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 .
This action is responsive to applicants’ amendment and response received September 18, 2025. Claims 1-13 are currently pending.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The rejection of claims 1-5, 7, and 8 under 35 U.S.C. 102(a)(2) as being anticipated by Wysong et al, US 2023/0348685 is withdrawn in view of applicants’ amendment and response.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kontomaris et al, US 2020/0131943.
Kontomaris et al teach a working fluid which contains a perfluoroheptene (¶33) and may also contain 1-chloro-3,3,3-trifluoropropene (¶35), and so it would have been obvious for one of ordinary skill in the art to formulate a mixture of these compounds in roughly equal amounts with confidence of forming an effective working fluid as perfluoroheptene is essential and 1-chloro-3,3,3-trifluoropropene is a suitable co-fluid.
Applicants have traversed this rejection on the grounds that many co-fluids are contemplated by the reference and so it should not be applied. First, the examiner notes that the compounds presently claimed are themselves generic terms which allow for multiple combinations, so applicants also contemplate many co-fluids, though admittedly not as many as the reference. The examiner maintains that if HCFO-1233zd is specifically taught as a suitable co-fluid of the invention, that is ample motivation to persons of ordinary skill in the art to use it in combination with a perfluoroheptene with a reasonable expectation of obtaining an effective working fluid.
Claims 1, 2, and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nappa et al, US 2007/0105738.
Nappa et al teach a composition for degreasing and depositing a fluorolubricant where a perfluoroheptene is preferred (¶119, example 1) and 1,3-dichloro-3,3,3-trifluoropropene is a possible co-fluid (¶54). The composition is applied with an aerosol propellant (¶66) and may be applied to a magnetic medium (claim 21). It would have been obvious for one of ordinary skill in the art to prepare a composition comprising these two solvents with confidence of forming an effective degreasing and fluorolubricant depositing composition as both solvents are taught as suitable by the reference. The examiner maintains that a chlorotrifluoropropene, without further definition, includes 1,3-dichloro-3,3,3-trifluoropropene.
Applicants have traversed this rejection on the grounds that that the examiner has many co-fluids are contemplated by the reference and so it should not be applied. First, the examiner notes that the compounds presently claimed are themselves generic terms which allow for multiple combinations, so applicants also contemplate many co-fluids, though admittedly not as many as the reference. The examiner maintains that if ,3-dichloro-3,3,3-trifluoropropene is specifically taught as a suitable co-fluid of the invention, that is ample motivation to persons of ordinary skill in the art to use it in combination with a perfluoroheptene with a reasonable expectation of obtaining an effective fluorolubricant.
Allowable Subject Matter
Claims 7 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHARLES I BOYER whose telephone number is (571)272-1311. The examiner can normally be reached M-S 10-430.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 5712722817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES I BOYER/Primary Examiner, Art Unit 1761