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 .
This is in response to the Amendment dated July 9, 2026. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Response to Amendment
Election/Restrictions
This application contains claims 11-14 (species), 19 (composition) and 20 (process) drawn to an invention nonelected with traverse in the reply filed on April 27, 2026.
Claim Objections
Claims 1, 6, and 15-17 have been objected to because of minor informalities.
The objection of claims 1, 6, and 15-17 has been withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
Claims 2-5, 10 and 18 have been 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.
The rejection of claims 2-5, 10 and 18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of Applicant’s amendment.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Claims 1-10 and 15-18 define over the prior art of record because the prior art does not contain any language that teaches or suggests a process for the manufacture of a hydroxyl group protected nonafluoro-tert-butyl alcohol ester compound of formula (I),
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wherein R denotes a substituent selected from the group consisting of CF3CO-, CF2HCO-,
CFH2CO-, CF2ClCO-, CFCl2CO-, CCl3CO-, CClH2CO-, CCl2HCO-, CF2ClSO2-, CFCl2SO2-, CCl3SO2-,
CFH2SO2-, CF2HSO2-, CFH2SO2-, CH3SO2-, and PfSO2-, and wherein Pf denotes a partially or
perfluorinated C2-C4 residue comprising the step of reacting as presently claimed. Therefore, a person skilled in the art would not have been motivated to adopt the above conditions, and a prima facie case of obviousness cannot be established.
Childs et al. (US Patent No. 3,900,372) teaches primary or secondary alkanols (col. 1, lines 56-57).
Aust et al. (US Patent Application Publication No. 2012/0152757 A1) does not teach
reacting a hydroxyl group protected tert-butyl alcohol compound of formula (II),
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wherein R has a same meaning as above, in an electrofluorination step in a presence of anhydrous hydrogen fluoride to obtain the hydroxyl group protected nonafluoro-tert-butyl alcohol ester compound of formula (I).
Continued Response
Claim Rejections - 35 USC § 112
Claims 12-13 and 20 would be 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 12 (withdrawn)1
line 2, “the electrochemical microreactor” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir.
1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
Claim 20 (withdrawn)
lines 26-27, “the hydroxyl group protecting group R” lacks antecedent basis.
Antecedent basis must be laid for each recited element in a claim, typically, by introducing each element with the indefinite article (“a” or “an”). See Slimfold Mfg. Co. v. Kincaid Properties, Inc., 626 F. Supp 493, 495 (N.D. Ga. 1985), aff'd, 810 F.2d 1113 (Fed. Cir. 1987) (citing P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d. Ed. 1984)). Subsequent mention of an element is to be modified by the definite article “the”, “said” or “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.
Response to Arguments
This application is in condition for allowance except for the presence of claims 11-14 (species), 19 (composition) and 20 (process) directed to inventions non-elected with traverse in the reply filed on April 27, 2026.
Claims 11-14 and 20, directed to a process species and a process, will be rejoined because the claims require all the limitations of an allowable claim. However, claim 19, directed
to a reaction mixture, will not be rejoined because the allowable process claims do not specifically use the reaction mixture as presently claimed, and the intended use of the reaction mixture, i.e., “for an electrolysis reactor”, recited in the preamble of claim 19, line 1, would not distinguish the composition from the prior art.
A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action. See MPEP § 821.01.
THIS ACTION IS MADE FINAL. 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 EDNA WONG whose telephone number is (571) 272-1349. The examiner can normally be reached Monday-Friday, 7:00 AM- 3:30 PM.
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, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDNA WONG/Primary Examiner, Art Unit 1795
1 Claims 11-14 (species) and 20 (process) would be subject to rejoinder.
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