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 .
Drawings
The drawings are objected. Applicant provided a REPLACEMENT SHEET on 5/7/2024; however, the REPLACEMENT SHEET does not identify the drawing itself as FIGURE 1. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-16 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.
With regards to Claims 1 and 3, the instant claims are indefinite because it recite R7 and R8 may form a ring structure together with a nitrogen atom or form a 5- to 7-membered ring together with a nitrogen atom (emphasis added). It is unclear to the Examiner if “a nitrogen atom” should refer to the nitrogen atom present in Formula (2) or is it a separate nitrogen atom (i.e. an additional nitrogen atom).
Claim 8 recites the limitation "the arrangement sequence of repeating units". There is insufficient antecedent basis for this limitation in the claim. It appears that the repeating units refer to w1 to w6 units.
Appropriate clarification and/or correction is 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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20190237101 (“Lu et al.”) in view of US Pub. No. 20190382676 (“Yamaguchi et al.”).
With regards to Claims 1-4 and 10, Lu et al. teaches a fluorine-containing ether compound represented by Formula (1) shown below:
R1-O-R2-CH2-R3-CH2-OCH2CH(OH)CH2O-CH2-R4-CH2-R5-O-R6 ···(1)
(in Formula (1), R3 and R4 are the same or different perfluoropolyether chains; and R2 and R5 are each independently a divalent linking group having one or more polar groups (Abstract, Figs. 5 and 11, and [0004]-[0014]).
Lu et al. does not teach R1 and R6 are each independently an end group containing a tertiary amine and are represented by Formula (2) and Formula (2-1).
However, Yamaguchi et al. teaches a fluorine-containing ether compound having terminal end groups of -X-NR7R8, wherein X is represented by Formula (2-1) of –(CH2)a-, wherein a is an integer of 1 to 3, R7 and R8 are the same or different saturated aliphatic groups and may form a ring structure together with a nitrogen atom. Specifically, Yamaguchi et al. teaches –(CH2)a-NR7R8, wherein -NR7R8 is piperidine or morpholine (Formula (8), [0044], [0045], and [0048]-[0052]). Yamaguchi et al. further teaches that its R1 and R6 are respectively bonded to -O-R2- or -R5-O- wherein R2 and R5 are each divalent linking group having one or more polar groups ([0005] and [0011]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute Lu et al.’s R1 and R6 (i.e. phenol or benzene) with –(CH2)a-NR7R8, wherein NR7R8 is a heterocyclic group of piperidine or morpholine in order to obtain a fluorine-containing ether compound with high adhesion strength with a protective layer [0049].
With regards to Claim 5, Lu et al. teaches all polar groups in R2 and R5 are hydroxyl groups (Fig. 5, [0005], and [0011]).
With regards to Claim 6, Lu et al. teaches R2 and R5 are each independently represented by Formula (3) shown below:
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(in Formula (3), b is an integer of 1 to 2; and an etheric oxygen atom in Formula (3) is bonded to CH2 adjacent to R2 or CH2 adjacent to R5 in Formula (1)) (Fig. 5, [0005], [0011], and [0014]).
With regards to Claim 7, Lu et al. teaches R2 and R5 each contain two polar groups ([0014] when n is 2).
With regards to Claims 8, 9, and 12, Lu et al. teaches R3 and R4 are the same and is represented by Formula (5) of -CF2O-(CF2CF2O)e-CF2-, e indicates an average degree of polymerization, and represents 0 to 30 (Fig. 5 and [0032]-[0037]).
With regards to Claim 11, Lu et al. teaches R2 and R5 are the same (Fig. 5 and [0011])
With regards to Claim 13, Lu et al. teaches the fluorine-containing ether compound has a number-average molecular weight within Applicant’s claimed range [0059].
With regards to Claim 14, Lu et al. teaches a lubricant for a magnetic recording medium comprising the fluorine-containing ether compound (Fig. 1, [0044], and [0046]).
With regards to Claim 15, Lu et al. teaches a magnetic recording medium in which at least a magnetic layer, a protective layer, and a lubricating layer are sequentially provided on a substrate, wherein the lubricating layer contains the fluorine-containing ether compound (Fig. 1 and [0044]-[0046]).
With regards to Claim 16, Lu et al. teaches the lubricating layer has an average film thickness of about 5 Angstrom to about 50 Angstrom [0050].
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.
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, 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
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