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 .
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.
Claim 1-18 are rejected under 35 U.S.C. 103 as obvious over Yamaguchi (US 2019/0382676) in view of Itoh et al. (US 2010/0261039).
Regarding claims 1-3 and 6-12, Yamaguchi discloses a fluorine-containing ether compound represented by
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wherein, R2 and R4 is
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.
Therefore, claimed R1 and R6 corresponds to Yamaguchi’s R1 and R5, claimed R2 and R5 corresponds to Yamaguchi’s R2 and R4, and claimed R3 corresponds to Yamaguchi’s R3. With regards to the claimed terminal end groups R1 and R6, Yamaguchi discloses that the heterocyclic group is coumarin or a polycyclic ring that includes lactone or lactam [0052].
Or in the alternative, although Yamaguchi fails to explicitly disclose a terminal end group using coumarin or a polycyclic ring that includes lactone or lactam in the examples, Yamaguchi discloses that coumarin or a polycyclic ring is functionally equivalent to that of a thiophene ([0052], [0072]: Formula A).
Therefore, Yamaguchi discloses that it would have been well within the purview of one of ordinary skill in the art before the effective filing date of the claimed invention to choose to use coumarin or a polycyclic ring that includes lactone or lactam [0052] in the terminal end group as Yamaguchi has establish that they are functionally equivalent. Thus, choice of using coumarin or a polycyclic ring that includes lactone or lactam would be well within the level of ordinary skill in the art.
Although Yamaguchi discloses the claimed R3, wherein n=0, in the main chain, Yamaguchi fails to explicitly disclose [-CH2-R4-CH2-R3]n=1 or 2 in the main chain.
Itoh discloses a fluorine-containing ether compound with an aromatic group and a polar group at the terminal end as a lubricant for a magnetic recording medium, which is an analogous art to that of Yamaguchi. Itoh further discloses that the main chain can be
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wherein, the main chain in formula (1) is similar to that of Yamaguchi (n=0). Therefore, Itoh discloses that the main chain of formula 1, (1), is functionally equivalent to that of the main chain of formula 1, (3) (n=1).
Yamaguchi discloses the claimed invention except that it uses n=0 instead of n=1. Itoh shows that n=1 is an equivalent structure known in the art. Therefore, because these two materials were art-recognized equivalents before the effective filing date of the claimed invention was made, one of ordinary skill in the art would have found it obvious to substitute n=0 for n=1 to produce the main chain as claimed in the invention of Yamaguchi. Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950). Given that both Yamaguchi and Itoh both is directed to alumina and corrosion resistance, a preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to have substituted n=0 for Itoh’s n=1 in the main chain with a reasonable expectation of success
Regarding claim 4, Yamaguchi discloses that the terminal end groups can be different from each other with the materials as claimed [0052-0053].
Regarding claim 5, the claim narrows the definition of Z, but do not remove from Z being not present. Alternatively, Yamaguchi discloses a substituents Z as claimed [0053].
Regarding claims 13-14, please see [0062-0068].
Regarding claim 15, please see [0030].
Regarding claims 16-17, please see Figure 1.
Regarding claim 18, please see [0033].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The applicant argues that the range n=1 and n=2 in the main chain provides unexpected results. Applicant points to compound (G), wherein n =0, to those with compounds (O), (U), (W), (AA), and (AB), wherein these compounds have the same structure as (G) except for the value of n. Applicant argues that the results is unexpected because the pickup suppression test has a result of “B”. This has been found unpersuasive. The instant specification, paragraph [0304] states:
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Therefore, given that compound (G), wherein n=0, provides satisfactory results, applicant has not persuasively argued that there is a criticality associated with the claimed range.
Nevertheless, the evidence pointed to in the specification is not commensurate in scope with the claims. In particular, the evidence does not support that the entire R1, R2, R3, R4, R5, and R6 range is unexpected. The instant claims broadly encompass any combination of the PFPE compound, however, the data only uses specific compounds. It is not clear that every combination of PFPE compound as claimed would behave the same as the ones employed by Applicant in the instant Examples.
Although applicant appears to argue an unexpected result of excellent chemical substance resistance and pickup suppression test, the issues with the data as highlighted above illustrate that such unexpected results have not been persuasively demonstrated.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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