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Examiner acknowledges amended Claims 1 and 3, withdrawn Claims 8-18, withdrawn currently amended Claim 19, canceled Claim 20, and new Claim 21 in the response filed on 6/4/2026.
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 1-7 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.
Claims 1 and 2 recite R1, R2, R3, and R4, R5, and R6 independently comprise single or branched non-fluorinated or fluorinated C1-C10 alkyl, C1-C10 alkoxy, benzene, naphthalene, anthracene, phenanthrene, dibenz[a,h]anthracene, pyrene or benzopyrene. According to Applicant’s lubricant formulas, R2 and R3 are directly bonded to each other and are within the lubricant structures. It is unclear to the Examiner how R2 and R3 are bonded to each other and having the claimed structures. For example, if R2 and R3 comprise an alkyl group, such as a methyl group, how can two alkyl/methyl groups be bonded to each other and be part/within a larger chemical structure (i.e. – CH3-CH3 – )? An alkyl group is a carbon chain fragment with one open bond where it attaches to something else (i.e. an alkane missing one hydrogen atom). If it is bonded on both ends, it is no longer considered an alkyl/methyl group. Further clarification and/or correction are required in the next response. Please note that the Examiner did not necessarily limit to the C1-C10 alkyl group.
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 21 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 21 further reciting that R1, R2, R3, or R4 is aromatic, which does not necessarily further limit Claim 1. It appears that Applicant is requiring R1, R2, R3, and/or R4 independently be benzene, naphthalene, anthracene, phenanthrene, dibenz[a,h]anthracene, pyrene or benzopyrene, all of which are aromatic. 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.
Allowable Subject Matter
Claims 1-7 and 21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) and 35 U.S.C 112(d) set forth in this Office action and reflect the election restriction requirement of Group I, Specie: General Formula (Id) in the reply filed on 11/5/2025.
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.
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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
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