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 .
DETAILED ACTION
This Office action is responsive to Applicant's Transmittal of new application letter, filed 6/22/2023. As filed claims 1-13 are pending.
Priority
This application filed 06/22/2023 is a Continuation of PCT/JP2021/047380 , filed 12/21/2021 claims foreign priority to 2020-217715, filed 12/25/2020.
Information Disclosure Statement
Applicants' information disclosure statements (IDS) filed on 6/22/2023 and 11/19/2024 have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
Claim Objections
1.Claims 1, 9-12 are objected to because of the following informalities: the recitation “the following” pertaining to the formula should be delete to avoid potential lack of antecedent basis. For example, in claim 1 the limitation “represented by the following formula (1)” should be changed to “represented by formula (1)”.
2. Claims 8-12 are objected to because of the following informalities: the recitation “the above formula” in said claims should be changed to “formula” for appropriate claim phrasing.
3.Claims 2-13 are objected to because of the following informalities: the capitalized recitation “Claim” should be replaced with lower case.
Appropriate correction is required.
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 10-12 are ejected 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 10 recites “(Z81 is a perfluoroalkyl group, or a monovalent group having -CF2 - of the perfluoroalkyl group substituted by an etheric oxygen atom),”; “(Qa2 is a perfluoroalkylene,,,”; “(Qa3 is a … “ rendering said claim ambiguous because is unclear if the limitations in the parenthesis is part of said claim.
Instant claim 11 recites “(Rf is synonymous with Rf in the formula (1A))” rendering said claim ambiguous because is unclear if the limitations in the parenthesis is part of said claim.
Instant claim 12 recites “((Za1in the formula … ”; “(Q82 in the….”; “(033 and q…)” rendering said claim ambiguous because is unclear if the limitations in the parenthesis is part of said claim.
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.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP2019014667, 2019, by Nomura (“the ‘667 publication”; cited by Applicants in IDS; translation attached herewith).
Instant claims are drawn to method for producing a fluorovinyl ether compound, which comprises heat-treating a compound having a group represented by formula (1) in the presence of an oxide containing at !east one element selected from the group consisting of alkali metal elements and alkaline earth metal elements, to obtain a fluorovinyl ether compound having a group represented by formula (2), wherein the specific surface area of the oxide before the heat treatment is at least 1.0 m2/g:
F-C(=O)-CF(X)-(CF2)n-O- Formula (1)
Formula (2) is CF2=CF-O-; in the formula (1 ), n is O or 1, and when n is 0, Xis CF3 and when n is 1, X is F.
The ‘667 publication teaches a method for producing perfluoro (polyoxyalkylene alkyl vinyl ether) and a perfluoro (polyoxyethylene alkyl vinyl ether of formula RF (OQF) nOCF = CF2 – which corresponds to claimed formula (I) in which method substrate of formula RF (OQF) nOCF (CF2X) COF- which corresponds to claimed formula (2) is thermally decomposed in the presence of silicate glass (the claimed oxide) and in a gas phase. The ‘667 publication teaches that silicate glass is silicate glass containing sodium oxide or potassium oxide- which correspond to the claimed oxide containing at !east one element selected from the group consisting of alkali metal elements and alkaline earth metal elements and (instant claims 1, 2, 4, 5) and another element (instant claim 3) (page 3 of translation).
Regarding claim 8, the ‘667 publication teaches producing perfluoro (polyoxyalkylene alkyl vinyl ether) from a specific compound having a perfluoro (polyoxyalkylene) group and an acid fluoride group (page 2 of translation).
