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 dated 05/29/2026 has been considered and entered. The amendment requires that the pfpe has at least two OH groups which Nagafune et al. (JP 2020-132688) does not particularly recite. New grounds of rejections are made in further view of Matsumoto et al. (US 2014/0212692 A1)
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, 8 – 10, 13 – 16, 21 – 28 are rejected under 35 U.S.C. 103 as being unpatentable over Nagafune et al. (JP 2020-132688) in view of Matsumoto et al. (US 2014/0212692 A1)
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 Z Series, 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 a number average molecular weight of from 1300 to 8000, and can have a pendant group such as hydroxyl, carboxyl, alkoxy groups etc., as claimed (specification).
Matsumoto teaches Fomblin Zdol or Z-tetraol (i.e., Fomblin Z series) having two or four OH groups respectively, similarly useful in magnetic recording medium [0009]. Thus, persons of ordinary skill in the art at the time the claims were filed would have found it obvious to have used the Fomblin Z-tetraol of Matsumoto in the composition of Nagafune, as Nagafune allows for the use of Fomblin Z-series. When Fomblin Z-tetraol is used in Nagafune, it provides NOH of 2 or 4 as claimed, and the expression of formula 3 of the claim is satisfied.
Nagafune teaches 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 4, Nagafune in view of Matsumoto teaches the composition having the PFPE such as Fomblin which provides the claimed limitations.
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 8 – 10, 13 – 16, Nagafune provides the method and teaches the lubricant coating composition having the claimed limitations as previously discussed.
In regards to claims 21, 22, Nagafune provides the method wherein the solvent is 100% HFE as claimed.
In regards to claim 23 – 28, Nagafune in view of Matsumoto teach the composition having the claimed limitations as previously stated.
Response to Arguments
Applicant's arguments have been fully considered but they are moot in view of the new grounds of rejections.
Applicant argues that Nagafune fails to teach PFPE having the claimed molecular weight. The argument is not persuasive.
Nagafune teaches PFPE having Mn of from 1300 to 8000 as discussed above.
Applicant argues that Nagafune fails to teach structure A wherein CF3 is removed as an option for Rc. The argument is moot.
The claims allow Rc to be CF3.
Applicant refers again to the 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.
Applicant argues that Nagafune does not particularly recite high polarity lubricant. The argument is not persuasive.
Nagafune teaches the claimed composition and would be expected to have similar properties as claimed. However, it is noted that the claims do not clearly recite high polarity lubricant as argued. There is no mention of lubricant polarity in the claims.
Applicant argues that Nagafune recites PFPE’s having only one OH group. The argument is not persuasive.
Nagafune allows for the use of Fomblin, which in view of Matsumoto allows for two or more OH groups in the PFPE.
Conclusion
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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