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 .
DETAILED ACTION
This Office action is based on the 18/860993 application originally filed October 28, 2024.
Amended claims 1-15, filed July 03, 2025, are pending and have been fully considered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,264,290. Although the claims at issue are not identical, they are not patentably distinct from each other because the fluorine-containing ether compound of the current application overlaps the fluorine-containing ether compound of U.S. Patent ‘686 and varies by the amount of substituents of the perfluoropolyether chains. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yamaguchi et al. (US 2020/0263104) discloses in paragraph 0019, as a result, they discovered that the objects could be achieved by using a fluorine-containing ether compound containing a first perfluoropolyether (hereafter sometimes referred to as “PFPE”) chain disposed in the center, a second PFPE chain disposed at each of the two terminals of the first PFPE chain with a linking group containing a polar group disposed therebetween, and mutually different terminal groups disposed at the outside (the opposite side from the first PFPE chain) of the two second PFPE chains, wherein one or both of the terminal groups contain two or more polar groups. Yamaguchi further discloses in paragraph 0020, a fluorine-containing ether compound represented by a formula (1) shown below:
R4—CH2—R3—CH2—R2—CH2—R1—CH2—R2—CH2—R3—CH2—R5 (1)
(In formula (1), R1 and R3 represent the same or different perfluoropolyether chains. R2 represents a linking group containing at least one polar group, one or both of R4 and R5 represent a terminal group containing two or more polar groups, and R4 and R5 are different.). It is to be noted, Yamaguchi fails to teach the claimed fluorine-containing ether compound of Formula (1) and R3 and R4 of Formula (1) include one primary hydroxy group and having a 1 to 5 carbon atoms bonded to a tetrasubstituted carbon atom and bonding terminally to the tetrasubstituted carbon atom of the present invention.
Fukumoto et al. (US 2021/0340457) discloses in paragraph 0020, a fluorine-containing ether compound is a fluorine-containing ether compound represented by formula (1) shown below:
R4—CH2—R3—CH2—R2—CH2—R1—CH2—R2—CH2—R3—CH2—R4 (1)
(In formula (1), R1 and R3 represent different perfluoropolyether chains, R2 represents a linking group containing one or more polar groups, and R4 represents a terminal group containing two or more polar groups.). It is to be noted, Fukumoto fails to teach the claimed fluorine-containing ether compound of Formula (1) and R3 and R4 of Formula (1) include one primary hydroxy group and having a 1 to 5 carbon atoms bonded to a tetrasubstituted carbon atom and bonding terminally to the tetrasubstituted carbon atom of the present invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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