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 .
Response to Amendment
Applicant’s claim amendments and remarks filed 8/20/2025 are entered and have
been fully considered. Applicant has amended the claims to overcome the 112b rejections, therefore they are withdrawn.
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.
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.
Claims 1-4, 6-8, 10, 12, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Avantaneo et al, US8258090B2.
Regarding claims 1, 6, and 13, Avantaneo teaches a lubricant composition comprising a perfluoropolyether polymer of formula (I) T-O-[A-B]z-[A-B’]z’-A-T’. Where A is –(X)a-O-A’-(X’)b- and A’ is a perfluoropolyether chain comprising one or more repeat units selected from (CF2O), (CF2CF2O), (CF2CF2CF2O), (CF2CF2CF2CF2O), Col. 2 lines 60-65. This corresponds to applicant’s formula (I) where (Rf) is a fully or partially fluorinated polyoxyalkylene chain.
X and X’ are selected from -CF2-, -CF2CF2-, or optionally – CF(CF3)-, Col. 3 lines 1-3, this corresponds to applicant’s X and X’.
Also in formula (I), a and b are equal to or different from each other, and are integers equal to 0 or 1, Col. 3 lines 4-5, this corresponds to applicant’s a and b.
Also, z is an integer higher than or equal to 2, and z’ is 0 or an integer, Col. 3 line 21, this corresponds to applicant’s z and z’.
The end groups T and T’ are selected from -CF3-, -C2F5, -C3F7-, -CF2H, -CF2CF2H, -CFHCF3, -CF2Cl, Col. 4, lines 13-15, this corresponds to applicant’s T and T’.
Each of B and B’ is a block of units having formula –[(CR1R2-CR3R4)j (CR5R6-CR7R8)j’]-, Col. 3 line 11. Where j is 1-5, and j’ is 0-4 with the proviso (j+j’) is greater than 2 but less than 5, Col. 3 line 14. B’ has the same formula but has at least one substituent different from B and (j+j’) is higher than or equal to 2 and lower than 5, Col. 3 Lines 25-28. This corresponds to applicant’s B and B’, c, d, and e, and satisfies the limitation they are statistically distributed. Avantaneo exemplifies B blocks being a mixture of tetrafluoroethylene (TFE) and hexafluoropropene (HFP), Col. 4 lines 2-3.
Avantaneo further teaches that the lubricant composition comprises a perfluoropolyether oil of formula (1a) below, where X is F or CF3; E and E’ are equal or different and are selected from CF3, C2CF5 or C3F7, F, or both end groups can be substituted by Cl or H, Col. 9 lines 40-47, which satisfies part (II) of claim 1.
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Avantaneo does not explicitly state the TFE units are in an amount from 15-30 wt.% in the polymer. But Avantaneo states that the total weight of blocks B and B’ is less than 70%, preferably less than 40%, of the total weight of the polymer, Col. 4 lines 9-10. The B’ blocks are optional, because z’ can be zero, therefore with only B blocks made of TFE and HFP, for example, using the mole ranges for j and j’ in the formula stated above, the minimum and maximum molar ratios are 1:3 and 3:1 for TFE: HFP. This has a total of j+j’ = 4, which Avantaneo states the total must be less than 5. If this molar ratio is converted to a mass ratio, based on TFE is 100 g/mol and HFP is 150 g/mol, the ratios convert to 0.22:1 at the minimum and 2:1 at maximum. Comparing this to the claimed amount of TFE in claim 1 and the co-monomer amount in claim 6, the minimum mass ratio is 0.75:1 TFE to the co-monomer unit (this is calculated from 15/20), and a maximum ratio of 7.5:1 (calculated from 30/4). Therefore the mass ratio for Avantaneo overlaps with the mass ratio required by the amounts of claims 1, 6, and 13, and with the total B units required to be less than 70 wt.%, this encompasses the claimed percent ranges because the range of the claimed total is from 19-50 wt.% (which corresponds to the total B units). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 2, Avantaneo does not measure the dynamic viscosity of the lubricant compositions, but does state in Col. 9 line 20-24 that a thickening agent (iii) can be added to the polymer (i) and PFPE oil (ii). The polymer itself can have a viscosity of 50,000 cSt or higher, Col. 4 lines 27-29, and the PFPE oil has a viscosity between 10 and 4,000 cSt, Col. 9 line 18. When the lubricant includes a thickener (iii) as an ingredient, the composition is in the form of a grease, Col. 11 lines 38-39. It is further disclosed that when the lubricant is in the form of a grease, it shows a reduced friction coefficient, lower wear, and a low oil separation during storage, and a low evaporation loss, Col. 11 lines 45-47. Therefore it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to incorporate a thickening agent into the lubricant composition to achieve a dynamic viscosity of 60 Pa.s or higher with the motivation of reducing the coefficient of friction, lowering the wear, lowering the oil separation during storage, and lowering the evaporation loss.
Regarding claim 3, Avantaneo further teaches that the mixing of the lubricant can occur in a fluorinated solvent, Col. 11 lines 66-67. The polymer is fed into the mixer with a fluorinated solvent, then the PFPE oil is added and mixed, Col. 12 lines 3-5. Preferred solvents are perfluoroalkanes, Col. 12 lines 12-16.
Regarding claims 4 and 12, Avantaneo further teaches that in the polymer formula (I) T-O-[A-B]z-[A-B’]z’-A-T’, the z and z’ are such that the number average molecular weight of the polymer is in the range of 500-500,000 and preferably in the range of 5,000- 60,000 g/mol, Col. 3 lines 23-24, which overlaps with the claimed ranges. And the number average molecular weight is measured using 19F-NMR spectroscopy for the examples, Col. 13 lines 21-24.
