DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Claim Rejections - 35 USC § 102/103
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim(s) 1-13 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kojima et al. (JP 2012-102187 A, “Kojima”).
Regarding claim 1, Kojima teaches a fluoropolyether curable composition (pp. 1-2) comprising a perfluoropolyether compound having two or more alkenyl groups in one molecule (p. 2, pp. 2-4, (A) component). Kojima further teaches a fluorine containing organohydrogensilane compound that has two or more hydrosilyl groups (see, e.g., [0048], structure 28, p., a portion of which is reproduced below and 5, p. 22 of Kojima as originally filed; and see the machine translation copy, component “C”, pp. 4-8; compound has more than one group represented by claimed compound Chem. 1). For example, Rf of Kojima reads on the claimed Rf of claim 1 ([0048], structure 28, p., a portion of which is reproduced below and 5, p. 22 of Kojima as originally filed; and see the machine translation copy, component “C”, pp. 4-8), the compound may include a component reading on the divalent “A” compound (e.g., below, unit including an aryl group, nitrogen, and carbonyl group) and includes a group reading on “B” that may include hydrogen atoms connected to silicon atoms. Kojima teaches that the amount of the component reading on component (B) may be on the range of from 0.1 to 5 mol (p. 8). Kojima additionally teaches that a platinum group metal-based catalyst may be included in an amount of up to 1000 ppm (p. 8, component D). Furthermore, the modification or adjustment of the fluoropolyether would have been a routine and obvious adjustment to the ordinarily skilled artisan at the time of filing (please see pp. 9, 10, noting the routine addition of various components and method of making). Finally, the Examiner notes that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05.
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Regarding claim 2, Kojima additionally teaches that the perfluoropolyether component may include a compound reading on the structure of [Chem. 2] (see component (A), pp. 2-4, and see structures 12, 13, p. 4; and see p. 11 of Kojima as originally filed). For example, structure 12 of Kojima, reproduced below, appears to read on the claimed perfluoropolyether compound, having termina alkyl/alkene groups, medial perfluoropolyether groups, and divalent groups that may include oxygen.
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Regarding claim 3, Kojima additionally teaches that the Rf group in the component corresponding to the claimed (B) group may read on the claimed general formula (5) (see Rf group of structures 28, a portion of which is reproduced above in the rejections of claims 4 and 5, p. 22 of Kojima as originally filed; and see the machine translation copy, component “C”, pp. 4-8). The Rf group described by Kojima may read on the claimed general formula (5), for example, wherein a, c, d may be zero and the group corresponding to the claimed b group may be 24.
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Regarding claims 4 and 5, Kojima additionally teaches a structure in the component corresponding to the claimed component B wherein the “A” component may read on the claimed structure 9 (see the below compound, structure 28, p. 22 of Kojima as originally filed; see pp. 4-8 of machine translation; thus also reading on the limitations of claim 4).
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Regarding claim 6, Kojima teaches that the R groups in the compound corresponding to the claimed component B may be, for example, methyl groups (see structures 28, a portion of which is reproduced above in the rejections of claims 4 and 5, p. 22 of Kojima as originally filed; and see the machine translation copy, component “C”, pp. 4-8).
Regarding claim 7, Kojima additionally teaches that, in the compound corresponding to the claimed compound of Chem. 1, there may be two or more adjacent or consecutive silalkylene groups between the Rf group and the diorganohydrosilyl groups (see, e.g., structure 28, a relevant portion of which including silalkylene groups is reproduced below; pp. 4-8; p. 22 of Kojima as originally filed).
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Regarding claim 8, Kojima additionally teaches that the compound represented below may include a group reading on that of “B” as presently claimed (see, e.g., structure 28, a relevant portion of which including such a group is reproduced below; pp. 4-8; p. 22 of Kojima as originally filed). For example, the ((CH2)xSiH(CH3)2)2 group may read on that of general formula (10).
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Regarding claim 9, Kojima additionally teaches that the component corresponding to the claimed component (B) may include a compound reading on those of [Chem. 8] and therefore satisfying the limitations of claim 9 (see compound of structure 28, reproduced below, including a compound corresponding to claimed structures of [Chem. 8]). Furthermore, the modification or adjustment of the number of hydrosilyl groups within the compound would have been a routine and obvious adjustment to the ordinarily skilled artisan at the time of filing (please see pp. 7-8, teaching hydrosilation as desirable and controllable via catalyzation).
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Regarding claim 10-12, Kojima additionally teaches that the material may be cured to form a cured product that may be used in electronic applications (p. 14) and may be used in various coating applications (p. 10).
Regarding claim 13, Kojima additionally teaches that the cured product may be used in automobile applications (p. 14).
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
Muto et al. (US 2014/0114041) teaches a fluoropolyether similar to that claimed (see generally [0007] – [0020]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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