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 .
Election/Restrictions
Claims 8-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected election, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/8/2025.
Species (i), (iii) to (vii) in claim 3 are withdrawn.
Response to Amendment
The amendment filed on 9/5/2025 has been entered. Claim(s) 1-5 is/are currently amended. Claim(s) 7 has/have been cancelled. Claim(s) 1-6 and 8-14 is/are pending with claim(s) 8-14 withdrawn from consideration. Claim(s) 1-6 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 9/5/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that the prior art does not teach the claimed structure X wherein 'a' is an integer of 0 or 1,'b' is an integer of 2 or 3 and 'c' is an integer of 0 such that a+b+c = 3, 'd' is an integer from 0 to 2, as shown in Yamane’s Example 6.
In response, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments; and patents are relevant as prior art for all they contain; nonpreferred and alternative embodiments constitute prior art (see MPEP 2123). In this case, Yamane teaches a fluorine-containing organopolysiloxane represented by formula (A), which can be
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as stated in the 103 rejection. This structure meets the claimed formula (1) containing the claimed X wherein a=0, c=0, d=0, and b=3.
Applicant argued that Yamane does not disclose that the inventive perfluoropolyether compound has solubility in saturated hydrocarbon solvents and provides a coating film with excellent water and oil repellency.
In response, the recited solubility and water and oil repellency of a coating film are not part of the claim. Even if they are incorporated as claim limitations, they are properties of the product. “Products 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Claim Rejections - 35 USC § 103
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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamane et al (US 20070149746 A1).
Regarding claims 1-4, Yamane teaches a fluorine-containing organopolysiloxane represented by formula (A)
SinR12n+2On-1
with examples of
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wherein R1 may be the same with or different from each other and is a hydrogen atom or a monovalent organic group, n is an integer of from 2 to 40 [0046-0050].
One of the SiOSi bond is replaced with a bond represented by the following formula (iii):
Si-Q-Rf2-Q-Si (iii) [0054].
Therefore, the fluorine-containing organopolysiloxane (A) can have a structure of
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At least two of the end-group R1 can be replaced with the following structure:
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wherein R3 is an alkyl group (e.g., Me), y is an integer of from 1 to 5 and a is 2 or 3, X is a hydrolyzable group (e.g., OMe), a is 2 or 3 [0029-0030, 0052]. When y=2, R3 is Me, a=3, X=OMe, the above structure is C2H4-Si-(OMe)3 (the C2H4- reads on the claimed Q1 as specified in claim 4), and the fluorine-containing organopolysiloxane (A) can have a structure of
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In the above structure, Rf2 is a divalent group containing a perfluoroether residue including formula (5)
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wherein Y can be F, which may be different with each other, and r is an integer of from 2 to 6, d is an integer of from 1 to 3, each m and n is an integer of from 0 to 200 with m+n ranging from 2 to 200, s is an integer of from 0 to 6 [0069-0070]. When d=2, m=0, r=1, Rf2 of formula (5) becomes
-CF2O(CF2O)s(CF2CF2O)nCF2-
which is equivalent to the claimed PFPE of formula (3) specified in claim 2, with s corresponding to the claimed a1, n corresponding to the claimed b1.
Q is a divalent organic group including
-C(=O)NH-CH2CH2CH2- [0073],
which is equivalent to the claimed Z specified in claim 3.
When R1=Me, the fluorine-containing organopolysiloxane (A) becomes the claimed formula (1) containing the recited X of formula (2):
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wherein the recited a=0, c=0, d=0, and b=3.
It would have been obvious to one of ordinary skill in the art at the time of filing to select the above structure as Yamane’s fluorine-containing organopolysiloxane (A), as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Regarding claims 5-6, since c=0, the claimed Q2 is not present. Since d=0, the claimed G is not present.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762