DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Examiner assigned to this application has changed.
Claims 1-51 are pending as amended on 12/9/2022.
Information Disclosure Statement
The information disclosure statement filed 7/1/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
The information disclosure statement filed 12/9/2022 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. No copy has been provided for NPL Cite No 33, and therefore the reference has not been considered.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-41 in the reply filed on 6/18/2026 is acknowledged. Claims 42-51 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant’s further election without traverse of species (ii) encompassing Formula XA-2:
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wherein t is 1, u is 7, v is 1, w is 7, y is 3 and Z is H in the reply filed on 6/18/2026 is acknowledged.
The structure shown in formula XA-2 is not clear. The formula appears to depict a repeating unit within brackets (e.g., a compound wherein “y” is 3 would have three of the units shown). However, there are no bonds extending out of the brackets, and therefore it is not clear how the repeating units are meant to connect to each other. Additionally, because there are no bonds extending out of the repeating unit, it is not clear what (if any) structure is permitted beyond what is drawn in the formula (e.g., it is not clear what, if any, end group structure is permitted). Considering that the non-elected species XA-1 is characterized as, and clearly shown to be, a “cyclophosphazene” (see [0167]) while XA-2 is not characterized as, and not shown to be, a cyclic compound, there is reasonable basis to conclude that instant XA-2 is at least intended to depict linear, not cyclic, phosphazene oligomers. The elected species is therefore considered to be a linear oligomeric phosphazene compound comprising less than 20 phosphazene units, wherein the fluoroalkoxy substituents on P have structures as shown in XA-2, wherein t is 1, u is 7, v is 1, w is 7 and Z is H. Therefore, claims 29-31 (drawn to cyclophosphazene), claims 32-34 (drawn to oligomers wherein the chain moiety is branched), and claim 9 (drawn to oligomers wherein the intermediate moiety comprises a CHF unit) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
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 21 and 26 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 21 recites that “the terminal moiety” is represented by at least one of seven possible formulas. It is not clear how a (singular) terminal moiety could be represented by more than one of the recited formulas, as each formula shown is a monovalent group, and therefore would not be combinable with another group in a singular “terminal moiety.” Applicant may wish to consider language such as “wherein the terminal moiety has a structure selected from the group consisting of Formula (EC-1), (EC-2)…”
Similarly, claim 26 defines “RH” as being selected from “at least one of” a group of several possible monovalent groups. It is not clear how RH shown in (EA-2) could be more than one of the named groups. Applicant may wish to consider deleting “at least one of” in order to clarify the definition of RH.
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.
Claim(s) 1-8, 10-28 and 35-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andrianov et al (US 2005/0234210).
As to claim 1, Andrianov discloses polyphosphazene polymers which can be used as coating agents in monolayer and multilayer assemblies, and which can be used in a wide range of industrial applications, including microelectronic and optical devices [0037]. The polyphosphazene has a general formula:
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[0005], wherein at least a portion of the R groups are R2 groups which contain a fluorine-containing moiety [0006].
Andrianov teaches that “n” can be from about 10 to about 300,000 [0010]. It would have been obvious to the person having ordinary skill in the art to have selected any value of “n” within Andrianov’s range in order to tailor properties associated with molecular weight as desired, including a value within the presently claimed range of “less than about 20,” thereby arriving at a fluorine-containing phosphazene which is oligomeric as presently recited. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
As to claims 2-8, 12, 22, 27 and 28, Andrianov discloses preferred R2 groups which include the fluorine-containing moiety [0017], each of which is a chain moiety comprising a carbon-containing backbone with a fluorine atom attached thereto. Each of the preferred chain structures comprise at least one CF2 unit, corresponding to the presently recited intermediate moiety recited in claims 4-8 and 12. The phosphazene unit in Andrianov’s polyphosphazene corresponds to the presently recited “core moiety” recited in claims 22 and 27. The R2 groups (“chain” moieties) in Andrianov’s polyphosphazenes are attached to the phosphorus atom in the phosphazene unit, as recited in claim 28.
As to claims 10, 11 and 13-15, Andrianov discloses a preferred R2 group having the structure: -OCH2(CF2)aCF2H, wherein “a” is 1 to 1000 [0017]. The preferred group comprises a CH2 unit as recited in claim 10 and is saturated (meeting claims 11 and 13). Additionally, at least part of the preferred structure further corresponds to the “intermediate moiety” structure containing up to 15 carbon atoms as recited in claim 14 and having a structure as shown in instant claim 15: the -CH2- of Andrianov’s preferred structure corresponds to instant (CX2)a (wherein instant X is H and instant “a” is 1), and up to 12 of the (CF2)a units adjacent to -CH2- in Andrianov’s structure correspond to instant (CF2)b (if present, any additional CF2 units beyond twelve can be considered part of a moiety other than the instant “intermediate moiety”).
