DETAILED ACTION
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicant's election with traverse of Group I, claims 119-132 in the reply filed on May 18, 2026 is acknowledged. The traversal is on the ground(s) that Groups II and III depend from claim 119 and there is overlapping subject matter. This is not found persuasive because while the claims depend from claim 119, they are still directed to methods of polymerization and further reaction of the monomer that are separately classified, would require a different field of search, and prior art applicable to one invention would not likely be applicable to the other invention. Applicant agues that Groups II and IV and Groups II and V should have been treated as different species instead of different groups. However, the restrictions between these groups are between products and processes and an election of species would not be appropriate.
The requirement is still deemed proper and is therefore made FINAL.
Claims 133-140 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 18, 2026.
Claim Objections
Claim 124 is objected to because of the following informalities: the comma after the last “2” in “2,2,2,-trifluoroethanol” on line 2 should be removed. Appropriate correction is required.
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.
Claim(s) 119-123 and 125-130 is/are rejected under 35 U.S.C. 103 as being unpatentable over Furuya et al. (JP 09071547 A and machine translation thereof).
Regarding Claim 119-120, 126 and 129: Furyua et al. disclose a non-fluorinated block and a fluorinated block are linked by reaction of an epoxy group of one block with a hydroxyl group of the other block [0012]. The reactions include the following [0013]:
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wherein “Ra” or “Rb” are a fluorinated block and the other is a non-fluorinated block. Therefore at least one fluorinated nucleophilic reactant having one functional hydroxyl reactive group with at least one compound comprising at least two epoxide groups form a functionalized compound which is capable of being a monomer having at least two hydroxyl group, wherein each hydroxyl group on the functionalized compound is derived from an epoxide group.
Furyua et al. does not teach a specific embodiment wherein Rb is fluorinated. However, at the time of the invention a person of ordinary skill in the art would have found it obvious to select the fluorinated block to have the hydroxyl group with a reasonable expectation of success as Furyua et al. teaches that Rb may be fluorinated ([0012]).
Regarding Claim 121: Furuya et al. discloses 2 moles of the alcohol is need in the reaction and therefore is a mixture [0013].
Regarding Claim 122: Furyua et al. disclose the non-fluorinated block may a saturated alkyl chain having 1 to 1,000 carbon atoms which would include 1,4-butadiol diglycidyl ether and 1,6-hexanediol diglycidyl ether [0019].
Regarding Claims 123 and 127: Furyua et al. disclose the fluorinated block is preferably a fluoroalkyl chain having 1 to 1,000 carbon atoms, particularly a perfluoroalkyl chain, and may be a partially hydrogenated. The fluorinated block may be branched and may further contain an element such as an etheric oxygen, chlorine, bromine, or sulfur [0018]. Furyua et al. teaches that the unfluorinated block is preferably an alkyl chain of 1 to 1,000 carbon atoms ([0019]).
Regarding claims 125 and 130: As shown in Example 1, tin tetrachloride is used which is an acid catalyst [0033].
Regarding Claim 128: Furyua et al. teaches the alkyl chain may contain nitrogen (amine) ([0019]).
Allowable Subject Matter
Claims 124 and 131-132 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 August 20, 2026
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