DETAILED ACTION
Claim Rejections - 35 USC § 112
Claims 5, 6, 15 and 17 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.
Each of these claims fail to use proper Markush group language. In claim 5
“being chosen among the following:…” is indefinite. In claim 15 “selected in the group comprising: …” is indefinite. In claim 17, it is unclear what is “optional” as it is unclear what is embraced in the Markush group. See M.P.E.P 2173.05(h), drawn to alternative limitations, specifically Markush groups.
For claim 6, it is confusing to have N+ found in the definition of N+. Furthermore it is unclear what the (N+-I) represents.
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.
Claims 1, 2, 7, 8, 14 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schorzman et al. 2008/0003261.
Schorzman et al. teach a perfluoropolyether having specific terminal groups.
See the general formula in paragraph 9. Of particular importance, and for explanation purposes, please see the reaction scheme in the middle of page 7. This polymer has terminal groups that include both a quaternary ammonium group and a crosslinkable group at each end. As such this meets the requirements of each of PP, Pu and PN. Note that the terminal groups “comprise” the crosslinkable and quaternary groups such this open language allows for both groups to be on each end.
Since there is nothing that requires that the three polymers be different from one another or that the terminal ends cannot contain both of the required groups, claims 1 and 19 are anticipated.
Likewise, for claim 2, since each of these polymers can be the same, a composi-tion containing one polymer will meet these wt% ranges.
For claim 7, note that the terminal group in Schorzman et al. meets (U-1).
For claim 8, note that “bonded… via a sigma bond” allows for the -CH2-CH2- link-age that attached the unsaturated group to the polymer backbone.
For claim 14, note that supra regarding the teachings of Schorzman et al. and how they apply to claim 1. Note again that “one chain end comprises… quaternary ammonium salt…” is an open expression that allows for other groups to be present as well.
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.
Claims 1, 3, 5, 6, 11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lenti et al. 5,011,713.
Lenti et al. teach perfluoropolyethers that have end groups Rf and R’f. As defined
in column 3, line 20, through the top of column 4, these groups can be a perfluoroalkyl group or a functional group. Among the preferred functional groups are quaternary ammonium, -OH groups and various other crosslinkable groups.
In the working examples Lenti et al. prepare perfluoropolyether structures having one terminal perfluoro group and one functional (crosslinkable group). This meets the requirement of the added polymer Px in claim 3.
Lenti et al. do not show a specific polymer meeting those found in claim 1 but the totality of the teachings in Lenti et al., specifically the formula in column 3, would have rendered obvious the polymer PU having terminal crosslinkable groups and the polymer PN having terminal ammonium groups.
Additionally, it is clear from the working examples that Lenti et al. contemplate polymers having different terminal group while column 3, line 33, which teaches that the polymers can have different end groups. From this the skilled artisan would have found it obvious to include different end groups in the polymer of Lenti et al. with the expecta-tion of obtaining useful and predictable results. For instance it would have been obvious to replace the perfluoroalkyl terminal group in the working examples with a quaternary ammonium group. Adjusting the specific end groups would allow the skilled artisan to optimize and adjust the ability of the polymer to crosslink.
It is prima facie obvious to substitute equivalents motivated by the reasonable expectation that the respective species will behave in a comparable manner or give comparable results in comparable circumstances. The express suggestion to substitute one equivalent for another need not be present to render the substitution obvious.
With this in mind, the skilled artisan would have found a combination of the three different perfluoropolyethers found in claim 1 to have been obvious, each having been embraced by the polymer formula and rendered obvious by the teachings in Lenti et al. In this manner claim 1 is rendered obvious.
For claim 3 note that such a polymer is specifically disclosed by Lenti et al., as noted above, such that the addition of this polymer also would have been obvious to the skilled artisan.
For claim 5, note that the perfluoropolyether found in column 3, lines 16 to 24, as well as those found in column 4, line 15, through the top of column 5, meet this formula.
For claim 6, while Lenti et al. do not specifically show ammonium group having this structure, and while the structure per se is somewhat confusing (see the rejection above), this appears to be the standard, common formula for a quaternary ammonium such that the skilled artisan would have found such a group to have been obvious over the teachings of quaternary ammonium in Lenti et al.
For claims 11 and 14, note that above regarding the obviousness of claim 1, with the emphasis on the fact that Lenti et al. teach hydroxyl groups as possible terminal groups, in addition to the quaternary groups.
Allowable Subject Matter
Claims 4, 9, 10, 12 and 13 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.
For claim 4 note that there is nothing in either prior art reference that teaches or suggest the presence of this polymer in an amount as claimed.
For claims 9, 10, 12 and 13 there is nothing in either reference that teaches or suggests this specific method of making the polymers as claimed. Furthermore these specific reactants will result in a polymer having different terminal groups or attachment to the backbone than those disclosed by either Lenti et al. or Schorzman et al.
The remaining references cited in the attached PTO-892 are cited as being of general interest. The Lenti et al. reference provides a teaching that is comparable to the Lenti et al. reference cited supra. The Thomsan reference is the PGPub equivalent of a copending application. This application has been reviewed and does not require any double patenting rejection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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/MARGARET G MOORE/Primary Examiner, Art Unit 1765