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 without traverse of Group I in the reply filed on August 28, 2026 is acknowledged.
Claims 1-5, 8-9, 17-19, 26-27, 31, 34, 42-46 and 48 are pending. Claims 31, 34, 42-46 and 48 are withdrawn.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 18-19, 26-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Robin et al (US Patent Application 2016/0326468 (already of record)).
Regarding claims 1-5, 18-19, 26-27, Robin et al teaches 95 wt% trans-1,2-dichloroethylene, 4wt% of MPHE and 1wt% of HFE-7200 (Paragraph 71, Table 9).
Robin et al teaches the limitations of the instant claims; hence, Robin et al anticipates the claims.
Claims 1-5, 9, 18-19, 26-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shellef et al (US Patent Application 2019/0119609 (already of record)).
Regarding claims 1-5, 9, 18-19, 26-27, Shellef et al teaches an azeotrope composition comprising 83.3wt% of trans-1,2-dichloroethylene, 1.4wt% of TFE-TFPE, 14.3wt% HFE07300 and 1wt% of methyl-perfluoroheptene ether (Paragraphs 131, Table 8).
Shellef et al teaches the limitations of the instant claims; hence, Shellef et al anticipates the claims.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Robin et al (US Patent Application 2016/0326468 (already of record)) as applied to claims 1-5, 18-19, 26-27 above.
Regarding claims 8 and 17, Robin et al discloses the invention substantially as claimed. Robin et al up to 2 wt% of HFE-7200 (Claim 1). Robin et al further teaches the methyl perfluoroheptene comprises isomeric mixtures of unsaturated fluoroethers and lists 5-methoxy perfluoro-3-heptene, 3-methoxy perfluoro-3-heptene, 4-methoxy perfluoro-3-heptene, 3-methoxy perfluoro-2-heptene and 4-methoxy perfluoro-2-hepteneHowever, Robin et al fails to specifically disclose about 5wt% HFE-7200 and the methyl perfluoroheptene mixture as claimed.
With regard to about 5wt% HFE-7200, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention have provided about 5wt% of HFE-7200 in Robin et al as Robin teaches up to 2wt%, which overlaps claimed about 5wt%. The word “about” permits some tolerance. At least about 10% was held to be anticipated by a teaching of a content not to exceed about 8%, see In re Ayers, 154 F 2d 182,69 USPQ 109 (CCPA 1946). A pressure limitation of 2-15 pounds per square inch was held to be readable on a reference which taught a pressure of the order of about 15 pounds per square inch, see In re Erickson, 343 F 2d 778, 145 USPQ 207 (CCPA 1965). A prima facie case of obviousness exists because the claimed ranges "overlap or lie inside ranges disclosed by the prior art", see In re Wertheim, 541 F.2d 257,191 USPQ 90 (CCPA 1976; In re Woodruff; 919 F.2d 1575,16USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05(I).
With regard to methyl perfluoroheptene mixture, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the methyl perfluoroheptene mixture as claimed in Robin et al as Robin et al teaches the methyl perfluoroheptene comprises isomeric mixtures of unsaturated fluoroethers and lists 5-methoxy perfluoro3-heptene, 3-methoxy perfluoro-3-heptene, 4-methoxy perfluoro-3-heptene, 3-methoxy perfluoro-2-heptene and 4-methoxy perfluoro-2-heptene, it would only be obvious to the ordinary artisan to adjust the amount of each of these isomers in the methyl perfluoroheptene mixture, absent unexpected results. Where general conditions of a claim are disclosed in the prior art it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Shellef et al (US Patent Application 2019/0119609 (already of record)) as applied to claims 1-5, 9, 18-19, 26-27 above, and in further view of Robin et al (US Patent Application 2016/0326468 (already of record)).
Regarding claim 17, Shellaf et al discloses the invention substantially as claimed. Shellaf et al teaches the features above. Shellaf et al teaches cleaning/solvent compositions (Abstract). However, Shellaf et al fails to specifically disclose the methyl perfluoroheptene mixture as claimed.
In the same field of endeavor, Robin et al taches 0 ODP, low GWP compositions useful in cleaning applications (Paragraph 2). Robin et al teaches the methyl perfluoroheptene comprises isomeric mixtures of unsaturated fluoroethers and lists 5-methoxy perfluoro-3-heptene, 3-methoxy perfluoro-3-heptene, 4-methoxy perfluoro-3-heptene, 3-methoxy perfluoro-2-heptene and 4-methoxy perfluoro-2-heptene (Paragraph 21).
With regard to methyl perfluoroheptene mixture, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the methyl perfluoroheptene mixture as claimed in Shellaf et al in view of Robin et al as the broad teachings of Shellaf et al encompass methyl perfluoroheptene and Robin et al teaches methyl perfluoroheptene comprises isomeric mixtures of unsaturated fluoroethers and lists 5-methoxy perfluoro-3-heptene, 3-methoxy perfluoro-3-heptene, 4-methoxy perfluoro-3-heptene, 3-methoxy perfluoro-2-heptene and 4-methoxy perfluoro-2-heptene, it would only be obvious to the ordinary artisan to adjust the amount of each of these isomers in the methyl perfluoroheptene mixture, absent unexpected results. Where general conditions of a claim are disclosed in the prior art it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TANISHA DIGGS whose telephone number is (571)270-7730. The examiner can normally be reached Monday, Tuesday and Friday, 9:00AM-5:30PM.
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/TANISHA DIGGS/Primary Examiner, Art Unit 1761 September 30, 2026
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