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 .
This communication is responsive to the claim set filed 03/31/2026. Claims 1-5, 7-8, 15-19, 21-23, 28, 36 and 39 are pending. The elected claims 1-5, 7-8, 15-19, 21-23, 28 and 39 are under consideration in this Office Action. The non-elected claim 36 is withdrawn.
The 35 USC 102 rejection dated 02/26/2026 at paragraph 12 is WITHDRAWN due to Applicant’s amendments.
While the scope of amended claim 1 is changed by a newly inserted limitation, the limitations are disclosed by the combination of references used previously, therefore, the prior art is still applicable and the grounds of rejection have been appropriately set forth. Thus, the following action is properly made final.
Claims 1-5, 7-8, 15-19, 21-23, 28 and 39 are rejected for the reasons set forth below.
The text of those sections of Title 35 U.S. Code not included in this action can be found in a previous Office Action.
Election/Restrictions
Newly amended claim 21 was previously directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the previously presented claim 21 was directed to an electronic telecommunication article and the Applicant did not elect claim 21 in the Response to Restriction filed on 11/07/2025.
Since applicant has received an action on the merits for the originally presented invention, this invention has not been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 21 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
For the purpose of compact prosecution, claim 21 is mapped to the prior art in this Office Action.
Claim Objections
Claims 15-16 and 39 are objected to because of the following informalities:
Claim 15 lines 1-2 “wherein the compound is a crosslinking compound” should read –wherein the crosslinking compound—
Claim 16 line 1 “wherein the compound” should read –wherein the crosslinking compound—Appropriate correction is required.
Claim 39 lines 1-2 “wherein the fluorinated alcohol” should read –wherein the fluorinated solvent—(see [0001] of the instant specification).
Claim Rejections - 35 USC§ 103
Claims 1-3, 5, 7-8, 15-18, 21-23, 28 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Jing et al. (WO2019239322 Al) in view of Nobuhiko et al. (JP2009215296 A).
Regarding Claim 1, Jing teaches a fluoropolymer coating composition comprising fluoropolymers and fluorinated solvent (ab.). Jing further teaches that the composition comprising a curing agent wherein N-(1,3-dimethylbutylidene )aminopropyl-triethoxysilane is an illustrative curing agent which comprises a blocked amine group and alkoxy silane groups (pl8/lns13-27). Jing furthermore teaches that the composition comprising surfactants (p24 line16).
The difference between Jing and instant Claim 1 is that Jing is silent on the surfactant having the
formula of the claimed fluorinated alcohol.
However, Nobuhiko teaches a fluoroether alcohol represented by the general formula of:
Rf1OCF2CF2CH2OH wherein Rf1 represents an alkyl group which contains fully fluorinated ether oxygen atom (ab.). Nobuhiko further teaches that the exemplary fluoroether alcohol has the formula of:
CF3OCF2CF2CH2OH ([0133]). Nobuhiko furthermore teaches that the fluoroether alcohols are suitably
used as a surfactant ([0006]).
One ordinary skilled artisan would have been motivated, before the effective filing date of instant
application, to use the fluoroether alcohol taught by Nobuhiko as a surfactant for the composition of Jing
to obtain a modified coating composition because fluoroether alcohol should be more compatible with
fluoropolymers than hydrocarbon surfactants.
Regarding Claims 2-3, Jing teaches the fluoropolymers comprise amorphous fluoropolymer and
crystalline submicron fluoropolymers and the crystalline submicron fluoropolymer particles dispersed in a
solution of fluorinated solvent and amorphous fluoropolymer (ab.), indicating that the amorphous
fluoropolymer is soluble in the fluorinated solvent and the crystalline submicron fluoropolymer particles
are not soluble in the fluorinated solvent. The crystalline submicron fluoropolymer particles are unlikely
soluble in the fluoroether alcohol due to the crystallinity. Additionally, the exemplary fluoroether alcohol CF3OCF2CF2CH2OH has the same formula as one of the instant preferred fluoroether alcohol. Therefore, crystalline submicron fluoropolymer particles are not soluble in CF3OCF2CF2CH2OH.
Regarding Claim 5, Rf1OCF2CF2CH2OH has a single hydroxy group.
Regarding Claim 7, Nobuhiko discloses that the CF3OCF2CF2CH2OH has a boiling point of 98°C ([0133]).
Regarding Claim 8, Jing teaches the preferred fluorinated solvents are HFE-7500 and HFE-
7300 (Table 1) which are partially fluorinated ether.
Regarding Claims 15-16, the curing agent N-(1,3-dimethylbutylidene )aminopropyl-triethoxysilane has one amine group and at least one alkoxy silane groups and is non-fluorinated (pl8/lns13-27).
Regarding Claims 17-18, Jing teaches that the composition comprises an alkoxysilane compound,
such as tetraethoxysilane (p20/lns5-20).
Regarding Claim 21, the preferred fluoropolymer taught by Jing is PFE-1 which has nitrile cure sites (Table 1).
