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
Acknowledgment is made to Applicant’s claim amendments received 9 October 2025. Claims 15, 17, 18 and 19 are currently pending. Claims 1-14 and 16 have been cancelled.
Claim Rejections - 35 USC § 102
Acknowledgment is made to Applicants claim amendments received 9 October 2025. The rejections to the claims presented under 35 USC 102 in the Office Action of 9 June 2025 are withdrawn.
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 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 15, 17, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0360541 A1 to Sadeghi et al. (Sadeghi) in view of US 2017/0283960 A1 to Ma et al. (Ma).
As to claims 15 and 19, Sadeghi teaches an electrolytic fluorination composition, agent, comprising a metal fluoride, cesium fluoride, a fluoroalcohol, trifluoroethanol, and an organic solvent, hexafluoroisopropanol (Paragraphs 0097 and 0104). However, Sadeghi fails to teach a cesium fluoride concentration of 0.2 to 5M. Sadeghi mentioning only a single embodiment of a cesium fluoride concentration at 0.168 M (Paragraph 0200).
However, Ma also discusses the electrolytic fluorination with fluorination agents such as metal fluorides and teaches that the specific amount is not critical, i.e. any amount can be utilized so long as the solution is still sufficiently conductive to allow fluorination (Paragraphs 0106 and 0107). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing that a slightly higher metal fluoride concentration of, for example, 0.2 M, in Sadeghi would effectively allow for fluorination of the organic as desired.
As to claim 17, the combination of Sadeghi and Ma teaches the composition of claim 15. As discussed above, Sadeghi teaches that the fluoroalcohol trifluoroethanol, thus a C1-14 fluoroalcohol.
As to claim 18, the combination of Sadeghi and Ma teaches the composition of claim 17. As discussed above, Sadeghi teaches that the fluoroalcohol trifluoroethanol, thus an alcohol with a fluorine mass content of approximately 57%.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at 571-272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794