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 .
Double Patenting (Statutory)
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-4 & 9 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 15-19, respectively, of prior U.S. Patent No. 12,340,829. This is a statutory double patenting rejection.
Double Patenting (Non-Statutory)
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 & 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 & 6-9 (hereafter patent claims) of U.S. Patent No. 12,340,829.
Although the conflicting claims are not identical, they are not patentably distinct from each other for the following reasons:
Patent claim 1, for example, includes all the limitations of instant claim 1. However, while patent claim 1 specifically recites a divalent center segment and a side-chain segment including a perfluoroalkyl ether moiety, instant claim 1 more generically recites a divalent center segment and a side-chain segment including fluorine and oxygen. Note that by definition, a perfluoroalkyl ether moiety is a functional group where carbon chains are fully fluorinated and separated by an oxygen atom. Therefore, instant claim 1, which recites fluorine and oxygen for the center and side-chain segments, is generic to the species of invention covered by patent claim 1, which recites a perfluoroalkyl ether moiety for the center and side-chain segments.
As such, instant claim 1 is anticipated by patent claim 1 and is therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, “a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim”, In re Goodman, 29 USPQ2d 2010, “Thus, the generic invention is ‘anticipated’ by the species of the patented invention” and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
For the same reasons noted above, the instant claims are deemed generic and not patentably distinct to their corresponding patent claims, as indicated in the following mapping of claims:
Claim 1 maps to patent claim 1.
Claim 2 maps to patent claim 2.
Claim 3 maps to patent claim 3.
Claim 4 maps to patent claim 4.
Claim 9 maps to patent claim 6.
Claim 10 maps to patent claim 7.
Claim 11 maps to patent claim 8.
Claim 12 maps to patent claim 9.
It is noted that while claims 7 & 8 appear to be similar to patent claim 5, claims 7 & 8 are actually narrower (more specific) than patent claim 5, since patent claim 5 recites the corresponding limitations in the alternative, making patent claim 5 broader than instant claims 7 & 8. Therefore, claims 7 & 8 are not included in this rejection.
Claims 1-5, 9-13 & 15-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5 & 7-13 (hereafter patent claims) of U.S. Patent No. 11,898,116.
Although the conflicting claims are not identical, they are not patentably distinct from each other for the following reasons:
Patent claim 1, for example, includes all the limitations of instant claim 1. Patent claim 1 also includes additional limitations (i.e., the limitations in patent claim 1 that are not recited in instant claim 1). Furthermore, while patent claim 1 specifically recites a divalent center segment and a side-chain segment including a perfluoroalkyl ether moiety, instant claim 1 more generically recites a divalent center segment and a side-chain segment including fluorine and oxygen. Note that by definition, a perfluoroalkyl ether moiety is a functional group where carbon chains are fully fluorinated and separated by an oxygen atom. Therefore, instant claim 1, which recites fluorine and oxygen for the center and side-chain segments, is generic to the species of invention covered by patent claim 1, which recites a perfluoroalkyl ether moiety for the center and side-chain segments. As such, instant claim 1 is anticipated by patent claim 1 and is therefore not patentably distinct therefrom.
For the same reasons noted above, the instant claims are deemed generic and not patentably distinct to their corresponding patent claims, as indicated in the following mapping of claims:
Claim 1 maps to patent claim 1.
Claim 2 maps to patent claim 2.
Claim 3 maps to patent claim 3.
Claim 4 maps to patent claim 5.
Claim 5 maps to patent claim 13.
Claim 9 maps to patent claim 7.
Claim 10 maps to patent claim 8.
Claim 11 maps to patent claim 9.
Claim 12 maps to patent claim 10.
Claim 13 maps to patent claim 11.
Claim 15 maps to patent claim 12.
Claim 16 maps to patent claim 9.
Claim 17 maps to patent claim 7.
Claim 18 maps to patent claim 5.
Claim 19 maps to patent claim 13.
It is noted that while claims 7 & 8 appear to be similar to patent claim 6, claims 7 & 8 are actually narrower (more specific) than patent claim 6, since patent claim 6 recites the corresponding limitations in the alternative, making patent claim 6 broader than instant claims 7 & 8. Therefore, claims 7 & 8 are not included in this rejection.
Claims 1, 4, 5 & 7-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 & 7-14 (hereafter patent claims) of U.S. Patent No. 11,414,617.
