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 .
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.
Response to Amendment
Examiner acknowledges amended Claim 1, withdrawn Claims 2, 7, 8, and 12-20, canceled Claim 6, and new Claim 21 in the response filed on 4/9/2026.
Response to Arguments
Applicant's arguments filed 4/9/2026 have been fully considered but they are not persuasive.
Applicant argues that each of Re1 and Re2 in general formula (I) is a click linker moiety. More specifically, the click linker moiety is triazole. Triazole can be considered to be implicit to Claim 1 due to the limited options of click chemistry.
However, Applicant’s arguments are unpersuasive. Click chemistry is an approach to chemical synthesis that is used to join two molecules by appropriate functional groups. These molecules are then “clicked” together in a process that is highly favorable which tolerates many functional groups (Wikipedia article on “Click Chemistry”). Therefore, Claim 1 recitation of a click linker moiety does not inherently imply that it is a triazole. It is noted that the features upon which Applicant relies (i.e., Re1 and Re2 each containing a triazole) are not recited in the rejected Claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant is further reminded that process limitation(s) are not germane to the determination of patentability of a claimed product.
As disclosed in paragraphs [0026]-[0032], [0037], [0051]-[0055], and [0184]-[0191], He et al. teaches cyclic functional groups, which reads on the limitation “clink linker moiety”. Further, Claim 1 do not exclude additional functional groups from He et al.’s list of cyclic functional groups, and Claim 1 provides a broad genus giving rise to many possible functional groups.
Applicant argues that the Office has not shown He et al. discloses triazole in more than 1 place in the list of cyclic functional groups in para. 0191. Applicant further argues that He et al. Disclose 36 formulas for cyclic functional groups in for examples paras. 0033 and 0192. The Office has not shown that triazole is among these preferred embodiments.
However, Applicants arguments are unpersuasive. He et al. teaches a lubricant having a general formula wherein it can comprise at least 4 cyclic functional groups. Specifically, 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)
([0009], [0010], [0016], [0017], [0025], and [0026]).
Rc may comprise general formula (IV):
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([0009], [0010], [0016], [0017], [0025], and [0026]).
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 (i.e. R1 comprises one or more cyclic functional groups with hydroxyl 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], wherein the cyclic functional group may be triazole.
While He et al. teaches other formulas for its cyclic functional groups, 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).
Claim Objections
Claim 1 recites “second anchoring functional group engageable with the 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 magnetic recording medium (emphasis added).
Claim 21 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).
Claim 21 is further objected because the instant claim recites the limitation “n is from 2 to 50” twice. The Examiner suggests to amend Claim 21 to delete one of the repetitious limitation.
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.
Claims 1, 3-5, 9-11, and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.
Claims 1 and 21 recite a lubricant having the general formula (I): Rv1-(Rb1-Re1)n-Rc-(Re2-Rb2)n-Rv2, and wherein each of Rv1 and Rv2, when present, …” (emphasis added).
The general formula requires Rv1 and Rv2 due to being present in general formula (I), yet it appears that Rv1 and Rv2 are optional due to the conditional limitation of “when”. Thus, it is unclear if Rv1 and Rv2 is included or excluded in the claim language.
Appropriate clarification and/or correction is required 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.
Claims 1, 3, 4, 5, 10, 11, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20220282176 (“He et al.”).
With regards to Claims 1, 3, and 21, 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 triazole is advantageous as part of each anchoring functional group (R1 and relevant thereof), and thus one of ordinary skill in the art would choose triazole as its cyclic functional group as it is recognizable in providing thermal operational stability [0189].
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 moiety, Rb1, Rb2, and n is at least 2 (at least four R1 is present in general formula (IV)). 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 and 5, please see paragraphs [0030]-[0032].
With regards to Claims 10 and 11, please see paragraphs [0009] and [0014].
Allowable Subject Matter
The combination of Claims 3 and 10 (or Claims 10 and 21) would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 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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