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 .
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 1-21 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.
Claims 1, which all claims depend upon, states “n is 0 or an integer from 1 to 3” for formula (I). If n is 0, the block doesn’t comprise formula (I). However, later in the claim is the limitation “in said formula (I) at least one of R1 to R4 is a group of formula (II)”. Thus, the block comprises formula (I). These statements are contradictory. The unit n cannot be simultaneously 0 and have formula (II). It is unclear how to resolve this and thus the scope of the claim is unclear.
Regarding claims 1, 5-8, 10 and 15, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Specifically:
Claim 1 “heteroatoms, such as oxygen atoms”.
Claim 5 “an integer from 1 to 250, such that the sum of L+m is from 2 to 250”.
Claim 5 “heteroatoms, such as oxygen atoms” (twice).
Claim 6 “any moiety capable of undergoing a further chemical reaction, such as unsaturated moieties”.
Claim 7 “heteroatoms, such as oxygen atoms”.
Claim 8 “heteroatoms, such as oxygen atoms”.
Claim 10 “one or more than one oxygen atom, such as notably…”.
Claim 15 “from 2 to 8 carbon atoms, such as tetrafluoroethylene (TFE), hexafluoropropylene (HFP), chlorotrifluoroethylene (CTFE)”.
Claim 15 “one or more than one oxygen atom, such as notably…”.
The use of “such as” in these cases is similar to the examples given in MPEP 2173.05(d) example (A) and it is unclear what the intended scope is.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0105584 (herein Avataneo) in view of Krukovsky et al. "New fluorine-containing oligomers and polymers". June 1999 (herein Krukovsky).
Regarding Claims 1, 2, 4 and 6-10, 12-14, Avataneo discloses in paragraph 0001, to polymers containing blocks deriving from perfluoropolyether (PFPE) and blocks formed of repeating units deriving from halogenated and/or hydrogenated olefins, usable as lubricants having low wear values. Avataneo discloses in paragraph 0002, polymers having alternate blocks -A-B-A-B-A- wherein blocks A derived from PFPE and blocks B derived from olefins, as defined above. Avataneo further discloses in paragraph 0003, more specifically the invention concerns block polymers having improved wear in combination with low glass transition temperature (Tg), low evaporation loss at high temperatures and high viscosities when the polymers are liquid at room temperature.
Avataneo discloses in paragraph 0039, the viscosity of the polymer of formula (I) can also be very high, even of 50,000 cSt at 20° C. or higher. The polymers can also be substantially solid. Additionally, Avataneo discloses in paragraph 0096, an oil having viscosity at 20° C. between 10 and 4,000 cSt.
Avataneo further discloses in paragraphs 0017-0026, polymers having alternate blocks -A-B-A-B-A- wherein blocks A derived from PFPE and blocks B derive from olefins. Avataneo discloses in column 2 lines 57 - column 3 lines 32, perfluoropolyether polymers of formula (I):
T-O-[A-B]2-[A-B']2-A-T" (I)
wherein: A=(X)a-O-A'-(X)b
wherein A' is a perfluoropolyether chain comprising one or more repeating units selected from (CF2O), (CF2CF2O), (CF2CF2CF2O), CF2CF2CF2CF2O), optionally comprising (CF(CF3)O), (CF(CF3)CF2O), CF2CF(CF3)O) units, having a number average molecular weight between 66 and 50,000; X, X', equal to or different from each other, are -CF2-,- - CF2CF2- and optionally -CF(CF3)-;
a, b, equal to or different from each other, are integers equal to 0 or 1 with the proviso that the block A linked to the end group T-0- has a=1 and the block A linked to the end group T' has b=0;
B is a block formed of units deriving from one or more olefins, wherein at least one of them is homopolymerizable by radical route (e.g. TFE and PMVE reading on the first and second O), having formula:
[(CR1R2-CR3R4)j(CR5R6-CR7R8)j]-(Ia)
wherein j is an integer from 1 to 5, j' is an integer from 0 to 4 with the proviso that (j+j') is higher than 2 and lower than 5;
R1, R2, R3, R4, R5, R6, R7, R8, equal to or different from each other, are selected from halogen, preferably F, Cl; H; C1-C6 (per)haloalkyl, wherein the halogen is preferably F, Cl; C1-C6 alkyl, optionally containing heteroatoms, as 0, N, S; C1-C6 oxy(per)fluoroalkyl;
Z is an integer higher than or equal to 2; z' is 0 or an integer; Z, z' are such that the number average molecular weight of formula (I) is in the range 500-500,000, preferably 1,000-80,000, more preferably 5,000-60,000;
B' is a block deriving from one or more olefins and having formula (Ia), but having at least one of the substituents R1 to R8 different than in block B, (j+j') being higher than or equal to 2 and lower than 5; the end groups T and T', equal to or different from each other, are perfluoroalkyl from 1 to 3 carbon atoms, one fluorine atom can be substituted by one chlorine or hydrogen atom; C1-C6 non fluorinated alkyl groups.
Avataneo discloses block copolymer(s) but fails to specifically teach the claimed branched polymers of the claimed block copolymer.
Krukovsky discloses a method for the synthesis of branched oligomers and cross-linked fluoroelastomers directly from perfluoroalkyleneoxides containing peroxide groups in the chain was developed:
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Krukovsky teaches that this is copolymerized with perfluoro divinyl ethers under ultraviolet radiation and heating to give cross-linked polymers. Cross-linked polymers were generated also through thermal copolymerization of perfluoropolyperoxides with perfluoro-1,3-butadiene at 180-220 ° C. Turning back to the instant claims, the divinyl ethers and perfluoro butadiene read on claimed compound X-p and would yield claimed structures E and E^. Krukovsky teaches that use of the peroxidic PFPE and the compounds reading on claimed formula X-p increases the viscosity and yields branched polymers so that they are readily soluble in solvents and applicable to various substrates and therefore are more efficient as water repellent agents (page 33). Further, the copolymers are cold resistant (page 31), thermostable and chemically inert (page 32).
