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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/11/2025 has been entered.
Response to Amendment
Examiner acknowledges amended Specification and amended Claims 1, 8, and 21, canceled Claims 4-6, withdrawn Claims 9-11, 13-15, and 20, and new Claims 22-23 in the response filed on 11/11/2025.
Response to Arguments
Applicant’s arguments with respect to Claims 1-3, 7, 8, 12, 16-19, and 21-23 have been considered but are moot in view of the new ground of rejection(s).
Specification
In the response filed on 11/11/2025, Applicant maintains that the amendment to the Specification filed 4/28/2025 does not contain new matter. However, the Examiner respectfully disagrees, and therefore the amendment filed 4/28/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
In paragraph [0012], Applicant has amended the instant paragraph such that Re1 and Re2 are now defined as having formulas (IV) and (V) as shown below.
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and
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(i.e. the same chemical structures of formula (IV) and (V) on Pages 23-24).
However, paragraph [0078] discloses formula (IV) as an anisole containing end group that is associated with thermally activated reactions. Paragraph [0079] further discuss that rearrangement of the end group may inhibit the thermally activated reactions while maintaining high evaporation temperatures due to increased molecular stiffness, wherein formula (V) is an example. Paragraph [0080] then further discuss end groups of the disclosure the anchoring groups are moved farther away from the benzene ring or the anisole. This rearrangement of the anchoring end groups inhibits thermally activated reactions while maintaining a high evaporation temperature. Therefore, formulas (IV) and/or (V) are not necessarily the entire structure of Re1 and Re2.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 7, 8, 12, 16-19, 22, and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant amended Claim 1 to recite –OCF2(CF2)o-O-CH2ArRt and o = 1-10, and cited paragraph [0013] as support. However, paragraph [0013] discloses structures for Re1 and Re2, and it does not necessarily disclose (CF2)o portion to be o = 1-10. It appears that the structures provided in paragraph [0013] demonstrate that o is at most 2. While paragraph [0013] discloses m is 1 to 10, this refers to the (CH2)m portion of said structures.
Appropriate clarification and/or correction is required in the next response.
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 1-3, 7, 8, 12, 16-19, and 21-23 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claims 1 and 21 recite the broad recitation fluoroalkyl ether moiety, and the claim also recites perfluoroalkyl ether moiety which is the narrower statement of the range/limitation. Claims 1 and 21 also recite the broad recitation fluoroalkenyl ether moiety, and the claim also recites perfluoroalkenyl ether moiety which is the narrower statement of the range/limitation The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites “each of Re1 and Re2 independently comprises a group having a higher rotational energy barrier than that of CH2 selected from benzene or anisole, terminating with at least one second anchoring functioning group engageable with the protective overcoat of the magnetic recording medium comprising –OCF2(CF2)o-O-CH2ArRt, wherein Rt is -CH2OCH2(CH2)n(Ra)n-1 or Rt is -OCH2(CH2)n(Ra)n-1, Ar is the group having a higher rotational energy barrier than that of CH2 selected from benzene or anisole, and Ra is the second anchoring functional group, m = 2, n = 2-10, and o = 1-10.” (emphasis added).
The way the instant limitation is formatted, it appears that the structure of –OCF2(CF2)o-O-CH2ArRt is directed to the second anchoring functioning group, and not necessarily to the overall structure of Re1 and/or Re2. Therefore, it is unclear how the second anchoring functioning group comprises –OCF2(CF2)o-O-CH2ArRt and is also further defined as Ra.
Claim 21 recites similar language and therefore is also rejected for the reasons set forth above.
In Claim 1, Applicant amended to recite “each of Re1 and Re2 independently comprises a group having a higher rotational energy barrier than that of CH2 selected from benzene or anisole” Therefore, the instant limitation indicates that the group having a higher rotational energy barrier is benzene or anisole. In the structure of –OCF2(CF2)o-O-CH2ArRt, wherein Ar is the group having a higher rotational energy barrier than that of CH2 selected from benzene or anisole, the benzene or anisole are thus directly bonded to CH2 and Rt (i.e. –OCF2(CF2)o-O-CH2-(Benzene)-Rt or –OCF2(CF2)o-O-CH2-(Anisole)-Rt.
Claim 8 currently recites that the component (or group) in Re1 and Re2 having the higher rotational energy barrier than CH2 is now a structure shown in Formulas (IV)-(VI), which is different from benzene or anisole, in and of themselves.
It is unclear if it is Applicant’s intention to have a structure of:
–OCF2(CF2)o-O-CH2-(Formula (IV))-Rt or –OCF2(CF2)o-O-CH2-(Formula (V))-Rt, wherein Rt is -CH2OCH2(CH2)n(Ra)n-1 or Rt is -OCH2(CH2)n(Ra)n-1 and Ra is the second anchoring functional group.
Such structure does not necessarily have benzene or anisole directly bonded to CH2 and Rt. If it is Applicant’s intention to incorporate the entire Formula (IV) or (V) as Ar, please provide support and clarification for such limitation or a rejection of 35 U.S.C. 112(a) may be made in the next response.
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 21 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20220282176 (“He et al.”).
He et al. teaches a lubricant comprising a plurality of segments according to general formula (I), (II), or (III):
Re1-Rb1-Rc-Rb2-Re2 (I)
Re1-Rb1-Re2 (II), or
Re1-Rb1-(Rc-Rb2)m-Re2 (III)
wherein Rc is a divalent linking segment that optionally includes a first anchoring functional group, wherein each Rb1 and Rb2 independently comprises a chain segment comprising at least one of a fluoroalkyl ether moiety, a fluoroalkenyl ether moiety, a perfluoroalkyl ether moiety, a perfluoroalkenyl ether moiety, or a combination thereof, wherein each of Re1 and Re2 independently comprises a group having a higher rotational energy barrier than that of CH2 (e.g. benzene or anisole, which inherently will have said property [0033]), terminating with at least one second anchoring functional group engageable with a protective overcoat of a magnetic recording medium (Abstract, Figs, 2-4, and [0005]-[0051]).
He et al. teaches one or more of Re1 and Re2 comprise of 1) benzene or anisole, which intrinsically is a group having a higher rotational energy barrier than that of CH2, 2) bonded to Rb1, which has a fluoro moiety, 3) comprises the general formula (VIII)
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, and 4) has the claimed Ra anchoring functional group(s) (R1 is at least one anchoring functional group) ([0028]-[0035] and [0079]-[0092]).
While He et al. does not explicitly disclose an example of Re1 and/or Re2 having the claimed structure, Re1 and Re2 comprising benzene or anisole and terminating with a structure of -OCH2(CH2)n(Ra)n-1 is within the purview of He et al. (i.e. general formula (II): Re1-Rb1-Re2, one anchoring functional group in general formula (VIII), and n=2). The Examiner deems that it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the structure of Re1 and/or Re2 as claimed to achieve a lubricant that is stable in high temperature applications [0004].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785