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 .
Claim interpretation
The limitation “a functional group” in claims 11-12 is interpreted to be “the functional group” as set forth in claim 1, from which claims 11 and 12 indirectly depend.
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.
Claim 17 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 17 includes a halogenated functional group referred to as (2-bromethyl)phosphonic acid.” However, it is unclear if this chemical name refers to 2-bromomethyl or 2-bromoethyl phosphonic acid. The specification only refers to “(2-bromethyl)phosphonic acid” so does not clarify the meaning of the claim limitation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5-7, 9-10, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,898,116. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the ‘116 patent recites a lubricant having a perfluoropolyether chain with terminal functional groups (Re1 and Re2) at both ends of the perfluoropolyalkyl ether structure that include carboxylic acid (-COOR) , phosphonic acid ((-PO-(OR)2 wherein R is H) and silanol (-SiR3 wherein R is a chalcogen such as O) -see claim 6.
It is noted that US’116 does not claim that the aforementioned compound is “configured to be adsorbed” by a magnetic recording medium. However, this limitation is a recitation of intended use in the preamble of claim 1. It does not confer any additional structural or compositional features to the claimed perfluorinated polyether. Thus, the same compounds would be expected to be capable of adsorption to a recording medium.
With regard to claims 5-7, see claim 2 of US’116.
With regard to claims 9-10 and 14, see claims 14-15 of US’116.
With regard to claim 15, Re1-Rb1-Ri-Rc-Ri-Rb2-Re2 as set forth in claim 1 of US ‘116 reads on the backbone chain -Rb1-Ri-Rc-Ri-Rb2- of independent claim 15. Claim 6 of US ‘116 discloses the endgroups Re1 and Re2 being selected from a groups including carboxylic acid (-COOR) , phosphonic acid ((-PO-(OR)2 wherein R is H) and silanol (-SiR3 wherein R is a heterocyclic C1-C20 radical such as -CH2O), as noted above.
Claims 1, 5-7, 9-10, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,414,617. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the ‘617 patent recites a lubricant having a perfluoropolyether chain with terminal functional groups (Re1 and Re2) at both ends of the perfluoropolyalkyl ether structure that include carboxylic acid (-COOR) , phosphonic acid ((-PO-(OR)2 wherein R is H) and silanol (-SiR3 wherein R is a chalcogen such as oxygen) -see claim 2.
It is noted that US’617 does not claim that the aforementioned compound is “configured to be adsorbed” by a magnetic recording medium. However, this limitation is a recitation of intended use in the preamble of claim 1. It does not confer any additional structural or compositional features to the claimed perfluorinated polyether. Thus, the same compounds would be expected to be capable of adsorption to a recording medium.
With regard to claims 5-7, see claim 2 of US’617.
With regard to claims 9-10 and 14, see claims 15-17 of US’617.
With regard to claim 15, Re1-Rb1-Ri-Rc-Ri-Rb2-Re2 as set forth in claim 1 of US ‘617 reads on the backbone chain -Rb1-Ri-Rc-Ri-Rb2- of independent claim 15. Claim 2 of US ‘617 discloses the endgroups Re1 and Re2 being selected from a groups including carboxylic acid (-COOR) , phosphonic acid ((-PO-(OR)2 wherein R is H) and silanol (-SiR3 wherein R is a heterocyclic C1-C20 radical such as -CH2O), as noted above.
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.
Claim(s) 1-2, 9-10, 12 and 15 is/are rejected under 35 U.S.C. 102a1 as being anticipated by JP 2004-39102 (see English translation included with this action and Japanese document of record).
JP2004-39102 discloses a lubricant for a magnetic recording medium having the following structure with a perfluoropolyether backbone and carboxylic acid end groups:
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(para [0004]).
The reference discloses that the lubricant compound is bonded to the underlying carbon protective layer in a magnetic recording medium (see para [0029]).
Claims 2 and 12 are met by lubricant (d), as shown above, and as further described in paragraph [0065]. In paragraph [0065], the reference teaches that i and j, corresponding to the claimed values m and n, respectively, are 1.
With regard to claim 9, see Figure 1 and paragraph [0015].
With regard to claim 10, see paragraphs [0007]-[0008].
With regard to claim 15, Formula D meets the claim limitations as follows wherein Ri, an optional linkage as per the claim, is absent:
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Claim(s) 1 and 4-5 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Flynn et al. (US 2005/0048288).
Flynn et al. disclose a perfluoropolyether compound having functional groups comprising phosphonic acid. The specific phosphonic acid groups set forth in claims 4-5 and taught by Flynn in paragraph [0068].
Claim(s) 1-3, 15-16 and 20-21 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Kondo et al. (EP 0643125).
Kondo et al. disclose a perfluoropolyether compound for a lubricant on a magnetic recording medium having functional groups comprising carboxylic acid (see abstract and formula 8 on page 5). The reference discloses a specific example as follows:
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With regard to claim 15, formula 8 reads on the claim as follows:
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With regard to claim 16, Kondo also discloses reacting a perfluoropolyether with a carboxylic acid chloride to form a lubricant composition (see page 4, lines 23-29).
With regard to claims 2-3 and 20-21, the perfluoropolyether chain in formula 8 of Kondo meets the limitation for Rf= -CF2O(CF2CF2O)m(CF2O)nCF2-, wherein m and n are 1. See also lines 42-43.
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.
Claim(s) 3, 6, 11, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2004-39102 (see English translation included with this action and Japanese document of record).
