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, Specie: General Formula (Id), and Specie: A magnetic recording medium including the lubricant in the reply filed on 11/5/2025 is acknowledged. The traversal is on the ground(s) that there is no undue burden placed upon the Office to examine all claims. This is not found persuasive. As demonstrated in the restriction requirement, the four groups are distinct, and each 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 1-7 are within the elected group and species and encompass the elected invention.
The requirement is still deemed proper and is therefore made FINAL.
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 1-7 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. Specifically, the preamble in Claim 1 structurally recites “An epoxide based lubricant” yet the general formulas recited in Claim 1 does not comprise an epoxide/cyclic ether.
It appears that the starting materials to form Applicant’s lubricants comprise an epoxy. However, the Examiner points out that an article (i.e. finished product) is examined on the basis of the final properties and not any properties of an intermediate product or the relationship of properties of the final product to an intermediate product.
It is also further noted that any product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”, (In re Thorpe, 227 USPQ 964,966).
Claims 1-4 recites 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 each of R2 and R3 is a methyl (per Claim 3), how can two methyl groups be bonded to each other and be part/within a larger chemical structure (i.e. – CH3-CH3 – )? Further clarification and/or correction are 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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20220282176 (“He et al.”).
With regards to Claims 1-5, 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 divalent linking segment comprising an anchoring functional group, and may comprise of general formula (V):
PNG
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56
302
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Greyscale
wherein Q comprises –CH–, –CF2–, –CHF–, –CF2CF2CF2O(CF2CF2CF2CF2O)aCF2CF2 CF2–, –CF2CF2O(CF2CF2CF2O)aCF2CF2–, –CF2CF2O [CF(CF3)CF2O]aCF2CF2–, –CF2O(CF2CF2O)a(CF2O)bCF2–, –CF2O(CF2CF2O)aCF2–, or a combination thereof.
R1 is an anchoring functional group comprising B, Si, a pnictogen, a chalcogen, a halogen, —OR*, —NR*2, —NR*—CO—R*, —O—CO—R*, —CO—O—R*, —SeR*, —TeR*, —PR*2, —PO—(OR*)2, —O—PO—(OR*)2, —N=P(NR*2)3, —AsR*2, —SR*, —SO2—(OR*)2, —BR*2, —SiR*3, —(CH2)q—SiR*3, —(CF2)q—SiR*3, or a combination thereof, wherein q is 1 to 10 and each R* is, independently, a hydrogen, B, Si, a pnictogen, a chalcogen, a halogen, a saturated C1-C50 radical, an unsaturated C2-C50 radical, an aromatic C4-C50 radical, a polycyclic aromatic C5-C50 radical, a heteroaromatic C5-C50 radical, an alicyclic C3-C50 radical, and/or a heterocyclic C2-C50 radical, wherein two or more R* may join together to form a ring structure.
R1, Re1, and Re2 are a cyclic functional group comprising an alicyclic C3-C50 alkyl radical, an alicyclic C3-C50 alkenyl radical, a heterocyclic C3-C50 radical, an aromatic C5-C50 radical, a polycyclic aromatic C10-C50 radical, a heteroaromatic C5-C50 radical, a cyclotriphosphazine radical, or a combination thereof.
The at least one cyclic functional group further comprises B, Si, a pnictogen, a chalcogen, a halogen, —OR*, —NR*2, —NR*—CO—R*, —O—CO—R*, —CO—O—R*, —SeR*, —TeR*, —PR*2, —PO—(OR*)2, —O—PO—(OR*)2, —N═P(NR*2)3, —AsR*2, —SR*, —SO2—(OR*)2, —BR*2, —SiR*3, —(CH2)q—SiR*3, —(CF2)q—SiR*3, or a combination thereof, wherein q is 1 to 10 and each R* is, independently, a hydrogen, B, Si, a pnictogen, a chalcogen, a halogen, a saturated C1-C50 radical, an unsaturated C2-C50 radical, an aromatic C4-C50 radical, a polycyclic aromatic C5-C50 radical, a heteroaromatic C5-C50 radical, an alicyclic C3-C50 radical, and/or a heterocyclic C2-C50 radical, and wherein two or more R* may join together to form a ring structure ([0028]-[0036] and [0057]-[0072]). The at least once cyclic functional group independently comprises a substituted or unsubstituted monovalent moiety comprising the structures disclosed in paragraph [0033], the cyclic functional group is further substituted with one or more functional groups as disclosed in paragraphs [0035] and [0036].
Rb1 and Rb2, independently comprises a sidechain segment comprising a fluoroalkyl ether moiety, a fluoroalkenyl ether moiety, a perfluoroalkyl ether moiety, a perfluoroalkenyl ether moiety, or a combination thereof ([0230]-[0238]).
He et al. does not explicitly disclose an example of the general formula (Id), however, the Examiner deems that it would have been one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize He et al.’s lubricant structure as claimed in order to produce a lubricant with high thermal stability useful for HAMR devices [0004].
With regards to Claim 6, please see Fig. 2.
With regards to Claim 7, please see paragraph [0014].
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