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
The rejection of claims 9, 11, 13, and 15 under 35 U.S.C. 103 as obvious over Minor (US 20080314073 A1) is withdrawn due to amendments to the claims.
The rejection of claims 18-19, 20, and 22 under 35 U.S.C. 103 as obvious over Minor (US 20080314073 A1) and Rajtar (WO 2005066105 A1) is withdrawn due to amendments to the claims.
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 9, 11, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Owens (EP 2231811 B1).
With regard to claims 9, 11, 13, and 15, Owens discloses a coating composition (see [0038]) comprising 0.1-42wt% of 1-bromopropane, 52-99.9wt% of 1,1,1,2,3,3-hexafluoro-3-methoxy-propane (see [0023]), and perfluoropolyethers as coating materials (see [0039]) at 0.1-10wt% (see [0040]).
While Owens fails to disclose a single embodiment comprising all of the components of the instant claims, Owens discloses a composition comprising 2-39wt% of 1-bromopropane and 61-98wt% of 1,1,1,2,3,3-hexafluoro-3-methoxy-propane (see Table 2). Owens further discloses 0.1-10wt% of perfluoropolyethers as coating materials which may be included in the coating composition. It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the perfluoropolyether compounds as additional components as Owens discloses such compounds as suitable coating materials.
Claims 18-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Owens (EP 2231811 B1), and in further view of Rajtar (WO 2005066105 A1).
With regard to claim 18-20, and 22, Owens discloses all of the limitations of claim 9 and claim 11.
However, Owens fails to disclose a cleaning method comprising removing a fluorine oil (B) as defined in claim 9 by using a cleaning agent containing HFE-356mmz and/or HFE-mec.
Rajtar discloses an azeotrope-like composition (see Abstract). Rajtar further discloses hydrofluoroethers (HFEs) as subjects of increasing interest due to their chemical stability, low toxicity, and non-ozone depleting properties (see page 1 paragraph 4). Rajtar further provides a coating composition containing an HFE (page 4 line 22-25) and comprising a coating material at 0.1wt% to 10wt% (see page 11 line 24-26) and further discloses perfluoropolyethers (i.e., fluorine oil) as suitable coating materials (see page 10 line 22 to page 11 line 7). Rajtar further discloses HFE compounds as between 1wt% and 99wt% depending on the organic solvent utilized and compositions containing no hexafluoroisopropanol (see Table 2). Rajtar further discloses the composition may be used to dissolve contaminants (see page 10 line 6-7). Rajtar further discloses perfluoropolyethers may be dissolved (see page 10 line 10). Therefore, perfluoropolyethers would be dissolved when added to the composition.
Rajtar further discloses a cleaning method involving elevated temperatures, ultrasonic energy, and/or agitation (see page 9 line 8-11). Rajtar further teaches an exemplary cleaning process which can be dissolving the substrate from the surface (see page 10 line 6-7 and claim 13).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the composition of Owens in the coating method of Rajtar. The composition of Owens comprises 0.1-42wt% of 1-bromopropane, 52-99.9wt% of 1,1,1,2,3,3-hexafluoro-3-methoxy-propane (see [0023]), and perfluoropolyethers as coating materials (see [0039]) at 0.1-10wt% (see [0040]). Rajtar discloses a coating composition containing an HFE (page 4 line 22-25) and comprising a coating material at 0.1wt% to 10wt% (see page 11 line 24-26) and further discloses perfluoropolyethers (i.e., fluorine oil) as suitable coating materials (see page 10 line 22 to page 11 line 7). Rajtar further discloses a cleaning method involving elevated temperatures, ultrasonic energy, and/or agitation (see page 9 line 8-11). Rajtar further teaches an exemplary cleaning process which can be dissolving the substrate from the surface (see page 10 line 6-7 and claim 13). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the composition of Owens in the coating method of Rajtar as both disclose HFEs and perfluoropolyethers. It stands to reason that the method of Rajtar would be effective using the composition of Owens.
Response to Arguments
Applicant’s arguments with respect to claims 9, 11, 13, 15, 18-20, and 22 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.
Applicant argues that Minor fails to disclose HFE-356mec. As Minor is no longer utilized as prior art, Applicant’s arguments regarding Minor are moot.
Applicant further argues that HFE-356mec is critical to achieving the technical effect of the claimed invention. Applicant further argues that one of ordinary skill in the art would have had no reasonable expectation of success in using HFE-356mec when its structural isomers are non-functional for this purpose. Applicant discloses a coating method. Therefore, the composition must be useful in coating a substrate. As stated above, Owens discloses a coating composition (see [0038]) comprising 0.1-42wt% of 1-bromopropane, 52-99.9wt% of 1,1,1,2,3,3-hexafluoro-3-methoxy-propane (see [0023]), and perfluoropolyethers as coating materials (see [0039]) at 0.1-10wt% (see [0040]).
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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/B.S.H./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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