Regarding Claims 22-23, Jing teaches that the amorphous fluoropolymer comprises at least 90
wt.% of polymerized units derived from perfluorinated monomers selected from tetrafluoroethene (ab.).
Regarding Claim 28, As discussed in Claim 1, the modified coating composition comprising a
fluoropolymer, a fluorinated solvent and a fluorinated alcohol having the claimed formula. Therefore, the
modified coating composition is substantially identical to that of instant Claim 1, as such the dielectric
properties are expected. "Products of identical chemical composition cannot have mutually exclusive
properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches
the identical chemical structure, the properties applicant discloses and/or claims are necessarily present
(See MPEP 2112.0111). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 39, Jing teaches that the fluorinated solvent being the Novec 7300 or 7500 of 3M, which chemical name is 3-methoxy perfluorinated 4-methyl Pentane or 3-ethoxy perfluorinated 2-methyl hexane.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Jing in view of Nobuhiko, as applied to claim 1 above, and in further view of KOH et al. (WO20080999873 Al).
The disclosure of Jing in view of Nobuhiko on Claim 1 is incorporated herein by reference.
The deference between Jing in view of Nobuhiko and instant Claim 4 is that Jing in view Nobuhiko is silent on the amount of the surfactant in the composition.
However, KOH discloses that a coating composition comprising a fluororesin (lnsl68-
l 72) and a fluoroether surfactant (ab.). KOH further discloses that the composition comprising 0.001
wt.% to 5 wt.% of the fluoroether surfactant. One ordinary skilled artisan, before the effective filing date
of instant application, would have been motivated before the effective filing date of instant application to
use the amount of fluoroether surfactant taught by KOH for the composition of Jing in view Nobuhiko to
obtain a further modified composition because Jing teaches that the composition is applied for electrodes
(p26/lns20-25), and KOH discloses the amount of the fluoroether surfactant is suitable for a fluororesin
composition for electrodes (lns13 l-136).
Jing teaches that the fluoropolymer coating composition comprising fluorinated solvent in the
amount of at least 25 wt.%. Therefore, the fluorinated alcohol is present in an amount no greater than
16.67 wt.% of the sum of the fluorinated solvent and fluorinated alcohol in the further modified
composition. No greater than 16.67 wt.% overlaps with the claimed no greater than 10 wt.%.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Jing in view of Nobuhiko, as applied to claims 17-18 above, and in further view of Jiang559 et al. (WO2015142559 A1).
The disclosure of Claims 17-18 is incorporated herein by reference. Jing teaches that the
fluoropolymer coating composition comprising a filler (p24/lns 18-19).
The difference between Jing in view of Nobuhiko and instant Claim 19 is that Jing in view of
Nobuhiko is silent on the composition comprising the claimed silica fillers.
However, Jiang559 teaches a curable composition comprising a fluorinated polymer (ab.) and an
alkoxysilane compound, such as tetraethoxysilane ([0073]). Jiang559 further teaches the curable composition comprising a reinforcing filler, such as fumed silica ([0049]). Jiang discloses that the reinforcing filler provides increased hardness and scratch resistance to a cured product formed from the curable composition (Id.). In view of such benefits, one ordinary skilled artisan would have been motivated, before the effective filling date of instant application, to use fumed silica taught by Jiang559 as a filler for the composition of Jing in view of Nobuhiko to obtain a further modified coating composition with desired hardness and scratch resistance.
Response to Arguments
Applicant's argument on the 35 USC rejections based on Jing in view of Nobuhiko have been fully considered but it is not persuasive.
Applicant cited the paragraphs [0036]-[0040] of Nobuhiko and concluded that Nobuhiko concerns surfactants for polymerizing a fluorine-containing monomer in an aqueous medium, one ordinary skilled artisan would not have been motivated to utilize such surfactant in a (non-aqueous) composition comprising fluorinated solvent. The Examiner does not agree with the conclusion for four reasons:
1) the paragraphs [0036]-[0040] discussed the surfactants of fluoroethercarboxylic acid or its salts not fluoroether alcohol;
2) Paragraphs [0038] and [0039] of the cited paragraphs discussed water solubility of the surfactants and the surface activity in water, none of the paragraphs teaches or suggests the surface activity requiring aqueous medium;
3) Nobuhiko paragraph [0038] states that monovalent alkali metal salt or ammonium salt is preferably used from the viewpoint of water solubility, and Nobuhiko paragraph [0039] states the surface activity of fluoroethercarboxylic acid in water is improved compared to the salt. Taking paragraphs [0038] and [0039] together, one ordinary skilled artisan would reasonably infer that less water soluble fluoro-surfactant has more surface activity, the disclosures further counter the conclusion that the surface activity of fluoro surfactants require aqueous medium;
4) even if fluoroether alcohol surfactants have higher surface activity in aqueous medium than in fluorinated solvent, the inferior activity does not mean that fluoroether alcohol surfactants is inapt for obviousness purposes.
For the reasons stated above, the Applicant’s argument is not persuasive.
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 HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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