DETAILED ACTION
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, 2, 4-7, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tonelli et al. (EP 0 870 778).
Regarding claim 1: Tonelli et al. teaches a fluorine containing ether compound having the formula:
PNG
media_image1.png
42
360
media_image1.png
Greyscale
(abstract). This compound reads on claimed formula (1), where the Rf of Tonelli et al. is the claimed A1/a fluoroalkyl group of 1-3 carbon atoms (abstract). The (CF2CF2O)m(CF2O)n group of Tonelli et al. read on the claimed (Rf12)m2-O-(Rf11O)m1 groups since Rf12 and Rf11 are fluoroalkylene groups having a carbon number of 1-6. The group Aq-Tp of Tonelli et al. reads on the claimed Q1 in embodiment 56 on page 10, where -AT can be
PNG
media_image2.png
94
414
media_image2.png
Greyscale
, which reads on the definition of claimed Q1. The claimed m2 can be zero since the first group Rf is connected to an oxygen, or it can be 1 as in the group (CF2CF2O). Claimed m1 can be 1, or up to m + n in Tonelli et al., where m/n is 0.2-5 (abstract), and claimed n1 is 1. These ranges overlap the claimed ranges. While Tonelli et al. teaches other embodiments that do not read on the claimed structure, before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to select embodiment 56 of Tonelli et al. and would have been motivated to do so since embodiment 56 is a disclosed example of a solution to the problem facing Tonelli et al., namely improving surface properties of films.
Regarding claim 2: The claimed m2 can be zero since the first group Rf is connected to an oxygen.
Regarding claim 4: Tonelli et al. teaches the number average molecular weight is 400-5000 (pg. 2 lines 35-40), which is the same as weight average molecular weight when the polydispersity is 1.
Regarding claim 5: While it is not explicitly clear if Tonelli et al. teaches the fluorine containing ether compounds disclosed can be used together, 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 (MPEP 2144.06 I).
Regarding claims 6 and 7: Tonelli et al. teaches the compound mixed with solvents and made into a product (pg. 11 lines 35-45) and used for a coating (pg. 2 lines 15-20).
Regarding claims 9 and 10: Tonelli et al. teaches coating a substrate with the claimed compound (pg. 2 lines 15-20).
Claims 1-3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Gries (EP 0 525 444), citing the original document and the English language machine translation provided.
Regarding claim 1: Gries teaches
PNG
media_image3.png
36
216
media_image3.png
Greyscale
(abstract), where R1 is a cyclic fluoroalkyl radical or a straight or branched chain fluoroalkyl radical (abstract of the translation), which overlaps the claimed formula (1). 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 ranges of the moieties in the structure and would have been motivated to do so since the compound is a disclosed solution to the problem facing Gries
Regarding claim 2: The claimed m2 can be zero since the first atom after Rf is O.
Regarding claim 3: Gries teaches that Rf can be a cyclic fluoroalkyl radical (translation abstract), the term “alkyl” meaning the carbocycle is aliphatic.
Regarding claim 8: Gries teaches the compound is in a liquid medium (pg. 5 claim 5 of the translation). The property of “high oxygen solubility liquid” is an arbitrarily broad term that can apply to any number of oxygen solubility levels. Further, since Gries teaches an overlapping structure, the properties of the chemical composition and its properties are inseparable (MPEP 2112.01 II).
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.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767