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 .
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.
Claim 5 is 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.
Regarding claim 5, the recitation of Chem. 3, Chem. 6, Chem. 9, Chem. 10, and Chem. 21, causes confusion. Each of these formulas depicts multiple chemical structures. However, claim 5 also recites “the polymer of the formula (1)”, which the examiner interprets as one polymer. Do all of the structures need to be present in order for the limitation to be met? The examiner invites the applicant to clarify. For purposes of examination,
Claim Analysis
Summary of Claim 1:
A fluoropolyether group-containing polymer having silanol groups or hydrolyzable silyl groups, and having the general formula (1) below:
PNG
media_image1.png
148
342
media_image1.png
Greyscale
wherein Rf is a divalent fluorooxyalkylene group-containing polymer residue of the general formula (2) below:
PNG
media_image2.png
148
664
media_image2.png
Greyscale
wherein W is a fluoroalkylene group having one or more hydrogen atoms,
d is independently an integer of 1 to 3 per unit,
each of p, q, r, s, t, u and v is an integer of 0 to 450, p+q+r+s+t+u+v = 20 to 450, and each of these units may be linear or branched, each of recurring units shown in parentheses with p, q, r, s, t, u and v may be randomly bonded, and
a number-average molecular weight of the polymer residue is 6,000 to 30,000,
U is independently a divalent or trivalent organic group,
Z is independently a silalkylene structure or a silarylene structure,
Y is independently a divalent organic group,
R is independently an alkyl group having 1 to 4 carbon atoms or a phenyl group,
X is independently a hydroxyl group or a hydrolyzable group,
n is independently an integer of 1 to 3 per bonding silicon atom, and
m is 1 or 2.
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 (i.e., changing from AIA to pre-AIA ) 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, 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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Komori et al. (US 20130108876 as listed on IDS dated March 14, 2024) in view of Katayama et al. (US 20210024776 as listed on IDS dated March 14, 2024).
Regarding claim 1, Komori et al. disclose in Example 2 a fluoropolyether containing polymer having hydrolysable silyl groups having the formula shown below:
PNG
media_image3.png
122
1008
media_image3.png
Greyscale
Wherein p/q = 0.9, p+q≈45 [0087-0090], thereby lying within the claimed ranges of general formula (1) of the instant claim wherein Rf is a divalent fluorooxyalkylene having the general formula (2) wherein d is 1, p is calculated to be about 21 and q is calculated to be about 24, r, s, t,u, and v is 0, p+q is about 45, U is a divalent organic group, Z is a silarylene structure, Y is a divalent organic group, X is a hydrolysable group, n is 3, and m is 1.
Komori et al. is silent on the number average molecular weight of the polymer residue as recited in the instant claim. Katayama et al. teach a fluorooxyalkylene group-containing polymer wherein the fluoroxyalkylene polymer residue has a number average molecular weight (Mn) of 1,500 to 10,000 (claim 1, [0046]), thereby overlapping the claimed range. Katayama et al. offer the motivation that if the Mn is too low or too high, the resulting water/oil repellant of the cured film degrades in abrasion resistance, weather resistance, and/or alkali resistance [0046], Komuri et al. is also concerned with fluorooxyalkylene containing polymers forming a coating with water/oil repellency and good abrasion resistance and alkaline resistance [0023]. Therefore, it would have been obvious to one of ordinary skill in the art to modify the number average molecular weight of the fluorooxyalkylene polymer residue of Komuri et al. as taught by Katayama et al. with reasonable expectation that the water/oil repellency and abrasion and alkaline resistance would improve.
Regarding claim 2, Komuri et al. disclose the fluoropolyether group containing polymer in the formula shown above wherein U is a divalent aliphatic saturated hydrocarbon group having 4 carbon atoms and having an oxygen atom, thereby reading on the instant claim.
Regarding claim 3, Komuri et al. disclose the fluoropolyether group containing polymer in the formula shown above wherein Y is an alkylene group having 2 carbon atoms, thereby reading on the instant claim.
Regarding claim 4, Komuri et al. disclose the fluoropolyether group containing polymer in the formula shown above wherein X is an alkoxy group having 1 carbon atoms, thereby reading on the instant claim.
Regarding claim 5, Komuri et al. in view of Katayama et al. teach the fluoropolyether group containing polymer in the formula shown above, thereby lying within the claimed ranges of the first formula shown in Chem. 6 of the instant claim wherein p1 is calculated to be about 21 and q1 is calculated to be about 24 and p1+q1 = 45.
Katayama et al. teach the fluoroalkylene polymer residue has a number average molecular weight (Mn) of 1,500 to 10,000 [0046], thereby overlapping the claimed range as rejected above. Katayama et al. offer the motivation that if the Mn is too low or too high, the resulting water/oil repellant of the cured film degrades in abrasion resistance, weather resistance, and/or alkali resistance [0046], Komuri et al. is also concerned with water/oil repellency and good abrasion resistance and alkaline resistance [0023]. Therefore, it would have been obvious to one of ordinary skill in the art to modify the number average molecular weight of the fluorooxyalkylene polymer residue of Komuri et al. as taught by Katayama et al. with reasonable expectation that the water/oil repellency and abrasion and alkaline resistance would improve.
R1, r2, r3, p2, q2, r4, r5, p3, q3, qs1, and qs2 are not required in formula Chem. 6 of the instant claim and are therefore rendered obvious.
Regarding claim 6 and 7, Komuri et al. disclose the fluoropolyether group containing polymer of Example 2 is used to form a surface treatment agent and dip coated on glass slides to form a cured coating [0095-0096], thereby reading on the instant claim.
Regarding claim 8, Komuri et al. does not disclose the fluoropolyether group containing polymer of Example 2 is used to treat a lens substrate.
However, Komuri et al. broadly teaches the fluoropolyether group containing polymer is used to form a coating for lenses [0059]. Therefore, it would have been obvious to one of ordinary skill in the art to use the surface treatment agent of Komuri et al. to surface treat a lens substrate as taught by Komuri et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
Prosecution Insights