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 .
Applicant's election with traverse of Group I, claims 1-4 and 6-9 in the reply filed on May 13, 2026 is acknowledged. The traversal is on the ground(s) that the non-elected claim 5, does not represent a serious burden. This is not found persuasive because Group I and II do not share a coextensive search scope. The compound of Group I, is defined by its structure, not its source. It can be synthesized using alternative starting materials.
The requirement is still deemed proper and is therefore made FINAL.
Claim 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-4 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Komatsu et al (US 2019/0194365 A1).
Komatsu discloses a compound of:$ 4-(1H,1H,2H,2H-nonafluorohexyl) styrene is shown below:
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Compound of chemical formula 1, of claims 1-4 and 6-9, wherein R1 is C4F9, n is 4, R2 is hydrogen and r2 is 4. See paragraphs 0208 and 0227.
Komatsu relates to a composition, a modification method and a selective modification method of a base material surface, as well as a pattern-forming method, and a polymer [0002] and [0009].
Claim Rejections - 35 USC § 102
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, 3 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zong (WO 2020082678).
Zong discloses a following compound:
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R1 is C5F11, R2 is ester group and H, see page 5.
Claim Rejections - 35 USC § 102
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 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi et al (JP 2008221067).
Kobayashi discloses a following compound:
RN 1061723-69-0
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R1 is C8F17 , R2 is H and r2 is 4
Claim Rejections - 35 USC § 102
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, 3 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kureha Chemical industry (JP 58029723).
Kureha Chemical industry discloses the following compound:
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R1 is CF3, R2 is H and r2=4
See page 2, right column.
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/JAFAR F PARSA/Primary Examiner, Art Unit 1692
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