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 .
Response to Amendment
Examiner acknowledges amended Claim 1, 9, 10, and 12, cancelled Claims 5-8, withdrawn Claims 15-20, and new Claim 21 in the response filed on 5/13/2026.
Response to Arguments
Applicant’s arguments with respect to Claims 1-4, 9-14, and 21 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.
Claim Objections
Claims 10 and 12 are objected to because of the following informalities: The instant claims recite “-OR*” twice. The Examiner suggests to amend the instant claims to delete one of the repetitious limitation.
Claim 21 is objected to because of the following informalities: Claim 21 recites “each Rc is an end-segment comprising n anchoring functional group” (emphasis added). It appears that “n anchoring functional group” should be amended to “an anchoring functional group”. Appropriate correction is required.
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 1-4 and 9-14 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.
Claim 1 recites at least one constituent is selected from dizetine and dihetane. It is unclear what these compounds are. According to Applicant’s Specification, these compounds are four membered rings with two heteroatoms. Thus, it appears that these compounds are diazetidine and dihietane. Appropriate clarification and/or correction (in the claim(s) and specification) is required in the next response.
Claims 3 and 4 recite that the at least one constituent have a strain energy greater than 10 kilocalories per mole (kcal/mole) or greater than 20 kcal/mole (emphasis added). However, Claim 1 recites specific strained rings, each intrinsically having their own respective strain energy. Therefore, it is unclear how diaziridine, oxaziridine, dioxirane, azetidine, oxetane, phosphetane, thietane, dizetine, dioxetane, and/or dihetane can achieve a strain energy greater than 10 or greater than 20 kcal/mole (i.e. every value beyond 10 or 20 kcal/mole).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1, in which Claim 2 is dependent from, recites its at least one constituent is selected from the group consisting of diaziridine, oxaziridine, dioxirane, azetidine, oxetane, phosphetane, thietane, dizetine, dioxetane, and dihetane, all of which are strained rings. Therefore, Claim 2 does not further limit the at least one constituent.
Claim 9, which is dependent on Claim 1, recites that the at least one constituent is selected form the group consisting of acrylates and o-nitribenzyl. However, Claim 9 fails to further limit the subject matter of Claim 1 because Claim 1 recites specific strained rings for its constituents. For the purpose of evaluating prior art, a reactive end-group containing at least one of diaziridine, oxaziridine, dioxirane, azetidine, oxetane, phosphetane, thietane, dizetine, dioxetane, and dihetane meets the instant limitation.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pub. No. 20220290066 (“He et al.”).
He et al. teaches a lubricant comprising a plurality of segments according to general formula (I):
Rc-Rd-Rc (I)
where Rd is a linker and each Rc is an end-segment comprising an anchoring functional group and a reactive end-group containing at least one constituent configured for at least one of tribochemical, thermochemical, or optochemical bonding (i.e. the anchoring functional groups which are configured for bonding, wherein the anchoring functional group and the reactive end-group may be same or different from each other) ([0005], [0006], [0106]-[0107], [0167]-[0169], [0185], and [0249]).
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 1-4 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20220290066 (“He et al.”) in view of US Pat. No. 4746575 (“Scarati et al.”).
With regards to Claims 1-4 and 9, He et al. teaches a lubricant comprising a plurality of segments according to general formula (I):
Rc-Rd-Rc (I)
where Rd is a linker and each Rc is an end-segment comprising an anchoring functional group and a reactive end-group containing at least one constituent configured for at least one of tribochemical, thermochemical, or optochemical bonding (i.e. the anchoring functional groups which are configured for bonding) ([0005], [0006], [0035], [0106]-[0107], [0167]-[0169], [0185], and [0249]).
Specifically, He et al. teaches a lubricant having the general formula (I): Re1-Rb1-Rc-Rb2-Re2 [0035], wherein Rb1, Rc, and/or Rb2 corresponds to Applicant’s claimed Rd, and Re1 and Re2 corresponds to Applicant’s claimed Rc.
He et al. teaches each of Re1 and Re2 independently comprises general formula (III)
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, wherein R1 comprises an anchoring functional group and a reactive end-group comprising a hydroxyl moiety and heterocyclic C2-C50 radical ([0167]-[0168]).
He et al. does not explicitly teach its heterocyclic C2-C50 radical is at least one constituent selected from the group consisting of diaziridine, oxaziridine, dioxirane, azetidine, oxetane, phosphetane, thietane, dizetine, dioxetane, and dihetane.
However, Scarati et al. teaches a lubricant comprising oxetane functional groups at the terminal ends of the lubricant (Abstract, Col. 3: Lines 1-45 and 52-54, Col. 4: Lines 20 bridging over to Col. 5: Line 5). Such ring structure intrinsically have a strain energy of greater than 20 kcal/mole. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have He et al.’s heterocyclic C2-C50 radical comprise of oxetanes as it is recognized in providing desirable lubricating characteristics in reducing interface friction and wear on magnetic recording mediums (Col. 2: Lines 50-68).
With regards to Claims 10-13, He et al. teaches Rd and Rc include at least one anchoring functional group as claimed, including the functional group -OH ([0036], [0040], [0106]-[0108], and [0167]-[0169]).
With regards to Claim 14, He et al. teaches the instant limitation (see [0106], [0185], and [0249]).
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 LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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