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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Foreign Priority
Applicant’s attempt to retrieve the certified copy of the foreign priority document has failed. See document of December 12, 2024 in the IFW for this case. However, the certified priority document is available and accepted and acknowledged from the parent application 17/679282 as noted on the office action summary PTO-326.
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 4-5 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 4 and Claim 5 both require one alkoxy group one R substituent and the other R is alkyl group (no oxygen). Both claims also recite a R1 and R2 form a ring structure as claimed with a nitrogen atom.
However, in Claim 4, only the morpholine structure (middle structure) appears possible with a very specific combination of R1 and R2 groups by Claim 4. R1 methyl and R2 = butyl, for instance, does not appear to be able to form a morpholine group by combination with the required nitrogen atom or any of the other structures of Claim 4, for instance. In other words, if one of R1 and R2 is required to have an oxygen atom (via alkoxy requirement) it is indefinite at how the other two non-oxygen containing structures are formed while also meeting the R1 and R2 limitations. Additionally, the number of carbon atoms required by R1 and R2 of Claim 4 only results in the morpholine structure of the claim in a small set of very specific circumstances (such as ethyl group and methoxy group).
Claim 5 recites R1 = methyl and R2 = methoxy but it unclear and, therefore, indefinite as to how the morpholine structure recited is obtained when said structure has 4 carbon atoms yet only 2 carbon atoms are required by the claim to make it.
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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takao (WO2018043166 with U.S. 20190218339 used as English language national stage entry for reference both provided on IDS).
In ¶[0042] Takao teaches a fluorinated polyether carbamate type compounds (Formula (2):
Rf(CF2)a—C(═O)N(—R1CH═CH2)2
The above formula anticiptes Fomula (1a) when RF1 = perfluoroalkoxy groups (fluorinated polyether) along with (CF2) which yield the RF1 recited. See also ¶[0188] which gives a specfic instance of the above fornula where R1 is a C1 alkyl group substituted with an CH2=CH2 group along with a specifc Rf group which anticipates RF1 as claimed. The instant formula 1a, q can be 0 which means the alkyl groups are connected directly to the C=O group rather than through a -O- group (q = 1 for RF1) This anticiaptes R1 and R2 as Applicant’s as-filed specification specifically states the alkoxy or alkyl groups may be substituted (¶[0055] which also states these groups are preferably not subsituted).
Methyl is at least one of R1 are R2 are an alkyl group of C1 carbons anticiapting said limitaiton of Claim 1.
The above R1 and R2 and RF of Claim 2, (as methyl subsituted with a CH2=CH2 group as discussed above) are anticitpated for the above reasons and only one of the groups of Claim 2 must be present (a, b, c, d, e, f can be zero as long as 1 is not zero and at least d is present in the formula of ¶[0188]).
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kondo (“Synthesis of Perfluoropolyethers Having a Functional Group at the Chain End and Their Absorption properties” – provided on IDS).
Kondo teaches in Table 2 and Table 3 compounds that anticipate both RF1 (along with group c of Claim 2) of Formula (1a) when R1 and R2 are both methyl groups. This anticipates Claim 2 along with Claim 1.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koshikawa (U.S. 20120123049).
Koshikawa teaches ¶[0027]
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As above regarding methyl substitution, R1 and R2 are either an unsubstituted methyl group or a methyl group in which one H is replaced (substituted) with a -CH2=CH2 group. This anticipates the R1 and R2 of Claim 1 for Formula 1b as recited. Claim 2 is anticipated by the 0 to 200 range of n and m in the above formula in ¶[0027]. Note while the formulas of Claim 2 are written to suggest linearity there is no such requirement and the branched perfluoroalkyl groups above anticipate the range and type of recited by Claim 2.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art is Takao (WO2018043166 with U.S. 20190218339 used as English language national stage entry for reference both provided on IDS) for Formula 1a and Koshikawa (U.S. 20120123049) for Formula 1b.
Claims 3-5 require either of R1 and R2 to be alkyl or alkoxy but one determine the other and both alkyl an alkoxy must be present or R1 and R2 ring some kind of ring system. Neither of Takao nor Koshikawa reasonably suggested the substituents on the N be in the form of a ring structure or have one substituent be alkyl and the other alkoxy as required by Claims 3-5. In Takao, for instance, there is simply no mention of a ring structure or alkoxy groups on the nitrogen atom (which searches as a branch point) and it is unclear how such substituents would even work to fulfilling Takao’s goals. Therefore, to arrive at the claimed invention with either of the above would require hindsight.
Conclusion
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/Christopher M Rodd/Primary Examiner, Art Unit 1766