It would have been obvious to a person having ordinary skill in the art starting with the perfluoropolyether (PFPE) of Avataneo, to introduce in the polymers of Avataneo a certain degree of branching, as taught by Krukovsky in order to react the peroxidic PFPE's and perfluoro divinyl ethers/butadiene of Krukovsky with Avataneo and create long branches with crosslinking, which are taught to improve viscosity, solvent solubility, water repellency, cold resistance, thermostability and chemical inertness (see pages 31-32 of Krukovsky).
Again note that these methods and reactants are identical the claimed method and reactants and would yield identical formula I through formula IV, wherein R1 to R3 are fluorine and R4 is formula II (since branched), wherein R10=R15 are fluorine or perfluoroalkyl and one is formula III as claimed and a second block of formula IV as claimed, all of which would be produced via utilizing the same material. As to E and E^, note that the use of using the perfluoro divinyl ether and/or perfluoro butadiene would yield the claimed formula wherein R101 and R103 form a perfluorinated cyclic ring as claimed.
As to claim 6, no pendent groups are required.
As to claim 9, various copolymers are produced Avataneo and Krukovsky and all are suitable for the same purpose. See examples. Therefore, it would have been obvious at the time of the invention to have utilized a mixture of two or more of the polymers of Avataneo and Krukovsky because they teach that various copolymers are suitable and mixing two of the same copolymers would have been obvious because they are both suitable for the same application.
As to claim 10, see examples, and above for the elucidation of the method. As to the last step, the amount of monomer (including X-p) is less than 40% (paragraph 36 of Avataneo, also see examples), and therefore, the amount overlaps the claimed range. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims.
As to claim 11, the peroxide content is 0.1 to 0.2 in the examples, which is within the claimed range.
As to claims 15-7 and including the last step of fourinating, see paragraph 80-82 and examples of Avataneo.
As to claim 18, compositions comprising the polymer, thickeners (paragraph 96, 142) and fluorinated oils (paragraph 100). Also see examples of Avataneo.
As to claims 19-20, a method of lubricating a surface of an article with the composition are taught. See examples of Avataneo. The articles that the lubricator is applied can be electric contacts (electrical connectors), etc. See paragraph 91, 163.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0105584 (herein Avataneo) in view of Krukovsky et al. "New fluorine-containing oligomers and polymers". June 1999 (herein Krukovsky) and US 2018/0051226 (herein Patto).
The discussion with respect to Avataneo and Krukovsky set-forth above is incorporated herein by reference.
As to claim 21, Avataneo is silent on a method for counteracting vibration and/or shock in an apparatus comprising a damper device comprising the composition disclosed above.
Patto discloses similar viscous perfluoropolyether polymers. See abstract and examples. Patto discloses that they are suitable for lubricating dampers such as for reducing vibration/shocks such as shock absorbers, rotary dampers on wheeled vehicles, etc. see paragraph 20 and 72-73.
It would have been obvious at the time of the invention to have modified the composition of Avataneo in a method for counteracting the vibrations/shocks of damper devices such as shock absorbers because one would want to utilize the composition for intended purposes taught for similar viscous perfluoropolyether polymers.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 10-11 and 15-18 of copending Application No. 18/575,990 (reference application) in view of Krukovsky et al. "New fluorine-containing oligomers and polymers". June 1999 (herein Krukovsky). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 1-8, copending claim 1 has all the limitations with the proviso that E and E^ are not taught and the second block of claimed formula IV is not taught.
Krukovsky discloses a method for the synthesis of branched oligomers and cross-linked fluoroelastomers directly from perfluoroalkyleneoxides containing peroxide groups in the chain was developed:
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Krukovsky teaches that this is copolymerized with perfluoro divinyl ethers under ultraviolet radiation and heating to give cross-linked polymers. Cross-linked polymers were generated also through thermal copolymerization of perfluoropolyperoxides with perfluoro-1,3-butadiene at 180-220 ° C. Turning back to the instant claims, the divinyl ethers and perfluoro butadiene read on claimed compound X-p and would yield claimed structures E and E^. Krukovsky teaches that use of the peroxidic PFPE and the compounds reading on claimed formula X-p increases the viscosity and yields branched polymers so that they are readily soluble in solvents and applicable to various substrates and therefore are more efficient as water repellent agents (page 33). Further, the copolymers are cold resistant (page 31), thermostable and chemically inert (page 32).
It would have been obvious to a person having ordinary skill in the art starting with the perfluoropolyether (PFPE) of copending claim, to introduce in the polymers a certain degree of branching, as taught by Krukovsky in order to react the peroxidic PFPE's and perfluoro divinyl ethers/butadiene of Krukovsky with copending claims and create long branches with crosslinking, which are taught to improve viscosity, solvent solubility, water repellency, cold resistance, thermostability and chemical inertness (see pages 31-32 of Krukovsky).
As to claim 8, see copending claim 10.
As to claim 10-17, see copending claim 11, which would use perfluoro divinyl ethers/butadiene reading on claimed formula X-p and thereby arriving at the claimed invention.
As to claim 18, see copending claim 15.
As to claim 19, see copending claim 16.
As to claim 20, see copending claim 17.
As to claim 21, see copending claim 18.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Note that the copending application has had a Notice of Allowance mailed out on 9/9/26, however the Patent has not been issued as of this date.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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