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 .
Election/Restrictions
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Claims 2-3, 5-9, 11-12, 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/species, there being no allowable generic or linking claim.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
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
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/6/26, 9/3/25, 10/5/23 have been considered by the examiner.
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, 4, 10, 13 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Feeny (WO 93/16969).
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.
Claim(s) 10, 13 is/are rejected 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).
Hisa discloses in Table 1 the use of a polystyrene monomer having C4F9 pendent therefrom, to polymerize to form fluorinated polystyrene (see Scheme 1 for the preparation of a similar but different monomer that is fluorinated prior to polymerizing to form the polystyrene product). This meets the polymer product of claims 10 and 13.
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.
Claim(s) 1, 4, 10, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bhatt (US 2005/0245693).
Bhatt discloses fluorinated aromatic polymers (title). Said polymers may be polystyrene [0022] (chosen from a list of polymers), and, the polystyrene can be fluorinated using a fluorocarbon iodide such as perfluoropropyliodide [0029] (chosen from a list of iodides, and, from a list of options of other types of fluorination reagents).
This combination meets the end product of claims 1, 4 and also the final product of claims 10, 13. Therein the structure of claims 1 and 10 require the iodide compound to have at least 3 carbon atoms (and the above is propyl, e.g. 3, carbons).
In light of the picking and choosing from lists, the claims are thusly prima facie obvious. Though picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985)
Conclusion
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.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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