Regarding claims 7 and 15, Avantaneo further teaches that A’ (which corresponds to applicant’s Rf) is a perfluoropolyether chain comprising one or more repeat units selected from (CF2O), (CF2CF2O), (CF2CF2CF2O), (CF2CF2CF2CF2O), and optionally comprising (CF(CF3)O), (CF(CF3)CF2O), (CF2CF(CF3)O) units, Col. 2 lines 60-67.
Regarding claim 8, the PFPE oil is selected from the classes represented by formulas 1a-8a, Col. 9 lines 42, 57, 67, Col. 12 lines 10, 21, 32, 40, 50. Wherein at least class 6a conforms to applicant’s –(X)a-O-(Rf)-(X’)b-. Class 6a is represented by formula:
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Where applicant’s a and b are 0, and Rf is represented by the CF2CF2CF2O which satisfies group (iii) of instant claim 7. E and E’ are equal or different and are selected from CF3, C2CF5 or C3F7, F, or both end groups can be substituted by Cl or H, Col. 9 lines 40-47, which satisfies applicant’s Re chain ends of instant claim 1.
Regarding claim 10, Avantaneo further teaches that the lubricant compositions comprise by weight (i) the polymer from 0.1% to 99.9%, more preferably 5% to 95% and (ii) the PFPE oil from 0 to 99.9%, Col. 11 lines 17-21. The weight ratio of the polymer (i) to the total of polymer and oil (i+ii) is preferably between 0.10 and 0.60, Col 11. Lines 25-27.
Claims 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Avantaneo et al, US8258090B2 in view of De Patto et al, US20180051226.
Regarding claim 11, Avantaneo teaches the invention according to claim 1, as explained above, but does not teach where Rf2 in the formula -OCF2ORf2 (which is an option for Rx within the B and B’ blocks) is -CF2CF3, -CF2CF2OCF3, or -CF3. Avantaneo states that the block B olefins can be derived from (per)fluorovinylethers, Col. 3 line 62, but does not go into further detail as to what those monomers are.
De Patto discloses a viscous perfluoropolyether polymer for damping fluids that follows the same structural formula as Avantaneo, ¶[0030]. De Patto further discloses that block B and B’ are recurring units derived from TFE, HFP and/or (per)fluorovinylethers ¶[0062]. They are preferably of the formula CF2CFORf1 ¶[0062] where Rf1 is selected from -CF2ORf2 where Rf2 is preferably -CF2CF3, -CF2CF2OCF3, or -CF3 ¶[0064]. De Patto discloses that the polymer and compositions thereof are used as damping fluids in damping devices used in applications where high pressures, workloads, and high temperatures are involved ¶[0071] and the polymer retains its viscous properties at higher temperatures ¶¶[0017-0018]. The polymer is used in damper devices in industrial settings such as wheeled vehicles, work boats, aircrafts and spacecrafts, power transmission lines, wind turbines, consumer electronics, off-shore rigs, compressors, and buildings ¶[0073].
Avantaneo and De Patto are analogous to the claimed invention because Avantaneo is in the related field of fluorinated lubricants and De Patto is in the related field of viscous fluorinated fluids for industrial fields.
Therefore it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the polymer of Avantaneo with the co-monomers having the specific Rf2 functional groups of De Patto because they are the preferable functional groups for the perfluorovinylether co-monomers in perfluoropolyether polymers for damping fluids with viscosity retention at high temperatures.
Regarding claim 13, Avantaneo teaches the invention according to claim 1, as explained above. Avantaneo states that the total weight of blocks B and B’ is lower than 70% of the total weight of the polymer, Col. 4 lines 9-10. De Patto states that the total weight of B and B’ is lower than 50 wt.% of the total weight of the polymer ¶[0059]. With the upper limit of 69.9 wt.% or 49.9 wt.%, it is obvious to the skilled artisan that TFE can be used in an amount to achieve the 15-28 wt.% limitation.
Response to Arguments
Applicant’s arguments, see page 8, filed 8/20/2025, with respect to the rejection(s) of claim(s) 1, 3-8, 10, 12, 14 and 15 under §102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Avantaneo under §103.
In response to applicant’s argument of unexpected results related to the amount of TFE in the final polymer and the effect of it resulting in a rubber-like polymer on page 10 of remarks, the data is not convincing because of the following reasons. There is no analytical definition given for the difference between a rubber-like polymer and a liquid polymer, nor how the example 1 differs from the comparative examples, other than the TFE amount, to give it the designation of rubber-like. Applicant states in the remarks it is not related to molecular weight, but it is unclear what other physical properties resulted from the 24% TFE units to define it as rubber-like. It is also unclear if the total –(BO)- units or PMVE units have an effect on the rubber-like result, because there are no additional examples with a different unit than PMVE or varying total –(BO)- units.
Additionally, the unexpected results are not commensurate in scope with the claims. The data shown in table 1, page 10, of the remarks shows the only example with 24% TFE and 10% PMVE and the PFPE reacted is a specific polymer (described in ¶[0047] of the instant specification), whereas the amended claim 1 has a range of 15-30 wt.% for the TFE units, other units besides PMVE are claimed, and the contributing PFPE polymer is not limited to only the one used in the example. The scope of the claims encompasses more options than the inventive example 1 provides.
For these reasons, the §103 rejection over Avantaneo in view of DePatto is maintained.
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.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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