DETAILED ACTION
Claim Rejections - 35 USC § 112
The rejection of claim 17 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of Applicant’s amendments.
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, 8-10, 12, 14 and 22-23 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.
Claim 1 requires the presence of specific phosphonic acid or silanol end groups both of which are attached to the mainchain -Rf- via an ether linkage. However, the claimed Rf group includes a structure which includes a terminal -O- linkage (-CF2O(CF2CF2CF2CF2O)n-). It is unclear how two -O- groups can be linked in this manner. Claim 12 includes the same Rf group (-CF2O(CF2CF2CF2CF2O)n-).
Claim 22 is indefinite because the lubricant chains therein include additional chain segments (i.e., -CH2CF2-)that are excluded by the formula R1-Rf-R1 set forth in claim 1, from which 22 depends.
Claim 23 is indefinite because the lubricant chain therein includes additional chain segments (i.e., -CH2CH(OH)CH2OCH2CF2-) that are excluded by the formula R1-Rf-R1 set forth in claim 1, from which 23 depends.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 fails to further limit claim 10. Claim 10 depends from claim 9, which depends from claim 1. Claim 1 recites the same limitation as set forth in claim 12.
Double Patenting
The rejection of claims 1, 5-7, 9-10, and 14-15 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,898,116 is withdrawn in view of Applicant’s amendments.
The rejection of claims 1, 5-7, 9-10, and 14-15 on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,414,617 is withdrawn in view of Applicant’s amendments.
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.
The rejection of claim(s) 1-2, 9-10, 12 and 15 under 35 U.S.C. 102a1 as being anticipated by JP
2004-39102 is withdrawn in view of Applicant’s amendments.
The rejection of claim(s) 1 and 4-5 under 35 U.S.C. 102a1 as being anticipated by Flynn et al. (US
2005/0048288) is withdrawn in view of Applicant’s amendments.
The rejection of claim(s) 1-3, 15-16 and 20-21under 35 U.S.C. 102a1 as being anticipated by
Kondo et al. (EP 0643125) is withdrawn in view of Applicant’s amendments.
Claim(s) 16 is/are rejected under 35 U.S.C. 102a1 as being anticipated by JP 06049214 (see English abstract and formulas in JP document).
JP 0604921 discloses a method of making a compound be reacting a perfluorinated polyether with a halogenated (fluorinated) functional group wherein the functional group has silanol endgroups (see paragraphs [0034]-[0037] and abstract).
Claim Rejections - 35 USC § 103
The rejection of claim(s) 3, 6, 11, 13 under 35 U.S.C. 103 as being unpatentable over JP 2004-
39102 is withdrawn in view of Applicant’s amendments.
The rejection of claim(s) 2-3, and 15 under 35 U.S.C. 103 as being unpatentable over Flynn et al. (US 2005/0048288) is withdrawn in view of Applicant’s amendments.
The rejection of claims 1-3, 5-7, 9-10, and 14-15 under 35 U.S.C. 103a as unpatentable over Pathem et al. (US 2022/0220406- publication date 7/14/2022) is withdrawn in view of Applicant’s amendments.
Allowable Subject Matter
Claim 15 is allowable over the closest prior art to Pathem et al. and Flynn et al. The references teach a perfluoropolyether with a phosphonic acid endgroup or a silanol endgroup (Pathem). However, neither reference teaches or suggests the claimed benzyl phosphonic acid or benzyl silanol end groups. The prior art fails to provide a reasoning to modify the silanol and phosphonic acid end groups of Pathem and Flynn to include the claimed benzyl group.
Claims 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).
Claims 1, 3, 8-12, and 14 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 closest prior art to Pathem et al. and Flynn et al. teach a perfluoropolyether with a
phosphonic acid endgroup or a silanol endgroup (Pathem). However, neither reference teaches or suggests the claimed -O-C6H5-OPO(OH)2 or -O-C6H5-Si(OH)3 end groups. The prior art fails to provide a reasoning to modify the silanol and phosphonic acid end groups of Pathem and Flynn to include the claimed -O-C6H5- linkage between the end group and the perfluoropolyether chain.
Response to Arguments
Applicant’s arguments with respect to claim(s) 16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/Holly Rickman/
Primary Examiner, Art Unit 1785
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