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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/15/2025 has been entered.
Claims 1-4, 8-10, 12-14, 17-20, 23-28 are pending.
Claims 8-10, 12-14, 17-20, and 23 are withdrawn from consideration as being drawn to nonelected inventions.
The previous rejection of claims 1, 3, 4, 6, and 7 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 maintained in view of applicant’s amendment.
The previous rejection of claims 1, 3, 4, 6, and 7 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 maintained in view of applicant’s amendment.
The previous rejection of claims 1, 3, 4, 6, and 7 under 35 U.S.C. 102(a)(1) as being anticipated by Yamada et al (US6,312,759) is maintained in view of applicant’s amendment.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/15/2025 has been considered by the examiner. Initialed copies accompany this 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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 4, and 24-28 are rejected 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).
The Material Safety Data Sheet (MSDS) discloses 1,1,1,2,2,3,4,5,5,5-Decafluoropentane that has a normal boiling point of 56° C.
The recitations of "for gas chromatography mass spectrometry of fluorine-containing substances", “fluorine-containing substance is adhered to a surface of a fluoro resin melt-molded product”, “the fluorine-containing substance is soluble in the fluorine-containing solvent”, “the fluorine-containing substance from the surface of the fluororesin melt-molded product is dissolved in the solvent”, “the fluorine-containing substance from the surface of the fluororesin melt-molded product”, “ the fluorine-containing substance is a contaminant from the surface of the melt-molded fluororesin product”, and “the fluorine-containing substance comprises a fluororesin degradation product of thermal decomposition” recited in claims 1, 24-28 have not been given patentable weight because the recitation occurs in the preamble and/or directs to the intended use of the claimed invention. The law held that a preamble is generally not accorded any patentable weight where it merely recites the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 1, and a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)50, 152, 88 USPQ 478,481 (CCPA 1951). In this case, the solvent 1,1,1,2,2,3,4,5,5,5-Decafluoropentane is disclosed in the prior art, then it is capable of performing the intended use as recited in the claims. In addition, the solvent of prior art is identical or substantially identical that set forth by applicant. Therefore, the solvent of prior art 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).
Claims 1, 3, 4, and 24-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SOLVENT, CLEANING, 1, 1, 1,2,3,4,4,5,5,5-DECAFLUOROPENTANE, SPECIFICATION- NASA 2001).
The document discloses 1,1,1,2,2,3,4,5,5,5-Decafluoropentane that has a normal boiling point of 56° C and is used as a solvent.
The recitations of "for gas chromatography mass spectrometry of fluorine-containing substances", “fluorine-containing substance is adhered to a surface of a fluoro resin melt-molded product”, “the fluorine-containing substance is soluble in the fluorine-containing solvent”, “the fluorine-containing substance from the surface of the fluororesin melt-molded product is dissolved in the solvent”, “the fluorine-containing substance from the surface of the fluororesin melt-molded product”, “ the fluorine-containing substance is a contaminant from the surface of the melt-molded fluororesin product”, and “the fluorine-containing substance comprises a fluororesin degradation product of thermal decomposition” recited in claims 1, 24-28 have not been given patentable weight because the recitation occurs in the preamble and/or directs to the intended use of the claimed invention. The law held that a preamble is generally not accorded any patentable weight where it merely recites the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 1, and a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)50, 152, 88 USPQ 478,481 (CCPA 1951). In this case, the solvent 1,1,1,2,2,3,4,5,5,5-Decafluoropentane is disclosed in the prior art, then it is capable of performing the intended use as recited in the claims. In addition, the solvent of prior art is identical or substantially identical that set forth by applicant. Therefore, the solvent of prior art 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).
Claims 1- 4, and 24-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada et al (US6,312,759).
Yamada discloses a rinse cleaning agent that contains 1,1,1,2,2,3,4,5,5,5-Decafluoropentane that has a normal boiling point of 56° C (col 12, ln 46) along with other solvents including fluorinated hydrocarbon or cyclic trihydrofluorocarbon, and perfluorocarbons such as perfluorohexane and perfluoroheptane (col 12, ln 30-54).
The recitations of "for gas chromatography mass spectrometry of fluorine-containing substances", “fluorine-containing substance is adhered to a surface of a fluoro resin melt-molded product”, “the fluorine-containing substance is soluble in the fluorine-containing solvent”, “the fluorine-containing substance from the surface of the fluororesin melt-molded product is dissolved in the solvent”, “the fluorine-containing substance from the surface of the fluororesin melt-molded product”, “ the fluorine-containing substance is a contaminant from the surface of the melt-molded fluororesin product”, and “the fluorine-containing substance comprises a fluororesin degradation product of thermal decomposition” recited in claims 1, 24-28 have not been given patentable weight because the recitation occurs in the preamble and/or directs to the intended use of the claimed invention. The law held that a preamble is generally not accorded any patentable weight where it merely recites the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 1, and a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)50, 152, 88 USPQ 478,481 (CCPA 1951). In this case, the solvent 1,1,1,2,2,3,4,5,5,5-Decafluoropentane is disclosed in the prior art, then it is capable of performing the intended use as recited in the claims. In addition, the solvent of prior art is identical or substantially identical that set forth by applicant. Therefore, the solvent of prior art 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).
Response to Arguments
Applicant's arguments filed 8/29/2024 have been fully considered but they are not persuasive.
Applicant argues that the cited references do not does not disclose, teach, or suggest 1,1,1,2,2,3,4,5,5,5-decafluoropentane as being appropriate as a solvent for gas chromatography mass spectrometry of a fluorine-containing substance adhered to a surface of a fluoro resin melt-molded product, or can dissolve the fluorine-containing substances of the present application as recited in the pending claims, and therefore is not anticipated nor rendered obvious by the cited references.
The examiner respectfully disagrees with applicant’s arguments.
The recitation of” the solvent is for gas chromatography mass spectrometry of a fluorine-containing substance" “fluorine-containing substance is adhered to a surface of a fluororesin melt-molded product”, “the fluorine-containing substance is soluble in the fluorine-containing solvent”, “the fluorine-containing substance from the surface of the fluororesin melt-molded product is dissolved in the solvent”, “the fluorine-containing substance from the surface of the fluororesin melt-molded product”, “ the fluorine-containing substance is a contaminant from the surface of the melt-molded fluororesin product”, and “the fluorine-containing substance comprises a fluororesin degradation product of thermal decomposition” directs to the intended use of the claimed invention. The law held that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)50, 152, 88 USPQ 478,481 (CCPA 1951). A reference may be directed to an entirely different problem than the one addressed by the inventor, or may be from an entirely different field of endeavor than that of the claimed invention, yet the reference is still anticipatory if it explicitly or inherently discloses every limitation recited in the claims. See Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)) and State Contracting & Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003). The MSDS, the NASA 2001 reference, and Yamada et al (US6,312,759) each discloses every limitation recited in the claims (solvent 1,1,1,2,2,3,4,5,5,5- decafluoropentane) and therefore is anticipatory. The law also held that "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003). The solvent 1,1,1,2,2,3,4,5,5,5-Decafluoropentane is disclosed in the prior art, then it is capable of performing the intended use as recited in the claims.
Appllicant also argues that MSDS does not disclose, teach, or suggest that the evaporation residue of 1,1,1,2,3,4,4,5,5,5- decafluoropentane does not leave any impurity component, and therefore, which makes it easy to separate the residue from the fluorine-containing substance in GC/MS analysis. It is noted that the features upon which applicant relies (i.e., evaporation residue) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claims 1- 4, and 24-28 are unpatentable for the reasons of record.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
6/12/2025