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 compound 7 of example 2 in the reply filed on 6/8/26 is acknowledged. The traversal is on the ground(s) that the examiner has not shown that multi-unsaturated non-silicon containing compounds such as those of claim 12 are patentably distinct from the mono-unsaturated silicon containing compounds encompassed by claim 1. This is not found persuasive because the applicant did not admit (or show) that any of applicant’s species are obvious variants from one another. It is self-evident that silicon compounds are distinct from non-silicon compounds as it is not prima facie obvious to substitute a Si atom for a carbon atom without some clear direction to do so. Claim 12 is considered nonelected.
The requirement is still deemed proper and is therefore made FINAL.
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 1,2,4,6,8,9 and 11 rejected under 35 U.S.C. 102(a)(1) as being
anticipated by Matsuda 2007/0205533.
Matsuda (paragraph 66) depicts the fluorine containing polyether
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274
435
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Greyscale
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33
65
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Greyscale
This corresponds to applicant’s Formula (A) with R1, R2 and R3 being hydrogen; R6 being methyl; n1 is one; n2 is one; R7 is -OCH3; “a” is three
In regards to applicant’s dependent claims:
The fluorine containing polyether is used as a primer (paragraph 52). This primer is coated on a substrate (paragraph 22) – meeting applicant’s claims 2,6 and 7.
A diluent solvent (paragraph 74) may be included with the fluorine containing polyether primer – meeting applicant’s claims 4,5 and 8-11.
Claims 1-11 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoshino 2016/0009929.
Hoshino exemplifies (paragraph 267) producing a mixture “C” of fluoropolyethers. Fluoropolyether (33) corresponds to applicant’s Formula (A) with R1 being methyl; R2 and R3 being hydrogen; L1 being oxygen; Q1 being -CH2CF2- ; Q2 being -CF2CH2OCH2CH2CH2- ; T being -Si(OCH3)3 ; n1 and n2 being one.
In regards to applicant’s dependent claims:
The mixture of fluoropolyethers are coated on a substrate (table 1) by wet or dry methods – meeting applicant’s claims 2 and 6-11.
The wet coating method (paragraph 393) employs C4F9OC2H5 as solvent – meeting applicant’s claims 4 and 5.
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 3,5,7 and 10 rejected under 35 U.S.C. 103 as being unpatentable over Matsuda 2007/0205533.
Matsuda applies as explained above.
Matsuda (paragraph 68) suggests the primer may comprise two or more of the fluorine containing polyether.
It would have been obvious to combine the depicted fluorine containing polyether with any of the other fluorine containing polyethers to make the primer composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 6/16/26
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