JP2004-39102 discloses a lubricant for a magnetic recording medium having the following structure with a perfluoropolyether backbone and carboxylic acid end groups:
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With regard to claims 3 and 11, Formula d includes an addition CF2O linkage in the perfluoropolyether chain as compared to the claimed compound. However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to reduce the number of CF2O linkages which are subject to catalytic degradation.
With regard to claims 6 and 13, Formula d of JP’102 does not include an additional -CH2- group in between the COOH endgroup and the perfluoropolyether chain. However, it would have been obvious to one of ordinary skill in the art to include an additional CH2 linking group in between the carboxylic acid group and the perfluoropolyether chain as shown in Formula (e).
Claim(s) 2-3, and 15 is/are under 35 U.S.C. 103 as being unpatentable over Flynn et al. (US 2005/0048288).
Flynn et al. disclose a perfluoropolyether compound having functional groups comprising phosphonic acid. The reference teaches a compound as follows wherein Rf is a perfluoropolyether and X is selected from a group including H:
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Rf is a perfluoropolyether selected from a group including the claimed chain segments (para [0066]) wherein one or two phosphonic acid containing functional groups is attached thereto. X in the formula shown above is selected from a group that includes H (para [0060]. It would have been obvious to one of ordinary skill in the art to choose H from the group of suitable terminal X groups on the phosphonic endgroup in view of the apparent suitability of each of the disclosed X groups
With regard to claim 3, it would have been obvious to one of ordinary skill in the art to choose the claimed Rf group from the group of suitable perfluoropolyether chains disclosed in paragraph [0066) in view of the apparent suitability of all disclosed chains.
With regard to claim 15, the perfluoropolyether with two terminal phosphonic acid-containing end groups described above reads on the claimed embodiment wherein Ri is not present (Ri is claimed as being “optional”). Rf disclosed by Flynn reads on the claimed -Rb1-Rc-Rb2- group as follows:
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see para[0066].
Claims 1-3, 5-7, 9-10, and 14-15 are rejected under 35 U.S.C. 103a as unpatentable over Pathem et al. (US 2022/0220406- publication date 7/14/2022).
With regard to claim 1, Pathem et al. discloses a lubricant having a perfluoropolyether chain with terminal functional groups (Re1 and Re2) at both ends of the perfluoropolyalkyl ether structure that are selected from a group that includes carboxylic acid (-COOR) , phosphonic acid ((-PO-(OR)2 wherein R is H) and silanol (-SiR3 wherein R is a chalcogen such as oxygen) -see claims 1-2. Choice of any one of the specifically disclosed endgroups from the group set forth in claim 2 of Pathem et al. would have been obvious.
It is noted that US’617 does not claim that the aforementioned compound is “configured to be adsorbed” by a magnetic recording medium. However, this limitation is a recitation of intended use in the preamble of claim 1. It does not confer any additional structural or compositional features to the claimed perfluorinated polyether. Thus, the same compounds would be expected to be capable of adsorption to a recording medium.
With regard to claims 2-3 and 5-7, see paragraphs [0046]-[0047] and [0051]-[0056].
With regard to claims 9-10 and 14, see claims 15-17 and para [0065] of Pathem et al.
With regard to claims 11-13, see paragraphs [0046]-[0047] and [0051]-[0056].
With regard to claim 15, Re1-Rb1-Ri-Rc-Ri-Rb2-Re2 as set forth in claim 1 of Pathem et al. reads on the backbone chain -Rb1-Ri-Rc-Ri-Rb2- of independent claim 15. Claim 2 of Pathem et al. discloses the endgroups Re1 and Re2 being selected from a groups including carboxylic acid (-COOR) , phosphonic acid ((-PO-(OR)2 wherein R is H) and silanol (-SiR3 wherein R is a heterocyclic C1-C20 radical such as -CH2O), as noted above. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to choose any one of the disclosed endgroups in view of the apparent suitability of each endgroup.
Allowable Subject Matter
Claims 8 and 18-19 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.
The closest prior art to Pathem et al. and Flynn et al. teach a perfluoropolyether with a phosphonic acid endgroup. However, the references fail to teach or suggest a method of making the phosphonic acid-functionalized perfluoropolyether via a reaction between a perfluoropolyether and diethyl (2-bromoethyl)phosphonate or diethyl (4-bromobenzyl)phosphonate. Instead, the prior art to Flynn teaches forming the lubricant via reaction with diethyl(4-aminobenzyl)phosphonate wherein an amide linkage is formed in the lubricant compound between the perfluoropolyether and the phosphonate. There is no teaching or suggestion in the art to lead one of ordinary skill in the art to replace the 4-aminobenzyl group taught by Flynn et al. with 4-bromobenzyl as required by the claim.
The closest prior art to Pathem et al. also teaches a perfluoropolyether with a silanol endgroup. However, the reference fails to teach or suggest a method of making the silanol-functionalized perfluoropolyether via a reaction between a perfluoropolyether and (4-chlorophenyl)triethoxysilane or (4-bromophenyl)trimethoxysilane. It was known in the prior art to form silanol modified perfluoropolyethers but there is no teaching or suggestion in the art of using the specifically claimed starting materials (claim 19) or forming a polymer having a perfluoropolyether chain with a -OC6H5-Si(OH)3 endgroup (claim 8).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLY RICKMAN whose telephone number is (571)272-1514. The examiner can normally be reached Mon, Tues, Thurs, 9am-3pm ET.
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/Holly Rickman/Primary Examiner, Art Unit 1785