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 § 102/103
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.
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 1-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sagata et al., US Patent No. 10,047,317 (hereinafter referred to as Sagata).
Regarding claims 1-2 and 4-13, Sagata discloses a fluoropolyether compound comprising C₄-C₁₀ aliphatic hydrocarbon chain comprising at least 1 hydroxyl group in the middle of the molecule and at least two perfluoropolyethers, wherein each perfluoropolyether being ether-linked to the C4-10 aliphatic hydrocarbon chain (Col. 2/L. 17-22 and Col. 4/L. 6-11). This structure corresponds to the claimed CH₂-R3[-CH₂-R4-CH₂-R3]-CH₂.
Sagata further discloses the at least two perfluoropolyethers having at respective non-hydrocarbon chain terminals, at least one polar group selected from the group consisting of OH, OCH₂CH(OH)CH₂OH, R¹ wherein m is an integer of 2 to 8, and R¹ represents an amide residue (Col. 2/L. 23-30). Therefore, Sagata's at least one polar group as the chain terminal end groups reads on the claimed structure of R₁, R₂, R5, and R₆ (the examiner is taking the position the terminal end groups, R₁ and R6 is residue).
In the alternative, Sagata discloses that aliphatic hydrocarbon chain comprising at least 1 hydroxyl group in the middle of the molecule could be of any structure that encompasses that and the plurality of polar groups residing at the terminal ends could be of any of -OH, -OCH₂(OH)CHCH₂-OCH₄ amide residue. Thus, all structure within the aliphatic hydrocarbon chain and structure of the plurality of the polar groups residing at the terminal ends appears to be functionally equivalent. It would have been obvious to choose any aliphatic hydrocarbon chain comprising at least 1 hydroxyl group from that ranged and choosing any polar groups as claimed based on the desired lubricant properties and that choosing the functional groups would have rendered the claimed structure obvious in the absence of showing criticality.
Sagata does not explicitly disclose the molecular weight contained in the fluorine-containing ether compound is 90% or more in terms of a peak area ratio based on high-performance liquid chromatography as recited in claim 1.
Sagata discloses the compound of the present invention can be used singly, and can also be used in combination at any ratio with a fluoropolyether-based lubricant typically used in lubricants for magnetic disks (Col. 7/L. 33-38).
Regarding claim 3, Sagata discloses the molecular weight as claimed (Col. 5/L. 7-9).
Regarding claim 14, Sagata discloses a lubricant and MRM as claimed (see Fig and Col. 15/L. 22-26).
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-14 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,531,088. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '088 patent discloses the same limitations as the instant application and would therefore be obvious in light of the disclosures discussed above and incorporated herein by reference. These are the same reaction components recited in the instant claims. In re Vogel, 422 F. 2d 438, 164 USPQ 619, 622 (CCPA 1970).
Double Patenting II
8. Claims 1-14 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-12 of co-pending application No. 18/861,341. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '341 application discloses the same limitations as does the instant application and would therefore be obvious in light of the disclosures discussed above and incorporated herein by reference.
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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Conclusion
9. There were unused Y references from the ISR report. The examiner is of the position that the prior art cited adequately reads on the claims as instantly recited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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