DETAILED ACTION
Summary
This is a non-final office action for application 18/077,339. The response to the restriction/election requirement dated 6 November 2025 is acknowledged. Claims 1-14 are pending. Claims 6-7 and 12-14 are withdrawn from consideration.
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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Reference character “10” is labeled in Figure 1, but is not mentioned in the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-5 and 8-11 in the reply filed on 6 November 2025 is acknowledged. The traversal is on the ground(s) that no adequate reasons and/or examples have been provided to support the conclusion of patentable distinctness. This is not found persuasive. The coating methods can be performed using non-fluorine-containing monomers and polymers, such as acrylic monomers. There are other methods to manufacture the (B1) or (B2) compounds and other methods of reacting the (B1) compounds to form fluorine-containing ether compounds as are noted in the references cited below. Also note that the process of Claim 6 does not necessarily require adhesive groups, so it facially does not require the product of the Claim 1 compound.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-7 and 12-14 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 timely traversed the restriction (election) requirement in the reply filed on 6 November 2025.
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.
Claims 11 is 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 11 recites a dependence on the fluorine-containing ether composition of Claim 7. There is insufficient antecedent basis for this limitation in the claim. Claim 7 does not recite a composition. Claim 7 recites a method for manufacturing a compound. It is not clear what composition is being referred to here. Please clarify so that skilled users can know if they are within the scope of the claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-4 and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HOSHINO (WO-2019049753-A1).
The HOSHINO (WO-2019049753-A1) reference is in the IDS dated 13 December 2022. A translation is included in this office action.
Regarding Claim 1, HOSHINO teaches a fluorine-containing ether compound (Abstract). HOSHINO generally teaches that its fluorine containing ether compound is represented by the following formula 1 ([0036])
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where R1 is an alkyl group which may have a fluorine atom ([0009], [0037]), (OX1)a and (OX2)b are a poly(oxyfluoroalkylene) chain where X1 and X2 have 1-6 carbon atoms ([0016], [0025]), a+b is an integer of 8-400 ([0039]), Y is a single bond or divalent linking group ([0041]), Z is a carbon, nitrogen or silicon atom ([0043]), R2 is a hydrogen, hydroxyl or alkyl group ([0044]) and R3 is –(L1)Si(R)nL3-n ([0009]) where R is a monovalent hydrocarbon group and L is a hydrolyzable group or hydroxyl group ([0007]) where q is 0-1 ([0009]) and n is 0-2 ([0007]. This broadly overlaps the recited (A1) structure where the recited Rf is R1, the recited adhesive group T1 contains the reactive silyl group R3, the recited Rf1-O and (CHF)O can be worked into the OX1 and OX2 chains and the broadly recited Q1 can represent the Y, Z and R2 connections between the OX1 and OX2 chains the reactive silyl group. Here the specification of the current invention is used as evidence to disclose that the reactive silyl group taught by HOSHINO is a suitable adhesive group (cur spec: p. 22, line 32).
HOSHINO teaches several specific structures (Table 1) which satisfy the (A1) definition recited by the claim. HOSHINO teaches R1 groups which satisfy Rf as recited by the claim (Table 1). HOSHINO teaches many structures for the [(OX1)a(OX2)b] group (Table 1) which contain a CHFO group in the middle of the chain. Everything to the left of that group can be satisfied by the O-(Rf1-O)m1 recited by the claim where Rf1 can be the same or different from each other. The CHFO group itself satisfies (A1) where m3=1 and m4=0. Everything to the right of that group along with Y and Z can be part of the recited Q1 linker group (Table 1) and the trimethoxysilyl groups satisfy the requirement of adhesive group T1 where n2 is either 2 or 3 (Table 1). For example, HOSHINO teaches in Table 1, Structure 2, a structure which satisfies (A1) where Rf=CF3CH2, (Rf1O)m1 is CF2CHF-O-CF2CF2CF2CH2-O- with a repeat count t of 1-50 ([0048]). Note that this unit represents two of the recited (Rf1-O) repeat units, so the t count of 1-50 corresponds to m1 of 2-100 which is within the 0-210 range recited for m1, m2= 1 for the CF2 group, m3=1, m4=0, n1=1, Q1=CF2CF2CF2-CONHCH2-C(CH2CH2CH2-)3, T1=Si(OCH3)3, and n2=3.
