set forth by applicant. Therefore, the solvent of Katano would possess the same properties as claimed. “Product of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). Once the examiner provides a rationale tending to show that the claimed product appears to be similar to that of the prior art, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 789, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See also MPEP 2113.
Claims 1, 3- 4, and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brothers et al (US2009/0281261).
Regarding claims 1 and 31, Brothers discloses a fluorine-containing substance (fluoropolyether carboxylic acid or salt or Formula I, para 0007) dissolved in 1,1,1,2,2,3,4,5,5,5-Decafluoropentane (2,3-dihydrodecafluoropentane (Vertrel™ XF). See page para 0067. The tetrabutylammonium bis(nonafluorobutanesulfonyl)imide (TBABNSI) forms at least one fragment ion having a gas chromatography mass spectrometry (GC-MS) peak selected from the group consisting of 69 mass-to-charge ratio (m/Z) for CF3, 100 m/Z for C2F4, 119 m/Z for C2F5, 131 m/Z for C3F5, 169 m/Z for C3F7, 181 m/Z for C4F7, and 219 m/Z for C4F9.
Regarding claims 3-4, Brothers discloses the claimed solvent but is silents with respect to the solvent’s normal boiling point. However, the solvent of prior art is identical or substantially identical that set forth by applicant. Therefore, the solvent of Brothers would possess the same properties as claimed. “Product of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). Once the examiner provides a rationale tending to show that the claimed product appears to be similar to that of the prior art, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 789, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See also MPEP 2113.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Brothers et al (US2009/0281261) in view of Ito et al. (US20180043282).
Regarding claim 2, Brothers discloses a fluorine-containing substance (fluoropolyether carboxylic acid or salt or Formula I, para 0007) dissolved in 1,1,1,2,2,3,4,5,5,5-Decafluoropentane (2,3-dihydrodecafluoropentane (Vertrel™ XF). Brothers does not disclose the solvent further comprises at least one other compound selected from hydrofluorocarbons, perfluorocarbons, fluorine-containing ethers, and fluorine-containing alcohols. Ito discloses fluorine-containing solvents including methoxyperfluoroheptene isomeric mixture—Vertrel® Suprion and 1,1,1,2,2,3,4,5,5,5-decafluoropentane—Vertrel® XF (para 0044-45) are used as extract solvents (para 0002, 0044-45). Therefore, it would have been obvious to a skilled person in the art would choose both methoxyperfluoroheptene isomeric mixture—Vertrel® Suprion and 1,1,1,2,2,3,4,5,5,5-decafluoropentane—Vertrel® XF as extract solvents to analyze content of the fluorine-containing substance, with a reasonable expectation of success. “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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claims 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Brothers et al (US2009/0281261).
Regarding claims 27-30, Brothers discloses a fluorine-containing substance (fluoropolyether carboxylic acid or salt or Formula I, para 0007) dissolved in 1,1,1,2,2,3,4,5,5,5-Decafluoropentane (2,3-dihydrodecafluoropentane (Vertrel™ XF). Brothers does not specifically disclose the fluorine-containing substance is a contaminant from the surface of the-a melt-molded fluororesin product, a fluororesin degradation product of thermal decomposition, a degradation product of pyrolysis of a fluororesin backbone or an unstable terminal group of a fluororesin chain, or a non-volatile residue of an extraction residue obtained from the surface of a fluororesin melt-molded product. However, Brothers discloses using fluorine containing solvent 1,1,1,2,2,3,4,5,5,5-Decafluoropentane (2,3-dihydrodecafluoropentane (Vertrel™ XF) for gas chromatography mass spectrometry for analyzing fluorine-containing substance content (para 0089) and the fluorine-containing substance of Brothers is a precursor for producing melt-processible fluoropolymers, which can be melt into shaped articles such as films, fibers, and tubes etc. that exhibit sufficient strength and toughness to be useful for their intended purpose using conventional processing equipment such as extruders and injection molding machines (para 0015). Therefore, it would have been obvious to a skilled person in the art would choose fluorine containing solvent 1,1,1,2,2,3,4,5,5,5-Decafluoropentane (2,3-dihydrodecafluoropentane (Vertrel™ XF) to analyze content of any fluorine-containing substance, including a contaminant from the surface of the-a melt-molded fluororesin product, a fluororesin degradation product of thermal decomposition, a degradation product of pyrolysis of a fluororesin backbone or an unstable terminal group of a fluororesin chain, or a non-volatile residue of an extraction residue obtained from the surface of a fluororesin melt-molded product, with a reasonable expectation of success.
Response to Arguments
Applicant’s arguments filed 10/2/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 HAIDUNG D NGUYEN whose telephone number is (571)270-5455. The examiner can normally be reached M-Th: 10a-3p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
12/17/2025
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