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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/01/2024 is being considered by the examiner.
Response to Restriction
Applicant's election with traverse of Group 1 (claims 1-7) in the reply filed on 05/06/2026 is acknowledged.
Applicant traverses on the grounds that the action fails to establish a serious search burden.
Examiner finds the applicant’s argument unpersuasive and maintains the restriction. Group I (a composition) and Group II (a method of using) are classified in separate USPC classes, as noted in the previous action (see Page 3). Therefore, a serious search burden is established.
Restriction for examination purposes as indicated is proper thereby the restriction requirement is still deemed proper and is therefore made FINAL.
Claims 8-19 are withdrawn from further consideration, as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims under consideration in the current office action are claims 1-7.
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.
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.
Claims 1, and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Knopeck et. al (US20040167053A1) hereinafter Knopeck, as evidenced by Ethane, 1,2,2-trichloro-1,1-difluoro CAS SciFinder, 1,1,1,3,3-pentafluoropropane ChemCast, Trans-1,2-dichloroethylene PubChem, and Methyl Perfluorobutyl Ether Chemical Book.
With regards to claim 1 and 3, Knopeck teaches a zeotropic cleaning composition comprising a flammable solvent, and two non-flammable solvents (see Abstract). Knopeck teaches the use of hydrofluorocarbons such as 1,2,2-trichloro-1,1-difluoro (boiling point 72C, see CAS SciFinder), and hydrofluoroethers such as methyl perfluorobutyl ether (boiling point 20C, Chemical Book) (see [0015]). The use of trans-1,2-dichloroethylene (boiling point 47.64 C, see PubChem) is also taught (see claim 18; see Tables 2-4).
Although the 1,2,2-trichloro-1,1-difluoro, methyl perfluorobutyl ether, and trans-1,2-dichloroethylene are not disclosed in a single embodiment to the point of anticipation, a person of ordinary skill in the art before the effective filing date would be motivated to combine them in view of the general teachings of Knopeck. Knopeck teaches the use of chlorofluorocarbons with other low-boiling solvents because the highly flammable solvent is preferred in the cleaning process (see [0006]). Based on boiling points, the 1,2,2-trichloro-1,1-difluoro would be the co-solvent and the methyl perfluorobutyl ether, and trans-1,2-dichloroethylene the vapor phase solvents.
With regards to claim 4, Knopeck teaches a solvent composition comprising 33.98 wt% trans-1,2-dichloroethylene, and 33.99 wt% methyl perfluorobutyl ether, a hydrofluoroether (see Table 3). The weight ratio of trans-1,2-dichloroethylene to the hydrofluoroether is about 1:1.
With regards to claim 5, Knopeck teaches a solvent composition comprising 38.36 wt% trans-1,2-dichloroethylene, and 52.66 wt% methyl perfluorobutyl ether (see Table 4). However, Knopeck does not explicitly teach the solvent blend to comprise trans-1,2-dichloroethylene and hydrofluoroether in a ratio between 10:1 to 8:1. A person of ordinary skill in the art would have reasonably optimized the proportions of the 1,2-dichloroethylene and hydrofluoroether within the claimed range to create a flammable and nonflammable solvent mixture that would segregate during cleaning but remains nonflammable (see [0008]). “Where general conditions of the claims are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. Even though applicant' s modification results in great improvement and utility over prior art, it may still not be patentable if modification was within the capabilities of one skilled in the art.” In Re Aller, 105 USPQ 233.
With regards to claim 6-7, Knopeck teaches a solvent composition comprising 32.03 wt% 1,1,1,3,3-pentafluoropropane (boiling point 15C, ChemCast), and co-solvents 33.98 wt% trans-1,2-dichloroethylene (boiling point 47.64 C, see PubChem), and 33.99 wt% methyl perfluorobutyl ether (boiling point 20C, Chemical Book) in Table 3. In Table 4, Knopeck teaches a composition comprising 32.03 wt% 1,1,1,3,3-pentafluoropropane, 38.36 wt% trans-1,2-dichloroethylene, and 52.66 wt% methyl perfluorobutyl ether.
The ratio of co-solvent and vapor phase solvent is therefore 2.12:1 (33.98+33.99:32.03) in Table 3 and 2.84:1 (38.36+55.66:32.03) in Table 4 which is about 3. A person of ordinary skill would therefore have reasonable motivation to combine 1,2,2-trichloro-1,1-difluoro (another hydrofluorocarbon), trans-1,2-dichloroethylene, and methyl perfluorobutyl ether in quantities overlapping with the ranges in the instant claims.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Knopeck et. al (US20040167053A1) as applied to claims 1, 3-7 above, and further in view of over Bartelt et. al (US20100209600A1) hereinafter Bartelt, as evidenced by Isopropyl Myristate CAS SciFinder.
With regards to claim 2, Knopeck generally teaches the use of esters as suitable solvents in the composition (see [0012]). However, the use of isopropyl myristate is not specifically disclosed in the composition.
Bartelt teaches a cleaning composition synthesized from hydrofluorocarbons (in Examples 1-3) and an unsaturated fluoroether (see [0064]). Bartelt also teaches the use of isopropyl myristate as a co-solvent (boiling point 315C at 760 mm Hg) (see [0060]).
It would have been reasonable to a person of ordinary skill in the art before the effective filing date to combine a hydrofluorocarbon solvent such as 1,2,2-trichloro-1,1-difluoro (boiling point 72C, see CAS SciFinder) taught by Knopeck with an isopropyl myristate co-solvent. This combination would have the added benefit of improved substrate residue removal and degreasing because of the ether co-solvent presence (see [0060]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHREYA PAUL whose telephone number is (571)272-1551. The examiner can normally be reached M-F: 7:30am-5:00pm.
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/SP/Patent Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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