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.
Claims 1-2, 4-5, and 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fukumoto et al. (US 2021/0340457).
Regarding claims 1-2, 4-5, 13, and 15, Fukumoto discloses a fluorine-containing ether compound represented by
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wherein R4 , which corresponds to claimed R1 and R4, is
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R1 and R3, which corresponds to the claimed R2, is a PFPE chain (Abstract), and R2, which corresponds to the claimed R3, is
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w=2.
Although Fukumoto fails to explicitly disclose a specific example disclosing the claimed structure, it has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combinations less obvious, citing Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804 (Fed. Cir. 1989). It is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose specific structures as claimed dependent upon the desired functionality of the lubricant without undue experimentation and with reasonable expectation of success.
Regarding claims 7-8, please see [0021].
Regarding claim 9, please see claim 14.
Regarding claims 10-11, please see Fig. 1.
Regarding claim 12, please see [0126].
Regarding claim 14, the claim narrows the definition of Formula (3-1) with structure of A, but do not remove Formulae (3-1) and (3-2) from possible R1 and R4 structure. Therefore, Fukumoto discloses the claimed structure.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Fukumoto et al. (US 2021/0340457) in view of Sasa et al. (US 2007/0225183).
Fukumoto discloses a fluorine-containing ether compound as set forth above, wherein –
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is between two PFPEs. However, Fukumoto 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 Fukumoto, 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 Fukumoto’s R2, which corresponds to claimed R3, 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].
Response to Arguments
Applicant’s arguments with respect to claim 1 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.
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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