DETAILED ACTION
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 1-14 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.
The parentheses around limitations in the claims render the claims indefinite and must be removed. It is unclear if the text within the parentheses is included in the claims and further limits the subject matter of the claims, or whether it is an aside to the claims and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claims. Appropriate correction is required. Parentheses in reference characters, such as Formula (1), Formulae (2-1) to (2-4) are proper and do not need to be removed.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claims 1-6, 8, 9, 12, and 13 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Minami et al. (US 2020/0010619).
Regarding claim 1: Minami et al. teaches the fluorine containing ether compound:
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(para. 212), which reads on the claimed structure:
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specifically, R3 is a divalent organic group containing at least one polar group and an alicyclic structure having 6 carbons and does not contain a perfluoropolyether chain, R2 and R4 are perfluoropolyether chains, R1 and R5 are terminal groups containing two polar groups, in which individual polar groups are bound to different carbon atoms and the carbon atoms to which the polar groups are bound are bound to each other via a linking group containing a carbon atom to which the polar groups are not bound.
Regarding claims 2 and 3: Minami et al. teaches R3 has the structure of formula (2-1) (see annotated structure above) where Y is -O- and X is an alicyclic structure having 6 carbons.
Regarding claim 4: Minami et al. teaches a saturated alicyclic structure for R3 (see annotated structure above).
Regarding claim 5: Minami et al. teaches cyclohexane (see annotated structure above).
Regarding claim 6: Minami et al. teaches the at least one polar group of R3 is a group containing a polar group of a hydroxyl group (see annotated structure above).
Regarding claim 8: Minami et al. teaches the two polar groups in R1 and R5 are all hydroxyl groups (see annotated structure above).
Regarding claim 9: Minami et al. teaches the structure of formula (9) where i is 1.
Regarding claim 12: Minami et al. teaches the compound is a lubricant for a magnetic recording medium (para. 42).
Regarding claim 13: Minami et al. teaches a magnetic recording medium having a magnetic layer, a protective layer, and a lubricating layer sequentially provided on a substrate where the lubricating layer contains the fluorine containing ether compound (para. 43).
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 7, 10, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Minami et al. (US 2020/0010619) as applied to claims 1 and 13 set forth above.
Regarding claim 7: Minami et al. teaches R2 and R4 have the structure of claimed formula (4), where the disclosed n is the claimed b and the disclosed m is the claimed c. Minami et al. discloses m is 2-5 and n is 2-5 (para. 213), which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to have overlapping m and n values and would have been motivated to do so since Minami et al. teaches they are sufficient to achieve the disclosed invention.
Regarding claim 10: Minami et al. teaches the number average molecular weight is 1,000 to 10,000 (claim 12), which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping number average molecular weight of the compound of Minami et al. and would have been motivated to do so since Minami et al. teaches this is an acceptable molecular weight to achieve the disclosed invention.
Regarding claim 14: Minami et al. teaches the average film thickness of the lubricating layer is 0.5-3 nm (para. 44) which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the overlapping thickness of Minami et al. and would have been motivated to do so since Minami et al. teaches this is an acceptable thickness to achieve the disclosed invention.
Allowable Subject Matter
Claim 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Minami et al. is the closest prior art which teaches the structure show above. However, Minami et al. does not teach any of the specific structures claimed in claim 11. Further, there is no teaching or suggestion found in the prior art to replace one of the longer arm/polar moieties on the alicyclic group with a shorter chain polar moiety as in the structures of claim 11.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references teach fluorine containing ether compounds.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767