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.
Claim 2 is 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.
Claim 2 is indefinite because the claim requires “X” to be a divalent organic group having 2 to 30 carbon atoms as recited in claim 1 from which claim 2 depends. But formulae (2-1) through (2-5) do not have a divalent organic group having 2 to 30 carbon atoms representing “X” from Formula (2). Also formulae (2-1) through (2-7) include multiple hydroxyl groups on one end but this is not represented in Formula (2).
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, 5 and 7-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu et al., US Patent Application Publication No. 2020/0002640 (hereinafter referred to as Lu).
Regarding claims 1, 5 and 7-13, Lu discloses a compound represented by structures (b), (d), and (e) and used as a lubricant in a recording medium (see Claims and see Examples). Lu discloses that a repeating x or y is an integer between 0 and 20, and it can be said that if the x or the y is O in the structure (b), for example, the structure (b) is a compound in which one terminal of the perfluoropolyether chain is a group having four carbon atoms and two hydroxy groups, and the other terminal end is a group having 15 carbon atoms, three hydroxy groups and four ether oxygen groups (the position corresponding to X in the present application has 12 carbon atoms, one hydroxy group, and three ether oxygen groups).
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.
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 2-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Lu in view of Hatta et al., International Publication No. WO2021/002178 (hereinafter referred to as Hatta – for citation purposes USPG-PUB No. 2022/0372395 is being used).
Regarding claims 2-4 and 6, Lu discloses all the limitations discussed above but does not explicitly disclose the end groups recited in claims 2-4 and 6.
Hatta discloses a compound that is used as a lubricant, has a perfluoropolyether chain, and has a diol at a terminal thereof (see Claims and see Examples). It would have been obvious to one of ordinary skill in the art before the effective filing date of the application to use the end groups of Hatta in the PFPE compounds of Lu as it is a simple substitution of one known element for another in order to obtain predictable results.
Claim Rejections - 35 USC § 103
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sagata et al., US Patent Application Publication No. 2017/0152456 (hereinafter referred to as Sagata).
Regarding claims 1-13, Sagata discloses a fluoropolyether compound represented by formula (I): R¹ -CH₂- R²-CH₂-R³ wherein R¹ is a C₁ - C₁₀ alkoxy; R² is the perfluoropolyether group: wherein x and y are each a real number of 0 to 30, Z is a real number of 0 to 30, W is a real number of 0 to 20, p is an integer of 1-3; and R³ may be the group: -OCH₂CH(OH)CH₂OH or -OCH₂CH(OH)CH₂OCH₂CH(OH)CH₂OH. The fluorine-containing ether compound represented by formula (1) set forth in independent Claim 1 differs by the R³ group which is -OCH₂CH(OH)CH₂O(CH₂)ₙOH.
The examiner is of the position that the claimed fluorine-containing ether compound does not patentably distinguish over the fluorine-containing polyether
compound disclosed in SAGATA. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities.
"An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties". In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Sagata further discloses that the fluoro-polyether compounds are suitable for lubricating a magnetic disk (Para. [0049]) and a magnetic disk apparatus (Para. [0050]). Sagata discloses that the magnetic disk comprises a substrate, and at least a recording layer and a protective layer, and having a lubricant layer on the surface of the protective layer (Claims 5-6 of SAGATA). Further, Example 1 sets forth a fluoro-polyether compound having a number average molecular weight of 1720.
Conclusion
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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