Although the conflicting claims are not identical, they are not patentably distinct from each other for the following reasons:
Patent claim 1, for example, includes all the limitations of instant claim 1. Patent claim 1 also includes additional limitations (i.e., the limitations in patent claim 1 that are not recited in instant claim 1). Furthermore, while patent claim 1 specifically recites a divalent center segment and a side-chain segment including a perfluoroalkyl ether moiety, instant claim 1 more generically recites a divalent center segment and a side-chain segment including fluorine and oxygen. Note that by definition, a perfluoroalkyl ether moiety is a functional group where carbon chains are fully fluorinated and separated by an oxygen atom. Therefore, instant claim 1, which recites fluorine and oxygen for the center and side-chain segments, is generic to the species of invention covered by patent claim 1, which recites a perfluoroalkyl ether moiety for the center and side-chain segments. As such, instant claim 1 is anticipated by patent claim 1 and is therefore not patentably distinct therefrom.
For the same reasons noted above, the instant claims are deemed generic and not patentably distinct to their corresponding patent claims, as indicated in the following mapping of claims:
Claim 1 maps to patent claim 1.
Claim 4 maps to patent claim 1.
Claim 5 maps to patent claim 14.
Claim 7 maps to patent claim 2.
Claim 8 maps to patent claim 3.
Claim 9 maps to patent claim 4.
Claim 10 maps to patent claim 7.
Claim 11 maps to patent claims 9 & 10.
Claim 12 maps to patent claim 11.
Claim 13 maps to patent claim 12.
Claim 14 maps to patent claim 2.
Claim 15 maps to patent claim 13.
Claim 16 maps to patent claims 9 & 10.
Claim 17 maps to patent claim 8.
Claim 18 maps to patent claim 1.
Claim 19 maps to patent claim 14.
Allowable Subject Matter
Claims 1-5 & 7-19 would otherwise be allowed over the prior art of record if the double patenting rejections are overcome. It should be noted that the filing of a Terminal Disclaimer could only overcome the rejections based on nonstatutory double patenting. Any rejection based on statutory double patenting cannot be overcome with a Terminal Disclaimer, but can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope.
Claims 6 & 20 are 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 following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record, Deng et al. (US 2015/0235664) discloses: in regard to claim 1, a lubricant comprising a plurality of segments, each linked together by ether linkages according to a general formula: Re1-Rb1-Ri-Rc-Ri-Rb2-Re2 (see abstract).
However, Deng et al. does not disclose:
in regard to claim 1, wherein Rc is a divalent center segment including fluorine and oxygen; wherein each of Rb1 and Rb2 is, independently, a sidechain segment including fluorine and oxygen; wherein each Ri is, independently, a divalent linking segment including a functional group including elements from Group 13-17 of the periodic table of the elements; wherein each of Re1 and Re2 is, independently, a monovalent end segment including a functional group including elements from Group 13-17 of the periodic table of the elements; and wherein Rb1 ≠ Rc ≠ Rb2.
Conclusion
The prior art made of record and not relied upon (see attached PTO-892 form) is considered pertinent to applicant's disclosure.
Liu et al. (US 2006/0229217) discloses a thin film lubricant for a storage medium wherein the percentage of the bonded lubricant thickness in the total lubricant thickness is called lubricant bonding ratio, and the lube bonding ratio for a conventional lubricant is about 30% without exposure to UV light and about 52% with exposure to UV light.
Matsuyama (US 2005/0031907) discloses a magnetic recording medium having a thin lubricating layer suitable for higher recording density and is successively laminated with at least a magnetic film, protective film, and the lubricating layer on a non-magnetic substrate.
Ma et al. (US 2003/0185986) discloses a method for making a zone-bonded lubricant layer including a protective overcoat made by depositing a diamond like carbon (DLC) layer over a magnetic layer and then depleting a portion of the DLC protective layer of hydrogen before it is coated with a Perfluoropolyethers (PFPE) using an in-situ vapor lubrication technique.
Guo et al. (US 2013/0161181) discloses a polishing process wherein a lubricant (hydroxyl functionalized perfluoropolyether) is 91.5 percent bonded on a short time delay disk (minimal oxidation), and only 79.3 percent remained after the polishing process.
Shukla et al. (US 2002/0119316) discloses a protective overcoat layer having enhanced corrosion resistance properties provided for use on magnetic recording discs, wherein the protective overcoat layer includes a doped or non-doped carbon-containing layer, and a lubricant layer on top of the carbon-containing layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter Vincent Agustin whose telephone number is (571) 272-7567. The examiner can normally be reached on Monday - Thursday 8:30 am - 6:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached on 571-270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Peter Vincent Agustin/
Primary Examiner, Art Unit 2688
Prosecution Insights