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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 21st, 2026 has been entered.
Response to Amendment
The Amendment filed on August 21st, 2026 has been entered. Claims 9, 11, 13, 15, 18-20, 22, and 24-27 are pending in the application. Claims 10, 12, 14, 16-17, 21, and 23 have been cancelled.
The rejection of claims 9, 11, 13, and 15 under 35 U.S.C. 103 as obvious over Owens (EP 2231811 B1) is withdrawn due to amendments to the claims.
The rejection of claims 18-20, and 22 under 35 U.S.C. 103 as obvious over Owens (EP 2231811 B1) and Rajtar (WO 2005066105 A1) is withdrawn due to amendments to the claims.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 9, 11, 13, 15, 18-20, 22, and 24-27 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.
In claim 9 and claims 18-20, the disclosed polymers read as though they are part of the claimed fluorine oil. The polymers constitute a third component and thus should be separated from the disclosed fluorine oil.
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), Zuo (WO 2016101185 A1), and Halocarbon (“Halocarbon PCTFE Technology for Low-Molecular Weight Oligomers”).
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]). Owens further discloses exemplary substrates can include metal, cermet, and composite work pieces (see [0047]) and further discloses composite as a glass or carbon fiber in an epoxy resin (see [0050]). Owens further discloses the composition may comprise lubricious additives for heat transfer and further discloses chlorotrifluoroethylene-containing polymers as suitable lubricious additives (see [0045]).
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.
However, Owens fails to disclose monocarboxylic acid compounds containing a perfluoropolyether group, dicarboxylic acid compounds containing a perfluoropolyether group, ester compounds containing a perfluoropolyether group, silane compounds containing a perfluoropolyether group, hydroxyl compounds containing a perfluoropolyether group, amino compounds containing a perfluoropolyether group, amide compounds containing a perfluoropolyether group, thiol compounds containing a perfluoropolyether group, sulfonic acid compounds containing a perfluoropolyether group, phosphonic acid ester compounds containing a perfluoropolyether group, sulfonic acid ester compounds containing a perfluoropolyether group, and low-molecular- weight polymers of chlorotrifluoroethylene.
Zuo discloses perfluoropolyether silanes and coating compositions made therefrom, an analogous art (see Abstract). Zuo further discloses many perfluoropolyether silane compositions are known in the art for treating substrates to render them oil and water repellent, there continues to be a desire to provide further improved compositions for the treatment of substrates, in particular substrates having a hard surface such as glass and ceramics, in order to render them antisoiling, i.e. stain, dirt, oil and/or water resistant (see page 1 line 29-33).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the perfluoropolyether silane of Zuo in the coating composition of Owens. Owens discloses a coating composition comprising perfluoropolyethers and further discloses the composition that may be used on a glass or carbon fiber in an epoxy resin. Zuo discloses perfluoropolyether silanes as useful in compositions for the treatment of substrates, in particular substrates having a hard surface such as glass and ceramics, in order to render them antisoiling, i.e. stain, dirt, oil and/or water resistant. A person of ordinary skill in the art would expect to create a coating composition capable of imparting antisoiling properties to glass surfaces, as taught by Zuo.
Halocarbon discloses low-molecular weight PCTFE oligomers (see paragraph 1). Halocarbon further discloses PCTFE lubricants are non-flammable, non-toxic, non-reactive, and chemically inert (see paragraph 2). Halocarbon further discloses PCTFE fluids provide excellent cooling and sealing properties, which in combination with their non-flammability and chemical inertness make them ideal for use as barrier fluids in mechanical seals and chemical-safe and Lewis Acid-resistant oils in high-vacuum applications (see paragraph 2).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the low-molecular weight PCTFE oligomers of Halocarbon in the coating composition of Owens. Owens discloses a coating composition comprising perfluoropolyethers. Halocarbon discloses low-molecular weight PCTFE oligomers as providing excellent cooling and sealing properties, which in combination with their non-flammability and chemical inertness make them ideal for use as barrier fluids in mechanical seals and chemical-safe and Lewis Acid-resistant oils in high-vacuum applications. A person of ordinary skill in the art would find it obvious to utilize the low-molecular weight PCTFE oligomers of Halocarbon in the composition of Owens as Owens discloses the composition may comprise chlorotrifluoroethylene-containing polymers and PCTFE oligomers are chlorotrifluoroethylene-containing polymers.
Claims 18-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Owens (EP 2231811 B1), Zuo (WO 2016101185 A1), and Halocarbon (“Halocarbon PCTFE Technology for Low-Molecular Weight Oligomers”), and in further view of Rajtar (WO 2005066105 A1).
With regard to claims 18-20, and claim 22, Owens, Zuo, and Halocarbon disclose all of the limitations of claim 9 and claim 11.
However, Owens, Zuo, and Halocarbon fail 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 and Zuo 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 and Zuo 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.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Owens (EP 2231811 B1), Zuo (WO 2016101185 A1), and Halocarbon (“Halocarbon PCTFE Technology for Low-Molecular Weight Oligomers”), and in further view of Minor (US 20080314073 A1).
With regard to claims 24-27, Owens, Zuo, and Halocarbon disclose all of the limitations of claim 9. Further, Owens discloses the composition may be utilized in a heat transfer process (see [0013]).
However, Owens, Zuo, and Halocarbon fail to disclose a cleaning method or composition wherein component (A) consists of HFE- 356mec and HFE-356mmz.
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%.
