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 Group I, claims 1-6 in the reply filed on 11 June 2026 is acknowledged.
Claims 7-10 and 19-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11 June 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 22 December 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Office.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to Claim 1: The claim recites the limitation “z is an integer between 0 and 2”. However, the only integer between 0 and 2 is 1. It is unclear if the claim is intended to mean z is 1; or z can be 0, 1, or 2; or that z is selected from 0 and 2. As all the examples are drawn to z = 1 that is what the limitation was considered as for the purpose of further examination.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fontanelli et al. (cited in the previous correspondence).
As to Claims 1-3: Fontanelli teaches a perfluoropolyether with the composition:
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(Pg. 2, Lines 5-10). Fontanelli further teaches an example wherein Y is C3F7 (which reads on B and the (CF2)z wherein z = 1 and B is C2F5) and X (which reads on A) is CF3 (Pg. 10, Lines 25-30) and that P+Q is about 7.
Fontanelli does not teach an example wherein n/m is 2-30.
However, Fontanelli teaches a desired ratio for Q/P is 1 to 0.02 (Pg. 2, Lines 10-15) which is the same as a ratio of n/m of 1-50. At the time of filing, it would have been obvious to a person having ordinary skill in the art to select a n/m ratio from within the range taught by Fontanelli including 2-30 because Fontanelli teaches that this ratio results in a favorable combination of properties (Pg. 2, Lines 5-10).
As to Claim 4: Fontanelli renders obvious the composition of claim 1 (supra). Fontanelli does not recite the presence of a diol compound.
As to Claims 5 and 6: Fontanelli renders obvious the composition of claim 1 (supra). The instant claims are drawn to intended use of the composition and as Fontanelli teaches the composition it is considered to be capable of the same use.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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