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 .
The Non-Final previously mailed on 1/15/2026 is vacated.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 3rd, 2025 has been entered.
The Amendment filed on December 3rd, 2025 has been entered. Claims 9, 11, 13, 15, 18-20, and 22. Claims 1-8, 10, 12, 14, 16-17, 21, and 23 have been cancelled.
Response to Amendment
The rejection of claims 9, 11, 13, 15, 18-19, 20, and 22 under 35 U.S.C. 103 as obvious over Rajtar (WO 2005066105 A1) and Nagafune (JP 2019167304 A) is withdrawn due to amendments to the claims.
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 18 and 19 are rejected 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 18 and claim 19 recite “using”. This is not sufficient to describe a method. Applicant is directed toward MPEP 2173.05(q). The phrase “using” is indefinite because such a claim discloses a process without setting forth any steps involved.
Further, claim 18 and claim 19 recite “removing a fluorine oil as defined in claim 9”. Claim 9 discloses a composition comprising fluorine oil rather than simply defining it. For clarity, it is recommended that Applicant remove this language and instead simply recite the Markush language.
Claim 20 and claim 22 recite “applying the composition”. This is not sufficient to describe a method. Applicant is directed toward MPEP 2173.05(q). The phrase “applying” is indefinite because such a claim discloses a process without setting forth any steps involved.
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 Minor (US 20080314073 A1).
With regard to claims 9, 11, 13, and 15, Minor discloses a heat transfer composition (see [0023]). Minor further discloses the composition may comprise at least one compound selected from a group consisting of hydrofluorocarbons (see [0023]). Minor further discloses the hydrofluorocarbons may comprise 1,1,1,3,3,3-hexafluoro-2-methoxypropane (365-mmz1) (see [0024]). Minor further discloses perfluoropolyether compounds as additional components (see [0076]). Minor further teaches additional components at 0.1-3wt% (see [0082]). This results in the hydrofluorocarbon component at 97-99.9wt%.
While Minor fails to disclose a single composition comprising all of the components of the instant claims, Minor discloses additional components may be included in heat transfer compositions. Perfluoropolyether compounds are listed as suitable additional ingredients. Minor further discloses a heat transfer 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 Minor discloses such compounds as suitable additional components in heat transfer compositions.
Claims 18-19, 20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Minor (US 20080314073 A1), and in further view of Rajtar (WO 2005066105 A1).
With regard to claim 18-19, 20, and 22, Minor discloses all of the limitations of claim 9 and claim 11.
However, Minor 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 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 Minor in the coating method of Rajtar. The composition of Minor comprises hydrofluorocarbons (see [0023]). Minor further discloses the hydrofluorocarbons may comprise 1,1,1,3,3,3-hexafluoro-2-methoxypropane (365-mmz1) (see [0024]). 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 Minor 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 Minor.
Response to Arguments
Applicant’s arguments with respect to claims 9, 11, 13, 15, 18-19, 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, with regard to claim 9, the amendment “consisting of” constrains the claim to only "[a] composition consisting of (A) 1,1,1,3,3,3- hexafluoroisopropyl methyl ether (HFE-356mmz) and/or 1,1,2,3,3,3-hexafluoropropyl methyl ether (HFE-356mec), and (B) a fluorine oil, wherein the fluorine oil is at least one compound selected from the group consisting of perfluoropolyether compounds, compounds containing a perfluoropolyether group and a functional group, and low-molecular polymers of chlorotrifluoroethylene." Applicant further argues that Rajtar fails to disclose a composition comprising solely these compounds. As Rajtar is no longer utilized as a primary reference, Applicant’s arguments regarding Rajtar are moot.
Conclusion
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/B.S.H./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761