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 .
Status of the Application
Claims 13-24 are pending and under current examination.
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 13-24 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 13-24 are indefinite as:
Claims 13, 16, 17, 20 are indefinite as these claims recite alternatives in an open-ended improper Markush format. For instance, claim 13 “monomers selected from the following ingredients”. Applicant is suggested to use proper Markush format, such as “selected from a group consisting of”.
Claims 16 and 17 are indefinite as these claims are missing structural formula of perfluorolefin.
Since the dependent claims fails to cure above deficiencies, these claims are also indefinite.
Appropriate correction required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 13, 15-20, and 22-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chao (CN1030406A; Machine English translation is used for this rejection).
Chao discloses method of making perfluorolefin oligomer of claims 16 and 17 with carbon atoms>7 comprising oligomerization reaction of HFP and/or HFP dimer in presence of metal fluoride salt with example of KF in a solvent with example of DMF, acetonitrile, N,N-dimethylacetamide etc., at temperature of 65-150C, preferably 90-110C for time period with example of 2h (entire article, especially examples and claims).
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Since the cited prior art reads on all the limitations of the instant claims 13, 15-20, and 22-24, these claims are anticipated.
Claims 13-17, 22-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tianjin (CN109574812A); as provided by the applicant on IDS dated 03/07/2024).
Tianjin discloses method of making perfluorolefin oligomer of claims 16 and 17 with carbon atoms>7 comprising oligomerization reaction of HFP and/or HFP dimer, trimer; TFE and HFP; HFP and TFE dimer (perfluorobutene) (0025, 0026, 0041-0046, 0058-0069) in presence of metal fluoride salt with example of KF in a solvent with example of DMF, acetonitrile, etc., at temperature of 30-50C, for time period, such as 10h (entire article).
Since the cited prior art reads on all the limitations of the instant claims 13-17, 22-23, these claims are anticipated.
Claims 13, 16-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhejiang (CN110577460A; as provided by the applicant on IDS dated 03/07/2024).
Zhejiang discloses method of making perfluorolefin oligomer of claims 16 and 17 with carbon atoms>7 comprising oligomerization reaction of HFP or HFP with other perfluorolefins in presence of metal fluoride salt with example of KF in a solvent with example of DMF, acetonitrile, etc., at temperature of 30-80C, such as 50, 70C for time period, such as 1.5h and HFP: metal fluoride as 1:0.012 (entire article).
Since the cited prior art reads on all the limitations of the instant claims 13, 16-23, these claims are anticipated.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 13-24 are rejected under 35 U.S.C. 103 as being unpatentable over Zhejiang (CN110577460A; as provided by the applicant on IDS dated 03/07/2024).
Determining the scope and contents of the prior art
Zhejiang discloses method of making perfluorolefin oligomer of claims 16 and 17 with carbon atoms>7 comprising oligomerization reaction of HFP or HFP with other fluoro-containing olefin raw material in presence of metal fluoride salt with example of KF in a solvent with example of DMF, acetonitrile, etc., at temperature of 30-80C, such as 50, 70C for time period, such as 1.5h and HFP: metal fluoride as 1:0.012 (entire article).
Ascertaining the differences between the prior art and the claims at issue
Zhejiang discloses method of making perfluorolefin oligomer of claims 16 and 17 with carbon atoms>7 comprising oligomerization reaction of HFP or HFP with other fluoro-containing olefin raw material in presence of metal fluoride salt with example of KF in a solvent with example of DMF, acetonitrile, etc., at temperature of 30-80C, such as 50, 70C for time period, such as 1.5h and HFP: metal fluoride as 1:0.012 (entire article), but fails to teach the process TFE, TFE oligomers or HFP oligomers and give example with time for reaction as 1.5hrs.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference of oligomerization reaction of HFP with TFE, TFE oligomers or HFP oligomers etc.- Zhejiang teaches a method of making perfluorolefin oligomer of claims 16 and 17 with carbon atoms>7 comprising oligomerization reaction of HFP or HFP with other fluoro-containing olefin raw material in presence of metal fluoride salt with example of KF in a solvent with example of DMF, acetonitrile, etc., at temperature of 30-80C, such as 50, 70C for time period, such as 1.5h and HFP: metal fluoride as 1:0.012. Thus, based on the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that HFP may undergo oligomerization with other fluoro-containing olefin raw material, such as TFE, TFE oligomers or HFP oligomers etc. Further, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that other fluoro-containing olefin raw material in reaction taught by the cited prior art may be substituted with another fluoro-containing olefin. Thus, the cited prior art meets limitation of the instant claims.
With regards to the above difference of time of reaction- Zhejiang teaches a method of making perfluorolefin oligomer of claims 16 and 17 with carbon atoms>7 comprising oligomerization reaction of HFP or HFP with other fluoro-containing olefin raw material in presence of metal fluoride salt with example of KF in a solvent with example of DMF, acetonitrile, etc., at temperature of 30-80C, such as 50, 70C for time period, such as 1.5h and HFP: metal fluoride as 1:0.012. Generally, however, differences in concentration, temperature, and the like, will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the 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, 456, 105 USPQ 233, 235 (CCPA 1955). Moreover, it is noted that all of the recited reaction parameters are recognized as result-effective variables, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Thus, the cited prior art meets limitation of the instant claims.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, With regards to the above difference of oligomerization reaction of HFP with TFE, TFE oligomers or HFP oligomers etc.- Zhejiang teaches a method of making perfluorolefin oligomer of claims 16 and 17 with carbon atoms>7 comprising oligomerization reaction of HFP or HFP with other fluoro-containing olefin raw material in presence of metal fluoride salt with example of KF in a solvent with example of DMF, acetonitrile, etc., at temperature of 30-80C, such as 50, 70C for time period, such as 1.5h and HFP: metal fluoride as 1:0.012.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that time period for reaction may be adjusted depending on the desired yield of the product and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited reference and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Conclusion
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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