Both the compositions of Owens, Zuo, and Halocarbon and the composition of Minor are azeotrope-like compositions used in heat transfer processes. Applicant is reminded of In re Kerkhoven, which affirmed that "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose....the idea of combining them flows logically from their having been individually taught in the prior art". In re Kerkhoven, 626 F .2d 846, 850, 205, USPQ 1069, 1072 (CCPA 1980). Therefore one having ordinary skill in the art would find the claimed invention obvious because 1,1,1,3,3,3-hexafluoro-2-methoxypropane (365-mmz1), as taught by Minor, are utilized in azeotrope-like compositions used in heat transfer processes. As stated above, both Owens, Zuo, and Halocarbon and Minor disclose a cleaning composition. It would, therefore, have been obvious to combine the 1,1,1,3,3,3-hexafluoro-2-methoxypropane (365-mmz1) as taught by Minor with the cleaning composition as taught by Owens, Zuo, and Halocarbon to produce a cleaning composition.
Claims 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Owens (EP 2231811 B1), Zuo (WO 2016101185 A1), Halocarbon (“Halocarbon PCTFE Technology for Low-Molecular Weight Oligomers”), and Rajtar (WO 2005066105 A1), and in further view of Minor (US 20080314073 A1).
With regard to claims 24-27, Owens, Zuo, Halocarbon, and Rajtar disclose all of the limitations of claim 19. Further, Owens discloses the composition may be utilized in a heat transfer process (see [0013]).
However, Owens, Zuo, and Rajtar fail to disclose a cleaning method or composition wherein component (A) consists of HFE- 356mec and HFE-356mmz.
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%.
Both the compositions of Owens and Zuo and the composition of Minor are azeotrope-like compositions used in heat transfer processes. Applicant is reminded of In re Kerkhoven, which affirmed that "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose....the idea of combining them flows logically from their having been individually taught in the prior art". In re Kerkhoven, 626 F .2d 846, 850, 205, USPQ 1069, 1072 (CCPA 1980). Therefore, one having ordinary skill in the art would find the claimed invention obvious because 1,1,1,3,3,3-hexafluoro-2-methoxypropane (365-mmz1), as taught by Minor, are utilized in azeotrope-like compositions used in heat transfer processes. As stated above, both Owens and Zuo and Minor disclose azeotrope-like compositions used in heat transfer processes. It would, therefore, have been obvious to combine the 1,1,1,3,3,3-hexafluoro-2-methoxypropane (365-mmz1) as taught by Minor with azeotrope-like composition used in heat transfer processes as taught by Owens and Zuo to produce an azeotrope-like composition used in heat transfer processes.
Response to Arguments
Applicant’s arguments with respect to claims 9, 11, 13, 15, 18-20, 22, and 24-27 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 the independent claims have been amended such that component (B) has been limited to specific functionalized perfluoropolyether (PFPE) compounds and low-molecular-weight chlorotrifluoroethylene (CTFE) polymers.
As stated above, Zuo discloses perfluoropolyether silanes and coating compositions made therefrom, an analogous art (see Abstract). Zuo further discloses many perfluoropolyether silane compositions are known in the art for treating substrates to render them oil and water repellent, there continues to be a desire to provide further improved compositions for the treatment of substrates, in particular substrates having a hard surface such as glass and ceramics, in order to render them antisoiling, i.e. stain, dirt, oil and/or water resistant (see page 1 line 29-33).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the perfluoropolyether silane of Zuo in the coating composition of Owens. Owens discloses a coating composition comprising perfluoropolyethers and further discloses the composition that may be used on a glass or carbon fiber in an epoxy resin. Zuo discloses perfluoropolyether silanes as useful in compositions for the treatment of substrates, in particular substrates having a hard surface such as glass and ceramics, in order to render them antisoiling, i.e. stain, dirt, oil and/or water resistant. A person of ordinary skill in the art would expect to create a coating composition capable of imparting antisoiling properties to glass surfaces, as taught by Zuo.
Halocarbon discloses low-molecular weight PCTFE oligomers (see paragraph 1). Halocarbon further discloses PCTFE lubricants are non-flammable, non-toxic, non-reactive, and chemically inert (see paragraph 2). Halocarbon further discloses PCTFE fluids provide excellent cooling and sealing properties, which in combination with their non-flammability and chemical inertness make them ideal for use as barrier fluids in mechanical seals and chemical-safe and Lewis Acid-resistant oils in high-vacuum applications (see paragraph 2).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to utilize the low-molecular weight PCTFE oligomers of Halocarbon in the coating composition of Owens. Owens discloses a coating composition comprising perfluoropolyethers. Halocarbon discloses low-molecular weight PCTFE oligomers as providing excellent cooling and sealing properties, which in combination with their non-flammability and chemical inertness make them ideal for use as barrier fluids in mechanical seals and chemical-safe and Lewis Acid-resistant oils in high-vacuum applications. A person of ordinary skill in the art would find it obvious to utilize the low-molecular weight PCTFE oligomers of Halocarbon in the composition of Owens as Owens discloses the composition may comprise chlorotrifluoroethylene-containing polymers and PCTFE oligomers are chlorotrifluoroethylene-containing polymers. Further, the composition states “comprising”. Therefore, other HFE compounds are not excluded from the instant claims.
Applicant further argues unexpected results. The examples shown disclose various fluorine oils dissolving in HFE-mmz alone. However, the instant claims disclose only HFE-mec alone. Therefore, the results are not commensurate in scope with the instant claims. Further, Applicant argues that the transparency of the combination is unexpected. However, Applicant does not show lack of transparency separately.
Conclusion
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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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