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 .
Election/Restrictions
1. Applicant’s election without traverse of Group I, i.e. Claims 2-11, in the reply filed on 02 April 2026 is acknowledged.
2. Claims 12-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II and II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02 April 2026.
Claim Rejections - 35 USC § 103
3. 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:
4. 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.
5. Claims 2-3, 5-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita et al. (United States Patent Publication No. US 2015/0064909 A1), hereinafter Yamashita; in view of DeSimone et al. (United States Patent Publication No. US 2013/0011618 A1), hereinafter DeSimone 1.
6. Regarding Claims 2-3, 5-9 and 11, Yamashita teaches (Paragraph [0026]) a photo-curable composition. Yamashita teaches (Paragraphs [0059-0136]) a fluorinated monomer comprising cross-linkable end groups. Yamashita teaches (Paragraphs [0169-0195]) a photoinitiator. Yamashita teaches (Paragraph [0136]) wherein the fluorinated monomer has a molecular weight that is 2 to 20 kg/mol. Yamashita teaches (Paragraph [0219]) the fluorinated monomer comprises a perfluoropolyether moiety. Yamashita teaches (Paragraph [0136]) wherein the fluorinated monomer has a molecular weight that is 12 to 20 kg/mol. Yamashita teaches (Paragraphs [0093-0131]) wherein the end groups comprise methacrylate groups. Yamashita teaches (Paragraphs [0133-0134]) wherein the photo-curable composition further comprises a solvent. Yamashita teaches (Paragraphs [0203-0204]) wherein the solvent is a fluorinated solvent. Yamashita teaches (Paragraphs [0176 and 0182]) wherein the photoinitiator is selected from bis(2,4,6-trimethylbenzoyl)-phenylphosphineoxide and α-hydroxycyclohexyl phenyl ketone.
7. However, Yamashita fails to explicitly teach the photo-curable composition can be cured to form a fluorinated elastomer that exhibits a maximum tensile strain of at least 10%. Furthermore, Yamashita fails to explicitly teach the fluorinated elastomer exhibits a maximum tensile strain of at least 200%.
8. DeSimone 1 teaches (Paragraphs [0233-0234]) a photo-curable composition of a fluorinated monomer, perfluoropolyether (PFPE), comprising cross-linkable end groups and a photoinitiator, 2,2-dimethoxy-2-phenylacetophenone (DMPA). DeSimone 1 teaches (Paragraphs [0237-0238 and 0245]) the photo-curable composition can be cured to form a fluorinated elastomer that exhibits a maximum tensile strain of at least 10%. DeSimone 1 teaches (Paragraph [0134 and 0252]) that said tensile strain of a cured fluorinated elastomer allow for sufficient tensile strength while maintaining sufficient flexibility.
10. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yamashita to incorporate the teachings of DeSimone 1 wherein the photo-curable composition can be cured to form a fluorinated elastomer that exhibits a maximum tensile strain of at least 10%. Doing so would have resulted in sufficient tensile strength while maintaining sufficient flexibility, as recognized by DeSimone 1.
11. Given that the prior art teaches a composition within the scope of the claims of the present application and DeSimone 1 teaches the utility in modifying tensile strain of the composition, Yamashita in view of DeSimone 1 teach the fluorinated elastomer exhibiting a maximum tensile strain of at least 200%. MPEP § 2112.01(II) states: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
12. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yamashita et al. (United States Patent Publication No. US 2015/0064909 A1), hereinafter Yamashita; in view of DeSimone et al. (United States Patent Publication No. US 2013/0011618 A1), hereinafter DeSimone 1; in further view of DeSimone et al. (United States Patent Publication No. US 2009/0304992 A1), hereinafter DeSimone 2.
13. Regarding Claim 4, Yamashita in view of DeSimone 1 teach all limitations of Claim 2. However, Yamashita in view of DeSimone 1 fail to explicitly teach wherein the fluorinated elastomer exhibits a Young's modulus less than or equal to 200 kPa.
14. DeSimone 2 teaches (Paragraph [0022]) the fluorinated elastomer exhibits a Young's modulus less than or equal to 200 kPa. DeSimone 2 teaches (Paragraphs [0022]) said Young's modulus results in the fluorinated elastomer maintaining sufficient flexibility.
15. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yamashita in view of DeSimone 1 to incorporate the teachings of DeSimone 2 wherein the fluorinated elastomer exhibits a Young's modulus less than or equal to 200 kPa. Doing so would have resulted in sufficient flexibility, as recognized by DeSimone 2.
16. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yamashita et al. (United States Patent Publication No. US 2015/0064909 A1), hereinafter Yamashita; in view of DeSimone et al. (United States Patent Publication No. US 2013/0011618 A1), hereinafter DeSimone 1; in further view of Abe et al. (World Intellectual Property Organization (WIPO) Publication No. WO 2015/002204 A1), hereinafter Abe.
17. Regarding Claim 10, Yamashita in view of DeSimone 1 teach all limitations of Claim 2. However, Yamashita in view of DeSimone 1 fail to explicitly teach wherein the fluorinated solvent is selected from 1,3-bis(trifluoromethyl)benzene, 1,1,1,3,3-pentafluorobutane, and perfluorotributylamine.
18. Abe teaches (Paragraph [0022]) the fluorinated solvent is perfluorotributylamine, as well as hydrofluoroether. Yamashita teaches (Paragraph [0204]) the fluorinated solvent is hydrofluoroether.
19. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yamashita in view of DeSimone 1 to incorporate the teachings of Abe wherein the fluorinated solvent is perfluorotributylamine. Doing so would be simple substitution of the fluorinated solvent, taught by both Yamashita and Abe, with the fluorinated solvent perfluorotributylamine, taught by Abe. Both fluorinated solvents were known in the art and a person having ordinary skill in the art could have substituted one known element, fluorinated solvent hydrofluoroether, with another, fluorinated solvent perfluorotributylamine, and the results of the substitution would have been predictable.
Conclusion
20. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
21. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH D HENDRICKS can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/R.D.C./Examiner, Art Unit 1737
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