Regarding instant claims 9-12, the ‘’667 publication teaches vinyl ethers of formula RF1 (OCF2CF2) n1OCF = CF2 in which formula, RF is a perfluoroalkyl group having 1 to 4 carbon atoms, QF is a perfluoroalkylene group having 1 to 4 carbon atoms, X is a halogen atom, and n is an integer of 1 to 9, RF1 is -CF3, -CF2CF3 or -CF2CF2CF3, and n1 indicates an integer of 3 to 6. Example 1 of page 7, shows reaction of CF 3 CF 2 (OCF 2 CF 2 ) 3 OCF (CF 3 ) COF (Compound 1 1 ) which corresponds to claimed formula 1A or 1A-1 in which variable Rf is a perfluorinated group substituted by etheric oxygen atom, in an autoclave, CH 3 CH 2 (OCH 2 CH 2 ) 2 OCH 2 CH 2 OH (45 0.000 g) was added and stirred while bubbling with nitrogen gas. Next, the internal temperature of the autoclave was kept at 25 to 31 ° C., and F (CF 2 ) 3 OCF (CF 3 ) CF 2 OCF (CF 3 ) COF (175.17 g) was added dropwise over 40 minutes. The autoclave was stirred at 25 ° C for 24 hours while bubbling with nitrogen gas, and CH 3 CH 2 (OCH 2 CH 2 ) 2 OCH 2 CH 2 OC (O) CF (CF 3 ) OCF 2 CF (CF 3 ) O reaction solution (210.03 g) containing (CF 2 ) 3 F was obtained which corresponds to claimed formula 2A or 2A-1 in which variable Rf is a perfluorinated group substituted by etheric oxygen atom.
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Example 2 shows preparation of fluorovinyl ether CF 3 CF 2 (OCF 2 CF 2 ) 3 OCF═CF 2 (Compound 2 1 ) in a fluidized bed tubular reactor filled with glass beads (silicate glass containing sodium oxide, center particle size 150 μm, specific gravity 1.28 g / mL), It was immersed in a salt bath at 325 ° C. nitrogen gas (24.61 L / h) was introduced into the tubular reactor, to initiate a thermal decomposition reaction. After 1 hour, a liquid (13.09 g) distilled in a liquid nitrogen trap was recovered to give f Compound 2 1 95.4% yield. By-product of hydrogen fluoride adduct (page 8 of translation).
Regarding claim 13, the ‘667 publication teaches the thermal decomposition reaction, as a continuous reaction using a fluidized bed for production efficiency. The continuous reaction, the compound 1 is vaporized, and then the vaporized compound 1 is passed through a fluidized bed filled with silicate glass heated to the reaction temperature to obtain a gas containing the product ( page 5 of translation).
The differences between the prior art and the claims at issue is that the prior art by the ‘667 publication does not teach specific surface area of the oxide before the heat treatment is at least 1.0 m2/g or 1-700m2/g of instant claims.
However, the ‘667 publication teaches a method to produce the fluorovinyl ether compound as claimed by the same steps which entails reacting acyl fluoro substrate mediated by silicate glass containing sodium oxide- same oxide containing at least an alkaline metal as claimed, and teaches that the oxide which undergoes heat treatment and that the center particle size 150 μm, specific gravity 1.28 g / mL ( example 2 page 8).
The office does not have the facilities and resources to provide the factual evidence needed in order to establish that the silicate glass containing sodium oxide of the prior art does not possess the same material, structural and functional characteristics – specific surface area of the oxide before the heat treatment of at least 1.0 m2/g – as the claimed oxide comprising the same structural elements. In the absence of evidence to the contrary, the burden is on the applicant to prove that the claimed oxide is of different specific surface area from the silicate glass containing sodium oxide of the prior art taught by the prior art and to establish patentable differences. See In re Best 562F.2d 1252, 195 USPQ 430 (CCPA 1977) and Ex parte Gray 10 USPQ 2d 1922 (PTO Bd. Pat. App. & Int. 1989).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the fluorovinyl ether compound as claimed by the method taught by the ‘667 publication, because the prior art teaches preparing such compound by the same steps and utilizing same catalyst - silicate glass containing sodium oxide.
In conclusion, the prior art as a whole as taught by the ‘667 publication teaches the reaction of acyl fluorinated substrate to afford the corresponding fluorovinyl ether product in the presence of an oxide containing alkaline metal disclosed by the ‘667 publication; therefore, the prior art teaches the elements of the claimed method producing fluorovinyl ether with a reasonable expectation of success, that the invention would be prima facie obvious to one of ordinary skill.
"Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results ". See MPEP § 2143 .
Consequently, absent a showing of unexpected results, the instant claims are obvious over the prior art.
Conclusion
Claims 1-13 are rejected.
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examiner should be directed to:
Ana Muresan
(571) 270-7587 (phone)
(571)270-8587 (fax)
Ana.Muresan@uspto.gov
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692