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 .
Election/Restrictions
Applicant's election with traverse of Group I and Specie: Triazole in the reply filed on 12/17/2025 is acknowledged. The traversal is on the ground(s) that a search in the classification for Group I would encompass the search for Group II as well. Thus, there is no undue burden of search placed upon the Office. However, this is not found persuasive. The lubricant structures in Group I and Group II are different from each other (i.e. divalent vs. trivalent to an octavalent lubricant bonding structure), and therefore the inventions require a different field of search (e.g. employing different search queries outside the classification). Furthermore, the prior art applicable to one invention would not likely be applicable to another invention. Claims 1, 3-6, and 9-11 are within the elected species and encompass the elected invention.
The requirement is still deemed proper and is therefore made FINAL.
Examiner’s Comment
The Examiner has cited particular columns and line numbers or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
With regards to Claim 9, the Examiner notes that alkyl ether moiety can be selected as the material used for R, which also appears to read into the claimed materials of fluoroalkyl ether moiety and perfluoroalkyl ether moiety. Likewise, it appears fluoroalkenyl ether moiety would encompass the limitation of perfluoroalkenyl ether moiety for R.
Similarly, substituted or unsubstituted alkyl moiety can be selected as the material used for EG, which also appears to read into the claimed materials of fluoroalkyl ether moiety and perfluoroalkyl ether moiety. Likewise, it appears that alkenyl moiety would encompass the limitation of fluoroalkenyl ether moiety and perfluoroalkenyl ether moiety.
For the purpose of examining prior art, the Examiner is taking the position that each respective moiety is different from each other, as one of ordinary skill in the art would clearly understand.
Claim Objections
Claims 1, 3-6, and 9-11 are objected to because of the following informalities:
Claim 1 recites “Rc is a fluorinated or non-fluorinated divalent linking segment … comprising at least one least one first anchoring functional group” and “Rb1 and Rb2 … comprising at least one least one second anchoring functional group” (emphasis added). To promote clarity, please amend to delete “least one” in each respective limitation.
Claim 1 reciting “wherein each Rb1 and Rb2 is a non-fluorinated or non-fluorinated divalent linking segment or a fluorinated or non-fluorinated divalent linking segment” is grammatically incorrect and appears to repeating some limitations. For the purpose of examining prior art, the instant limitation is interpreted as “wherein each Rb1 and Rb2 is a fluorinated or non-fluorinated divalent linking segment”.
Claim 1 recites the limitation “wherein each Re1 and Re2 is a click linker moiety; n is from 2 to 50” twice. The Examiner suggests to amend Claim 1 to delete one of the repetitious limitation.
Claim 1 recites “second anchoring functional group engageable with a protective overcoat of a magnetic recording medium”. Please amend the instant limitation to “second anchoring functional group engageable with the protective overcoat of the magnetic recording medium” to refer back to the earlier recited protective overcoat of the magnetic recording medium (emphasis added).
Appropriate correction is required.
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, 3-6, and 9-11 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.
Claim 1 reciting “Rc is a fluorinated or non-fluorinated divalent linking segment or a fluorinated or non-fluorinated anchoring functional group” does not comply with the written description requirement (emphasis added). In the highlighted portion above, Applicant has broaden the scope of Rc to essentially be any functional group/moiety, and Rc does not necessarily require it be divalent. The Examiner was unable to find support for this broader language for Rc.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites that “at least one first and second anchoring functional groups are not present”. However, Claim 1, in which Claim 6 is dependent from, appears to require at least one first anchoring functional group and at least one second anchoring functional group. Therefore, Claim 6 fails to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-6, 10, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pub. No. 20220282176 (“He et al.”).
With regards to Claims 1 and 3, He et al. teaches a lubricant comprising a plurality of segments according to general formula (I) or (III):
Re1 – Rb1 – Rc – Rb2 – Re2 (I)
Re1 – Rb1 – (Rc – Rb2)m – Re2 (III)
Rc is a fluorinated or non-fluorinated divalent linking segment comprising at least one first anchoring functioning group engageable with a protective overcoat of a magnetic recording medium ([0009], [0010], [0016], [0017], [0025], and [0026]).
Rc may comprise general formula (IV):
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He et al. further teaches that R1 in Rc is an anchoring functional group, wherein one or more anchoring functional group may include, or is, a hydroxyl (–OH) moiety. In some aspects, one or more cyclic functional groups may comprise a hydroxyl (–OH) moiety. He et al. further teaches that cyclic functional groups present in the end segments and/or the center or linking segment pendant to the chain segments provide a benefit for applications involving higher operational temperatures [0189]. The cyclic functional group may be triazole, which has the
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structure. Therefore, He et al. recognizes that a triazole is advantageous as part of each anchoring functional group.
He et al. teaches Rb1 and Rb2 is a fluorinated or non-fluorinated divalent linking segment comprising at least one second anchoring functional group engageable with a protective overcoat of a magnetic recording medium ([0026]-[0032], [0037], [0051]-[0055], and [0184]-[0191]). Therefore, He et al.’s teachings for Rb1, Rb2, and Rc/general formula (IV) comprises the claimed Rc, Re1 and Re2 is a click linker triazole moiety, Rb1, Rb2, and n is at least 2. He et al. further teaches its Re1 and Re2 independently comprises a moiety having at least one third anchoring functional group engageable with the protective overcoat of the magnetic recording medium, which corresponds to Applicant’s Rv1 and Rv2 ([0239]-[0240]).
With regards to Claims 4-6, please see paragraphs [0030]-[0032].
With regards to Claims 10 and 11, please see paragraphs [0009] and [0014].
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 9 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20220282176 (“He et al.”).
While He et al. does not explicitly disclose an example having the claimed formula (X), He et al. teaches all the necessary components/segments individually ([0009]-[0013], [0025]-[0032], [0037], [0039]-[0055], [0184]-[0191], and [0239]). 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 overall lubricant structure as claimed in order to achieve a suitable lubricant with high thermal stability used in magnetic recording medium in higher operational temperatures ([0004] and [0189]).
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.
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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