DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
As previously set forth: Applicant’s election without traverse of Group I in the reply filed on 7/29/25 is acknowledged.
Applicant’s election of the species of example 1 (polystyrene reacted with perfluorooctyl iodide) in the reply filed on 3/17/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 2-3, 5-9, 11-12, 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/species, there being no allowable generic or linking claim.
Priority
As previously set forth: No English translation of the foreign priority is found in the file, the claims are thusly given an effective date of the filing of the instant application: 8/14/23
Response to Arguments/Amendments
Applicant argues Feeny does not anticipate the claims and there is no evidence that the aromatic ring of Feeny is reacted with the perfluoroalkyl iodides. Applicant puts for various arguments drawn to the reaction therein.
The Examiner disagrees. Only one element is picked from a list, e.g. swapping the exemplified styrene/maleic anhydride copolymer is polystyrene and reacting with the exemplified mixed C4-C10 perfluoroiodide. The end product would include a C8 perfluoro substitution anticipating the elected species. The Office holds that picking one thing from a list (e.g. swapping the exemplified styrene/maleic anhydride copolymer with a polystyrene homopolymer) is anticipated.
Regarding arguments drawn to the reaction of the aromatic ring with the perfluoroalkyl iodides, Applicant’s arguments are not found persuasive. The title of Feeny is “polyfluoroalkylation of aromatic compounds”. The abstract of Feeny discloses “perfluoroalkyl iodide is reacted with an aromatic compound”. Applicant is welcome to challenge the entirety of the patented material, however, the Office must give weight to the disclosure/desires therein and the crux of the document is to react the aromatic compound with perfluoroalkylation. The crux of the document infers that the aromatic compound is substituted with the perfluoro compound. Applicant’s arguments are not persuasive to invalidate the patented material. Applicant can show the claimed product is not produced, however Applicant’s arguments are not enough to invalidate the data of Feeny. As such Applicant’s arguments are not found persuasive and the rejection stands as set forth below.
Applicant’s arguments drawn to Hisa and Bhatt are moot since the amendments overcome these rejections and the rejections have been withdrawn
Claim Objections
Claim 10, and its dependents, is objected to because of the following informalities: In the last “r is 0” section “R31” should be “R31”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4, 10, 13 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Feeny (WO 93/16969).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics. Regarding the amendment to claim 1, the use of perfluorooctyl iodide anticipates the second “r is 0” limitation of claim 1 wherein r is 0, R1 is C1, X1 is C6 both substituted with a halogen (fluorine). Regarding the amendment to claim 10, the use of perfluorooctyl iodide anticipates the first “r is 0” limitation wherein R31 is C7 and X1 is C1 both substituted with a halogen (fluorine)
Feeny discloses polyfluoroalkylation of aromatic compounds (title). In Example 14 (page 10) Feeny fluorinates a styrene/maleic anhydride copolymer using a C4-C10 mixed perfluoroalkyl iodide. The perfluoroiodides are of the formula F(CF2)a (page 3-page 4), embracing the perfluorooctyl iodide elected. This anticipates the reaction and product of claims 1, 4, 10, 13. It is further noted that Example 15 also reacts polystyrene (and dichlorobenzene) with C4-C10 perluoroalkyl iodides and page 2 of Feely discloses just polystyrene may be used. Swapping just polystyrene for any of the polymers of the examples is anticipated and additionally/alternatively anticipates the elected species.
Rejection over Claim(s) 10, 13 under 35 U.S.C. 102a1 as being anticipated by Hisa (Synthesis and characterization of a polystyrene type polymer bearing a cyclic perfluoroalkylene group, Polymer 265, 2023, 125588 available online Dec 7 2022-reference of record) is withdrawn, Hisa does not meet the new requirements of claim 10.
Claim Rejections - 35 USC § 103
Rejection over Claim(s) 1, 4, 10, 13 under 35 U.S.C. 103 as being unpatentable over Bhatt (US 2005/0245693) is withdrawn, Bhatt does not meet the new requirements of claims 1 and 10.
Conclusion
As previously set forth: The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20200199264 in [0048] has the reaction of an aromatic heterocyclic polymer with a fluorine containing group, however, the fluorine group has the structure CxFxC2H4-I. Having the C2H4 group next to the -I group does not meet the formula of claim 1 nor give the same end product as claim 10.
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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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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