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 .
DETAILED ACTION
This Office action is based on the 18/575990 application originally filed January 02, 2024.
Amended claims 1-18, filed November 26, 2025, are pending and have been fully considered. Claims 11-18 are withdrawn from consideration due to being drawn to a nonelected invention.
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) 1, 2, 4 and 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Avataneo et al. (US 2010/0105584) hereinafter “Avataneo” in view of Krukovsky et al. “New fluorine-containing oligomers and polymers”. June 1999 hereinafter “Krukovsky”.
Regarding Claims 1, 2, 4 and 6-10
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-O— 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, 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 O, 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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156
630
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34
420
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randomly distributed along the chain.
It would have been obvious before the effective filing date of the claimed invention 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 of Avataneo and Krukovsky and create long branches with crosslinking.
Allowable Subject Matter
Claims 3 and 5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The applied prior art fails to further disclose the repeating units of claims 3 and 5 of the presently claimed invention.
Response to Arguments
Applicant's arguments filed November 26, 2025 have been fully considered but they are not persuasive.
Applicants argued: “Applicant respectfully disagrees. As an initial matter, Applicant respectfully reminds the Examiner that a motivation to combine must be accompanied by a properly articulated rationale. Introducing a certain degree of branching to create long branches without crosslinking simply states the result of introducing branches. Merely stating the result of a particular combination does not provide the required motivation to render the present claims obvious. The Examiner has not met the requirements for establishing obviousness. It, therefore, would not have been obvious to modify Avataneo with Krukovsky as suggested by the Examiner.”
Applicants arguments are not deemed persuasive. It is maintained Avataneo modified by Krukovsky have met the limitations of the presently claimed invention, including Krukovsky further teaching it is known in the art to synthesize branched fluorinated oligomers and cross-linked polymers. Therefore, Avataneo modified by Krukovsky have met the limitations of the presently claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Marchinonni et al. (US 2011/0015107) discloses in the abstract, a process for the addition of at least one (per)fluoropolyether peroxide comprising at least one peroxidic moiety and at least one fluoropolyoxyalkene chain (chain Rf) (i.e. a fluorocarbon segment comprising ether linkages in main chain) [peroxide (P)] onto a per(halo)fluorinated aromatic compound [compound (F)], so as to yield an addition compound of said compound (F), said addition compound [compound (A)] comprising at least one perfluorinated non-aromatic cyclic moiety having at least two substituents comprising a chain Rf and, optionally, conjugated or non-conjugated double bond(s). Said addition compounds have been notably found useful as additives for (per)fluorinated fluids and lubricants or as base materials for the manufacture of gum and/or graft polymer compositions.
Monzani et al. (US 2020/0079902) discloses in the abstract, a novel process for the synthesis of (per)fluoropolyether polymers, to certain novel (per)fluoropolyether polymers. The present invention also relates to the use of the (per)fluoropolyether polymers thus obtained as intermediate compounds for the manufacture of further polymers suitable for use as lubricants.
THIS ACTION IS MADE FINAL. 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 LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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/Latosha Hines/Primary Examiner, Art Unit 1771