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 claims 1–4 and species A2 and B1 in the reply filed on 18 June 2026 is acknowledged.
Claims 5–11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 18 June 2026.
In view of Applicants’ election of species A2, as it pertains to elected claims 1–4, the subject matter of claim 1 pertaining to non-elected species A1 is herein withdrawn from consideration. Independent claim 1 will herein be interpreted as reciting:
“A liquid material containing a compound having a fluorocarbon chain and a volatile solvent,
wherein the compound having the fluorocarbon chain is an acrylic compound having in a side chain a perfluoroalkyl group whose carbon number is 4 to 8.”
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claim 1 recites the limitation “A liquid material containing a compound…” (emphasis added). Pursuant to MPEP 2111.03, the transitional phrase “containing” is synonymous with “comprising”, and is therefore interpreted as open-ended, allowing for the inclusion of other, unrecited components.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1–4 are rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP H06248256 A, hereinafter “Ito”).
Evidentiary support for the boiling point of perfluorohexane is provided by ThermoFisher (Safety Data Sheet, “Perfluorohexanes”, 2010, hereinafter “SDS”), and is applied to claim 1 and all claims dependent thereon.
Regarding claim 1, Ito teaches a liquid material containing a compound having a fluorocarbon chain and a volatile solvent (see paragraphs 0001 and 0004 teaching a solvent-based, fluorine-based surface modifier composition; see paragraph 0005 teaching C6F14 [perfluorohexane] as a preferable solvent; SDS teaches the boiling point of perfluorohexanes as ranging from 51–59 °C [see section 9], which falls within the boiling point range that applicant indicate as preferable volatility [see specification, paragraph 0030]). Ito further teaches the limitation wherein the compound having the fluorocarbon chain is an acrylic compound having in a side chain a perfluoroalkyl group whose carbon number is 4 to 8 (see paragraph 0007 teaching the surface-modifying agent as acrylic polymers containing Rf groups [defined in the same paragraph to mean polyfluoroalkyl groups]; see paragraph 0009 teaching a preference for perfluoroalkyl groups with 4 to 16 carbon groups, which overlaps with the claimed carbon number of 4 to 8; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claims 2–4, Ito fails to explicitly teach the claimed solid concentrations of the fluorocarbon compound with respect to the entire liquid material. Ito teaches the dilution of the material to 1 wt.% solids (see paragraph 0023), which is higher than the upper bounds of the claimed ranges. However, absent any evidence of criticality of the claimed ranges, 1 wt.% is sufficiently close to the claimed ranges to render claims 2–4 prima facie obvious (see MPEP 2144.05 regarding ranges that do not overlap, but are merely close). Pursuant to MPEP 2144.05(II), differences in concentration between the claimed subject matter and the prior art can be resolved through routine optimization. Ito’s composition is specifically directed toward coating cloth, but a person having ordinary skill in the art seeking to apply Ito’s composition to other substrates would have been sufficiently motivated to find optimal, workable concentrations that suit the specific substrate, as polymers with fluorinated side chains are known to impart water- and oil-repellency to a wide variety of substrates (see paragraph 0002).
It is noted that Applicants provide comparative examples in their data table (Figure 9). However, there is only one sample that exceeds the claimed upper bound of 0.09 wt.% (see Comparative Example 2), and it represents a carbon number of 6, whereas the claimed carbon number ranges from 4 to 8. Criticality of the claimed concentrations can therefore not be established, as it is unknown if a concentration higher than 0.09 wt.% can produce suitable results for a carbon number of 4, 5, 7 or 8. Additionally, applicants do not claim any specific volatile solvent, or even give examples in their specification (see, e.g., paragraph 0078, in which the fluorinated polyacrylate is dissolved “in a volatile solvent”), and so it is not possible to establish criticality across the near-infinite number of volatile solvents that may be used with the present invention (see MPEP 716.02(d), which states that criticality of a claimed range can only be demonstrated with sufficient data that is commensurate in scope with the claimed invention).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached Tue, Thu, Sat, Sun from 7 AM to 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
Prosecution Insights