Regarding Claim 2, HOSHINO teaches the invention of Claim 1 where the m3=1 (see above).
Regarding Claim 3, HOSHINO teaches the invention of Claim 1 where m4=0 (see above).
Regarding Claim 4, HOSHINO teaches the invention of Claim 2 where in Claim 1, m4=0 (see above).
Regarding Claim 9, HOSHINO teaches the invention of Claim 1. HOSHINO teaches a composition including the specific compound of its invention and a liquid medium ([0055]). HOSHINO teaches a wet coating method using the specific compound in a liquid medium ([0065]).
Regarding Claim 10, HOSHINO teaches the compound of Claim 1. HOSHINO teaches an article produced by treating the surface of a substrate by a coating method using the compound of its invention ([0065], Claim 10).
Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by LOPATA (J. Am. Chem. Soc. 1981, 103, 3304-3309).
Regarding Claim 5, LOPATA teaches the synthesis, structure and analysis of fluoromethyl formate (Abstract). LOPATA teaches that this compound has the structure of HC(O)-OCH2F (Table 2, Row 1; Fig 1):
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This structure satisfies the (B1) structure recited by the claim where m1=m2=0 and Rf=CH2F which is a fluoroalkylene group having a carbon number of 1.
Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by FARNHAM (US-5414140-A).
The FARNHAM reference is in the IDS dated 13 December 2022.
Regarding Claim 5, FARNHAM teaches fluorinated ether aldehydes and their polymers (Abstract). FARNHAM teaches that its invention comprises an aldehyde of the following formula (Col 2:30-40):
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where Y is fluorine, aryloxy, or -OCF=CF2, each X can be H or F, p is 0 or 1 and k, m, n are integers between 0-50 provided that k+m+n is 2 or more (Coll 2: 35-40). This overlaps the recitation for (B1) that is recited by the claim. Here, (CX2)CF2 satisfies R1 where m=1, Y=F leads to FCX2CX2 satisfying Rf, and (CX2CX2-O)k-1(C3F6O)m(CF2)n satisfying (Rf1-O)m1 as Rf1 is recited as being a fluoroalkylene group of 1-6 carbons which can be the same or different when repeated. FARNHAM exemplifies several fluorinated ether aldehydes that satisfy the claim including CF3CH2OCF2CF2CHO (Col 10, Example 6) which satisfies (B1) where Rf=CF3CH2, m1=0, R1=CF2CF2 and m2=1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over HOSHINO (WO-2019049753-A1).
Regarding Claim 8, HOSHINO teaches the invention of Claim 1 above. HOSHINO further teaches that its compound may be used with a fluorine-based organic solvent, including a fluoroalkyl ether solvent ([0059]). HOSHINO further teaches that its compound may be used alone or in combination of two or more ([0056]). Since the compound of Claim 1 is an fluorine-containing either, then the use of two or more fluorine-containing ether compounds would satisfy the requirement of one or more plus another fluorine-containing ethers. HOSHINO also teaches that its compound may be used in combination with other fluorine-containing ether compounds ([0067]) including commercially available fluorine-containing ether compounds ([0068]). HOSHINO does not exemplify any of these combinations, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of HOSHINO and use two or more of its fluorine containing ethers, or a fluoroalkyl ether solvent or in combination with other fluorine-containing ether compounds, based on the teachings of the specification.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over FARNHAM (US-5414140-A).
Regarding Claim 11, Claim 11 is rejected under 35 USC 112(b) above for a lack of antecedent basis of the “composition of Claim 7” (see 112(b) rejection above). The prior art rejection will proceed under the interpretation that Claim 11 depends upon a composition which includes the (B1) or (B2) product compounds of the method of Claim 7. Note the definitions for (B1) and (B2) in Claim 7 are the same as those recited in Claim 5. FARNHAM teaches the (B1) compounds of Claim 5 (see Claim 5 rejection above). FARNHAM further teaches that fluorinated aldehydes are useful as monomers for making polymers and the resultant polymers are useful in films and coatings (Col 4: 45-50). Films and coatings can be interpreted as surface layers on a substrate articles which would satisfy the claim. FARNHAM exemplifies polymerizing its fluorinated ether aldehydes (Col 11, Example 8 and others) but not exemplify polymerizing them in the form of a film or coating, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of FARNHAM and polymerize its fluorinated ether aldehydes in the form of a film or coating based on the teachings of the specification.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764