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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/10/2025 has been entered.
Status of the Claims
The amendment filed on 09/02/2025 has been entered. Claims 1 and 14 have been amended and claims 2-3 have been canceled. Claims 1 and 4-14 are thus currently pending; claims 5-13 remain being withdrawn; and claims 1, 4 and 14 are under current examination.
Withdrawn Rejections
Claims 1 and 14 have been amended by narrowing R1 and R1’ to perfluorinated fluoroalkenyl group having 4 to 9 carbon atoms. Betterly, Hock, and US’623 fail to teach every limitation of the amended claims and thus the 102(a)(1) rejections as being anticipated by the aforementioned references have been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 4 stand rejected in a modified form under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has been amended to recite new limitation “wherein the chlorinated fluoroaromatic compound is prepared by nucleophilic displacement of a fluoride ion from a fluoroalkene by a 4-chlorophenolate ion or a 3,5-dichlorophenolate ion such that the chlorine atom or atoms are located at the 4 position when a is 1 and at the 3,5 positions when a is 2”. In view of this limitation:
the fluoroalkene – from which the chlorinated fluoroaromatic compound is prepared – is broader than the perfluorinated fluoroalkenyl group of R1 in formula I;
the chlorine atoms are specific in terms of their location in the aryl ring, whereas the compound of formula (I) does not provide the specific location of chlorine atoms to just the 4 position when a is 1 and at the 3,5 positions when a is 2.
According to the above limitation, if the chlorinated fluoroaromatic compound is prepared by the nucleophilic displacement of a fluoride ion from a fluoroalkene by a 4-chlorophenolate ion or a 3,5-dichlorophenolate ion such that the chlorine atom or atoms are located at the 4 position and at the 3,5 positions, the resulting products would be as shown below. However, in view of formula (I), Cl atom/s can be substituted anywhere in relation to –(G-R1), and R1 can be any fluoroalkenyl group.
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As such, the scope of the claim is vague and indefinite.
For purpose of applying art, the product by process limitation “wherein the chlorinated fluoroaromatic compound is prepared by nucleophilic displacement of a fluoride ion from a fluoroalkene by a 4-chlorophenolate ion or a 3,5-dichlorophenolate ion such that the chlorine atom or atoms are located at the 4 position when a is 1 and at the 3,5 positions when a is 2” will not be examined and the position of the chloro groups will not be limited to at the 4 position when a is 1 and at the 3,5 positions when a is 2.
Claim 4 is also rendered indefinite for depending on claim 1.
NOTE: If the indefinite language of claim 1 is obviated, Applicant is reminded that the amended claim should not be substantially duplicate in scope as in claim 14. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102
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.
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.
Claim 1 stands rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furin (Furin, G. G. et al. “Synthesis of Partially Fluorinated Organic Compounds from Perfluoro-2-methyl-2-pentene and Phenol Derivatives” Russian Journal of General Chemistry, 2005, Vol.75, No.3, pp.394-401; cited in IDS 08/17/2022).
Furin teaches compound IX (pg. 395):
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.
Regarding claim 1, in compound IX:
G is oxygen
R1 is perfluorinated fluoroalkenyl group having 6 carbon atoms
R2 is hydrogen
a is 2
x is 1
y is 3
z is 6-2-1-3 (0)
Claim 1 stands rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patent number JP2006335677A (JP’677; cited in PTO-892 07/14/2025).
JP’677 teaches the following compound (page 21):
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95
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.
Regarding claim 1, in the above compound:
G is oxygen
R1 is perfluorinated fluoroalkenyl group having 9 carbon atoms
R2 is hydrogen
a is 2
x is 1
y is 3
z is 6-2-1-3 (0)
Response to Arguments
Applicant argues that Furin fails to teach the now amended claim 1 with the added limitation.
The examiner disagrees and Applicant is advised to refer to the 112(b) rejection set forth above for the interpretation of the amended claim 1.
Allowable Subject Matter
The subject matter of claim 4 is free of prior art and claim 14 is allowed. The closest prior art references have been set forth above, however, they fail to teach or suggest the chlorinated fluoroaromatic compound of claims 4 and 14.
Conclusion
Claims 1 and 4 are rejected and claim 14 is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MEDHANIT W BAHTA/Primary Examiner, Art Unit 1692