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 .
Response to Amendment
Examiner acknowledges amended paragraph [0012] of the Specification, amended Claims 1 and 21, canceled Claims 4-6 and 8, and withdrawn Claims 9-11, 13-15, and 20 in the response filed on 5/7/2026.
Response to Arguments
Applicant's arguments filed 5/7/2026 have been fully considered but they are not persuasive.
Applicant argues that He does teach a wide range of cyclic moieties in an unpredictable chemical art. However, the Office has now shown how one of ordinary skill in the art would envision the utilization of benzene or anisole such as it is set forth in instant claim 1 of the disclosure.
However, Applicant’s arguments are unpersuasive. Claim 1 specifically teaches, inter alia, the arrangement of the benzene or anisole in relation to the terminal end groups (Re1 and Re2). Unlike Claim 1, Claim 21 broadly claims Re1 and Re2 comprise of benzene or anisole and comprise the conventional end group of -CH2OCH2(CH2)n(Ra)n-1 or -OCH2(CH2)n(Ra)n-1.
Further, it has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992). Applicant further has not provided evidence of unexpected results and/or criticality.
Specification
The disclosure is objected to because of the following informalities:
It is noted that amended paragraph [0012] is identical to the originally filed paragraph [0012], except for the clearer formula structures. Therefore, the objections in the Office Action 1/28/2025 are relevant and repeated below.
That is, the chemical structures (V) and (VI) in paragraph [0012] (Pages 3 and 4) appear to be the same. It is unclear if this is Applicant’s intention.
The structures (IV) and (V) provided in the originally filed Page 3 appears to be different from structures (IV) and (V) provided in paragraphs [0078] and [0079] (Page 20). It is unclear if this was made on purpose by Applicant. Please note that structure (VI) appears to be the same on Pages 4 and 21.
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.
Claim 21 is 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.
Claim 21 recites “each of Re1 and Re2 independently comprises a group having a higher rotational energy barrier than that of CH2 comprising benzene or anisole, terminating with at least one second anchoring functioning group engageable with a protective overcoat of a magnetic recording medium comprising -CH2OCH2(CH2)n(Ra)n-1 or -OCH2(CH2)n(Ra)n-1, wherein Ra is the second anchoring functional group, m = 2 and n = 2-10” (emphasis added).
The way the instant limitation is formatted, it appears that the structure of -CH2OCH2(CH2)n(Ra)n-1 or -OCH2(CH2)n(Ra)n-1 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 -CH2OCH2(CH2)n(Ra)n-1 or -OCH2(CH2)n(Ra)n-1 and is also further defined as Ra.
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, 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].
Allowable Subject Matter
Claims 1-3, 7, 12, 16-19, and 22-23 are allowed.
Conclusion
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 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
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