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 .
The amendment 02/12/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
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.
Claims 1 – 5, 7 – 10, 13 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Nagafune et al. (JP 2020-132688)
In regard to claim 1, Nagafune teaches solvent such as 1,1,1,3,3,3-hexafluoroisopropylmethyl ether for dissolving perfluoropolyether such as Fomblin, Demnum or Krytox series and which provides a lubricant composition useful for coating magnetic recording components (see specification). Magnetic recording devices are well known to include magnetic disk or hard disk drives (for instance see Yamada et al. JP 2002047218A as evidence). The solvent has the structure of formula A) of the claim according to paragraph 0024 of applicant’s specification. The perfluoropolyether (PFPE) such as Fomblin, Demnum or Krytox are polyethers according to formula 3) of the claim according to paragraph 0034 of the applicant’s specification. The PFPE can have pendant groups such as hydroxyl, carboxyl, alkoxy groups etc., as claimed (specification). The 1,1,1,3,3,3-hexafluoroisopropylmethyl ether solvent is displayed below:
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The hexafluoroisoproyl methyl ether is similar to formula A, when in formula A, Ra and Rc are each independently CF3 and Rb is O-Rd where Rd is CH3 which is a hydrocarbon group. When the composition is used as coating on the magnetic recording device such as a magnetic disk, the method of producing the disk by applying the coating is intrinsically provided.
In regards to claim 2, Nagafune provides the method and teaches the solvent having the claimed structure and which would be expected to have similar properties such as boiling point. For instance, 1,1,1,3,3,3-hexafluoroisopropylmethyl ether is generally known to have a boiling point of 50℃ (see CAS RN: 13171-18-1 for evidence).
In regards to claim 3, Nagafune provides the method and teaches the hydrofluoroether solvent having the structure above, which has a CH3 end-group having three carbon-hydrogen bonds, and a CH having one carbon-hydrogen bond, thus making 4 total.
In regards to claim 5, Nagafune provides the method and teaches the perfluoropolyether such as Fomblin, Demnum and Krytox which applicant’s specification recites as teaching the claimed structures as previously stated.
In regards to claims 7 – 10, 13 – 20, Nagafune provides the method and teaches the lubricant coating composition having the claimed limitations as previously discussed.
In regards to claim 21, Nagafune provides the method wherein the solvent is 100% HFE as claimed.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant provides a declaration by Tsuyoshi Shimizu demonstrating that polarized PFPE provides better solubility in in an HFE solvent than the non-polar PFPE such as those of Nagafune which can have alkyl pendant groups rather than the polar groups of the claims including hydroxyl, alkoxy, carbonyl groups etc. The argument is not persuasive.
Contrary to applicant’s arguments, Nagafune teach which also teaches the polar groups of the claims as alternative, which applicant also admits, would allow for the PFPE to have similar properties when such polar groups are used. An absence of examples with PFPE having polar groups does not limit the scope of the teaches of Nagafune. Furthermore, the results of Table A of the declaration were not persuasive, because all of the referential comparative examples provided good solubility similar to the single Example 3 of the instant claims. Also, the sole example does not support the breadth of the claimed HFE and PFPE groups allowed by the claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771