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 § 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 1-12 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.
Regarding claim 1, it is not clear what is meant by “partially or entirely the same as or different from each other” means. If the substituents are different from each other, why state that they may be partially the same or different? To clarify what the substituents may be, the claim language would be clearer if Applicant states that the substituents are independently the same or different.
Claims 1 and 6-7 recites “x pieces of R3’s” and “(x+1) pieces of R2’s”. It is not clear what is meant by “x pieces” of R3 and “(x+1) pieces” of R2’s.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 5, and 7-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deng et al. (US 2015/0235664).
Regarding claims 1-2, 4-5, 7-8, Deng et al. discloses a lubricant compound for magnetic recording media having the formula: Re-Rz-Ri-Rz-Ri-Rz-Re (see Abstract),
wherein Re is X-CH2CH(X)CH2-, thereby the shortest distance of carbon atoms between X or polar groups is 2, Rz is –OCH2CF2O(CF2CF2O)nCF2CH2O-, and Ri is
–CH2CH(X)CH2OCH2CH(X)CH2-, wherein X is preferably hydroxyl groups (see claims 1-16, [0092-0094]).
Regarding claim 9, given that Deng discloses the lubricant compound as claimed, Deng discloses the MW.
Regarding claims 10-11, please see Fig. 14.
Regarding claim 12, please see claim 18.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Deng et al. (US 2015/0235664) in view of Sagata (US 2013/0209837).
Deng discloses a fluorine-containing ether compound comprising X-CH2CH(X)CH2- as the terminal end group, wherein X is a hydroxyl group as set forth above. However, Deng fails to disclose the terminal end group as presently claimed.
Sagata discloses a lubricant for a magnetic recording medium, which is analogous art to that of Deng, wherein the terminal end group is -CH2CH(OH)CH2OH or -CH2(OH)CHCH2-OC6H4-R1, wherein R1 is c1-4 alkoxy, amino, or an amide residue, thereby shows that they are of an equivalent structure known in the art.
Therefore, because these two materials were art-recognized equivalents prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute is -CH2CH(OH)CH2OH for -CH2(OH)CHCH2-OC6H4-R1, wherein R1 is c1-4 alkoxy, amino, or an amide residue in the invention of Deng. 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). A preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to have substituted the structure as claimed with a reasonable expectation of success.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Deng et al. (US 2015/0235664) in view of Sasa et al. (US 2007/0225183).
Deng discloses a fluorine-containing ether compound as set forth above, wherein –CH2CH(OH)CH2OCH2CH(OH)CH2 is between two PFPEs. However, Deng fails to explicitly disclose Formula (2-1) as presently claimed.
Sasa discloses a lubricant for a magnetic recording medium, which is analogous art to that of Deng, comprising
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, wherein Pol is hydroxyl group, between two PFPEs chain (X) [0013-0017]. It is also noted that Sasa discloses that the average molecular weight between two adjacent polar groups is not less than 500 [0017], thereby is open to additional structure between the polar groups.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Deng’s CH2CH(OH)CH2OCH2CH(OH)CH2 to be of
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, wherein Pol is hydroxyl group, as suggested by Sasa, in order to increase the reliability in a wide temperature-range environment without damaging the flying stability [0016].
Conclusion
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.
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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