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 .
Status of Claims
Clams 31 – 35 and 39 – 51 are pending.
Claims 31 – 35, 39 – 41 and 46 – 51 are allowed.
Claims 42 – 45 are rejected.
Response to Amendment
The amendment to claims 31 and 32, and new claims 41 - 51, submitted August 7, 2026 is acknowledged and entered.
Response to Arguments
Applicant’s arguments, see page 8, filed August 7, 2026, with respect to the rejection of claims 26 – 30, 37 and 38 under 35 USC 112(d) have been fully considered and are persuasive in view of the cancellation of the claims 26 – 30, 37 and 38. The rejection of claims 26 – 30, 37 and 38 has been withdrawn.
Applicant’s arguments, see pages 8 - 10, filed August 7, 2026, with respect to the rejection of claims 26, 27, 28 and 31 are rejected under 35 U.S.C. § 102(a)(1) & (a)(2) as being anticipated by Terrell (US 3,862,240) have been fully considered and are persuasive in view of the cancellation of claims 26, 27, 28, amendment to claim 31 and arguments presented. The rejection of claims 26, 27, 28 and 31 under 35 U.S.C. § 102(a)(1) & (a)(2) has been withdrawn.
Applicant’s arguments, see pages 8 - 10, filed August 7, 2026, with respect to the rejection of claim 27 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Coe have been fully considered and are persuasive in view of the cancellation of claim 27. The rejection of claim 27 under 35 U.S.C. § 102(a)(1) has been withdrawn.
Applicant’s arguments, see pages 8 - 10, filed August 7, 2026, with respect to the rejection of claim 27 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Anderson have been fully considered and are persuasive in view of the cancellation of claim 27. The rejection of claim 27 under 35 U.S.C. § 102(a)(1) has been withdrawn.
Applicant’s arguments, see pages 8 - 10, filed August 7, 2026, with respect to the rejection of claims 26, 27 and 31 are rejected under 35 U.S.C. § 102(a)(1) & (a)(2) as being anticipated by Chasbouni et al and Cheminform abs. have been fully considered and are persuasive in view of the cancellation of claims 26, 27, amendment to claim 31 and arguments presented. The rejection of claims 26, 27 and 31 under 35 U.S.C. § 102(a)(1) & (a)(2) has been withdrawn.
Applicant’s arguments, see pages 8 - 10, filed August 7, 2026, with respect to the rejection of claims 27 – 30 under 35 USC 35 U.S.C. § 102(a)(1) & (a)(2) as being anticipated by Arthur have been fully considered and are persuasive in view of the cancellation of the claims 27 - 30. The rejection of claims 27 – 30 under 35 USC 35 U.S.C. § 102(a)(1) & (a)(2) has been withdrawn.
Applicant’s arguments, see pages 8 - 10, filed August 7, 2026, with respect to the rejection of claim 32 under 35 USC 35 U.S.C. § 102(a)(1) & (a)(2) as being anticipated by Tapscott have been fully considered and are persuasive in view of the claim amendment. The rejection of claim 32 under 35 USC 35 U.S.C. § 102(a)(1) & (a)(2) has been withdrawn.
Applicant’s arguments, see pages 8 - 10, filed August 7, 2026, with respect to the rejection of claim 32 under 35 USC 35 U.S.C. § 102(a)(1) & (a)(2) as being anticipated by Hudlicky have been fully considered and are persuasive in view of the claim amendment. The rejection of claim 32 under 35 USC 35 U.S.C. § 102(a)(1) & (a)(2) has been withdrawn.
Applicant’s arguments, see pages 8 - 10, filed August 7, 2026, with respect to the rejection of claims 32, 33 and 35 under 35 USC 35 U.S.C. § 102(a)(1) & (a)(2) as being anticipated by Roberts have been fully considered and are persuasive in view of the claim amendment. The rejection of claims 32, 33 and 35 under 35 USC 35 U.S.C. § 102(a)(1) & (a)(2) has been withdrawn.
Applicant’s arguments, see pages 8 - 10, filed August 7, 2026, with respect to the rejection of claim 32 and 33 under 35 USC 35 U.S.C. § 102(a)(1) as being anticipated by DiLoreto have been fully considered and are persuasive in view of the claim amendment. The rejection of claims 32 and 33 under 35 USC 35 U.S.C. § 102(a)(1) has been withdrawn.
Applicant’s arguments, see pages 8 - 10, filed August 7, 2026, with respect to the rejection of claims 32, 33 and 34 under 35 USC 35 U.S.C. § 102(a)(1) as being anticipated by Bryantservt have been fully considered and are persuasive in view of the claim amendment. The rejection of claims 32, 33 and 34 under 35 USC 35 U.S.C. § 102(a)(1) has been withdrawn.
Applicant’s arguments, see pages 10 - 12, filed August 7, 2026, with respect to the rejection of claims 26, 37 – 38, 31, 39 and 40 under 35 USC 112(a) have been fully considered and are persuasive in view of the cancellation of the claims 26, 37 – 38, amendment to claim 31, and arguments presented. The rejection of claims 26, 37 – 38, 31, 39 and 40 under 35 USC 112(a) has been withdrawn.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 42, 43 and 44 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Sakata et al. (US 2014/0017560).
The rejected claims cover, inter alia, the compound of
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Independent claim 43 teaches a composition comprising the compound with the above structure.
Independent claim 44 teaches a solvent composition comprising the compound with the above structure.
However, Sakata discloses a lithium ion secondary cell containing a nonaqueous solvent such as the one below:
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. See paragraph [0011] the fluorine-containing ether represented by the formula (I). The teaching of the solvent is discussed in paragraph [0008]).
Claim Rejections - 35 USC § 103
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 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.
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.
Claim(s) 42, 43 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Sakata et al. (US 2014/0017560), in view of Arthur et al. (WO2015/051131).
Rejected clam 42 is disclosed in paragraph 20 above.
Independent claim 43 teaches a composition comprising the compound with the above structure.
Independent claim 44 teaches a coolant composition comprising a composition comprising the compound with the structure of paragraph 20.
However, However, Sakata discloses a lithium ion secondary cell containing a nonaqueous solvent such as the one below:
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. See paragraph [0011] the fluorine-containing ether represented by the formula (I). The teaching of the solvent is discussed in paragraph [0008]). According to the teaching of Sakata, their fluorine-containing ether is excellent for high temperature storage for the lithium ion of the lithium ion secondary cell. (Abstract, [0006] & [0018]).
Sakata does not specifically state that their fluorine-containing ether is a coolant composition. However, Arthur states that fluorinated ethers have use as a heat transfer fluid, and as an electrolyte solvent in electrochemical cells, such as lithium ion batteries. (pp. 1, ln 14 – 15). As such, in this instance it would have been understood by one of ordinary skill in the art based on the teaching Arthur, that the capacity of the compound of Sakata to act as a coolant would be a natural feature of the compound. It is well settled that a patent cannot be properly granted for the discovery of a result which would flow naturally from the teaching of the prior art. In re Libby, 118, USPQ 94, 96; 255 F2d 412 (C.C.P.A. 1958)
Allowable Subject Matter
Claims 31 – 35, 39 – 41 and 46 – 51 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the Examiner has considered the amendment filed by Applicant on August 7, 2026 and the arguments therein. Applicant’s arguments were found persuasive.
Art Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5,536,885 (Hung) discloses production of perfluoro(alkyl vinyl ethers); and Fokin et al. ( Izvestiya Akademii Nauk SSSR, Seriya Khimicheskaya, 1977) discloses the reaction of polyfluorinated alcohols with fluoroolefins.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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, Scarlett Y. Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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