As to claims 16-21, the R2 group disclosed by Andrianov has a group “Z2” [0009], which corresponds to the presently recited terminal moiety. Andrianov discloses that Z2 is CF3 or CF2H [0017], each of which meets instant claims 16-18. The group -CF3 meets instant EC-2 recited in claim 21, and the group CF2H meets instant claims 19-20, as well as instant EC-1 in claim 21.
As to claims 23-26, each of Andrianov’s preferred R2 groups in [0017] contain an oxygen (having a structure -O- according to instant EA-1) which links the phosphorus of the phosphazene unit (“core moiety”) to the fluorine-containing chain.
As to claims 35-41, Andrianov is silent as to the recited properties. However, as set forth above, Andrianov suggests a polyphosphazene which has the same phosphazene core moiety and same fluoroalkyl side chains as claimed and described in the instant specification. Given the substantial structural similarities between the compounds suggested by Andrianov and the compounds described in the instant specification, there is reasonable basis to conclude that Andrianov suggests compounds which possess the properties exhibited by the instant compounds, including those properties which are recited in instant claims 35-41.
As to the elected species:
None of the instant claims are presently limited to the elected species, and therefore a rejection of the elected species is not being made at this time. However, Andrianov discloses that a monomeric unit of the polymer can have two R2 groups attached to the same P atom [0030], and the preferred structure -OCH2(CF2)aCF2H in [0017] encompasses the chain structure of the elected species when “a” is 7.
Claim(s) 1-8, 10-28 and 35-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sawai et al (JP 2003306595, cited by Applicant on the IDS filed on 8/11/2025; a copy of the machine translation from J-PlatPat referred to below has been included with this action).
Sawai discloses a resin composition for sealing electronic parts [0001], including circuits, semiconductor chips and diodes [0027]. Given the variety of electronic components taught by Sawai which can be sealed with the composition, it would have been obvious to the person having ordinary skill in the art to have utilized Sawai’s composition in any known type of electronic device comprising such components, including “opto-electronic” devices as presently recited, in order to provide flame retardancy and excellent moldability [0001].
As to claim 1, Sawai teaches that the resin composition comprises a phosphazene-type fluororubber compound represented by [0008]:
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The compound is a fluorine-containing phosphazene compound as recited in claim 1. In the formula copied above, “m” and “n” indicate an integer of 1 or more (see page 1 of translation, “SOLUTION”). It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any appropriate value of “m” within Sawai’s range of 1 or more, including a value corresponding to an oligomeric phosphazene within the presently claimed range of less than about 20, in order to provide a compound which is capable of providing the balance of flame retardancy, moldability and reliability taught by Sawai [0018]. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
As to claims 2-8, 12, 22, 27 and 28, Sawai’s compound comprises a fluorine-containing chain moiety according to the structure:
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, which is a chain moiety comprising a carbon-containing backbone with a fluorine atom attached thereto. The chain structure comprises at least one CF2 unit (subscripted “n”), corresponding to the presently recited intermediate moiety recited in claims 4-8 and 12. The phosphazene unit in Sawai’s compound corresponds to the presently recited “core moiety” recited in claims 22 and 27. The fluoroalkoxy chain in Sawai’s compound is attached to the phosphorus atom in the phosphazene unit, as recited in claim 28.
As to claims 10, 11 and 13-15, Sawai’s group having the formula
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comprises a CH2 unit as recited in claim 10 and is saturated (meeting claims 11 and 13). As to claims 14 and 15, Sawai teaches that “n” is an integer of 1 or more (see page 1 of translation, “SOLUTION”). In Sawai’s group, the -CH2- corresponds to instant (CX2)a recited in claim 15 (wherein instant X is H and instant “a” is 1), and up to 12 of the (CF2)n units adjacent to -CH2- in Sawai’s structure correspond to instant (CF2)b (if present, any additional CF2 units beyond twelve can be considered part of a moiety other than the instant “intermediate moiety”).
As to claims 16-21, the CF2H moiety of Sawai’s group meets instant claims 16-20, as well as instant EC-1 in claim 21.
As to claims 23-26, Sawai’s group
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contains an oxygen (having a structure -O- according to instant EA-1) which links the phosphorus of the phosphazene unit (“core moiety”) to the fluorine-containing chain.
As to claims 35-41, Sawai is silent as to the recited properties. However, as set forth above, Sawai suggests a phosphazene compound which has the same phosphazene core moiety and same fluoroalkyl side chains as claimed and described in the instant specification. Given the substantial structural similarities between the compounds suggested by Sawai and the compounds described in the instant specification, there is reasonable basis to conclude that Sawai suggests compounds which possess the properties exhibited by the instant compounds, including those properties which are recited in instant claims 35-41.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
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