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 (Claims 1-12) in the reply filed on 2/26/2026 is acknowledged. The traversal is on the ground(s) that Group I and II are not sufficiently different from each other. This is not found persuasive because the restriction requirement was on the basis that the two compounds did not share a special technical feature. While the compounds of Group II appear to be compounds that are further elaborated from those of Group I, the shared technical feature is not a special technical feature, as the method is not novel in view of Suzuki (JP 2018-090492) as detailed in the restriction requirement and as such, can be separated.
The requirement is still deemed proper and is therefore made FINAL.
The applicant’s election without traverse relative to Group III is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
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.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (JP 2018-090492, Foreign Reference #1 from IDS dated 5/9/2024).
Regarding Claims 1-2 and 12,
Suzuki teaches the fluorination of a compound with the following structure:
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in which R contains 2 or 3 carbons (Paragraph 9) which is contained within the range of the instant claim and in which the number of repeating units is from 4 to 20 (Paragraph 9), which overlaps with the range of the instant claim. Suzuki further teaches that R1 and R2 represent protecting groups for the hydroxyl group. One of ordinary skill in the art would recognize that the number of repeat units would, by necessity, alter the molecular weight of the polymer and it would logically follow, associated properties of that polymer including viscosity and boiling point. The ordinarily skilled artisan would choose the number of repeat units in the polymer to obtain a material with the desired material properties such as viscosity and boiling point that are suitable for the use case. As such, it would have been obvious prior to the effective filing date of the instant application to have selected any number of repeating units within the range that afforded a final polymer with the desired properties and it further would have been obvious to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to step 1, Suzuki teaches in example 1 the use of material that is comprised only of polyethylene glycol of 7 and 8 repeat units (Paragraph 52). While Suzuki does not teach a molecular weight distribution adjustment to this material, Suzuki demonstrates using material with a narrow molecular weight distribution. Because polymerization reactions typically result in a spread of molecular weights, it would logically follow that this material had been adjusted to be a mixture of only the two identified species. As such, this step was performed even if it was not disclosed by Suzuki, meeting the requirements of the instant claim.
Suzuki additionally teaches that the compound is fluorinated with an inert gas and fluorine gas in a reactor with the reactant polymer in solvent (Paragraph 15).
Finally, Suzuki teaches that the protecting groups are preferably acyl groups (Paragraph 10).
Regarding Claims 3 and 5,
Suzuki teaches the use of polyethers with narrow molecular weight distribution as described in reference to claim 1 above. As Suzuki describes using a polyether with a narrow molecular weight distribution in the fluorination reaction, this reads upon an adjustment taking place with the polyether being in the state of having terminal hydroxyl groups, which meets the requirements of claim 3. Furthermore, as Suzuki teaches the use of a material with a narrow molecular weight range, it would logically follow that this adjustment could be conducted at any point in the process. It would therefore have been obvious prior to the effective filing date of the instant application to have conducted this adjustment at any point during the process. See MPEP 2144.04.IV.C.
Regarding Claim 4,
Suzuki teaches that the polyether with 7 and 8 repeat units is first protected with a protecting group such as an acetyl group (Paragraph 52).
Regarding Claim 6,
Suzuki teaches the use of polyethylene glycol (PEG) of 7 and 8 repeat units (Example 1, Paragraph 52), which would represent the mixture of two monodisperse PEG polymers, meeting the requirements of the instant claim.
Regarding Claim 7,
Suzuki teaches the use of polyethylene glycol (PEG) of 7 and 8 repeat units (Example 1, Paragraph 52). As noted in regard to claim 1 above, polymerization reactions typically result in a range of molecular weights. Because Suzuki teaches a starting PEG polymer that only contains polymer of 7 and 8 repeat units, it would logically follow that the composition was adjusted in a way to remove both the high and low molecular weight components and would therefore meet the requirements of the instant claim.
Regarding Claims 8-10,
Suzuki teaches in example 1 (Paragraph 52) a mixture of polyethylene glycol polymers that are 7 and 8 and repeat units. While Suzuki does not specify the ratio of the two polymers, the value of the molecular weight of the 8 repeat unit polymer divided by that of the 7 repeat unit polymer is 1.13. It would logically follow that the polydispersity of this mixture (Mw/Mn) would be lower than this value, since it would not be possible for the weight average molecular weight to exceed the value of the highest molecular weight polymer nor for the number average molecular weight to be below that of the smallest molecular weight polymer. Therefore, this mixture would meet the requirements of claim 8. With regard to the amounts of material that are above 4 repeat units beyond the average or with only 1 or two repeat units, because Suzuki specifies that the polyethylene glycol polymers are 7 or 8 repeat units, it would necessarily follow that these amounts would be zero, thereby meeting the requirements of claims 9 and 10.
Regarding Claim 11,
Suzuki teaches that inert gas and fluorine gas are introduced into the reactor (Paragraph 38) and that during this step, a perhalogenated unsaturated compound is added (Paragraph 41) with the preferred example of the compound being hexafluorobenzene (Paragraph 42).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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