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
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 10/20/2025.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 10/20/2025. In particular, claims 17-20 are new. Thus, the following action is properly made final.
Claim Objections
Claim 17 is objected to because the terms “at least one diluent” and “at least one further additive” has antecedent basis and should have “the” inserted at the start of both of these terms.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 17 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 17, in line 2 of the claim, “consist of” is used to limit the stabilizer composition but the second-to-last line of the claim uses “does not comprise.” These two transitional phrases are inconsistent with one another and suggests that the stabilizer composition is both open and closed.
Claim Rejections - 35 USC § 103
Claims 1, 4, 5, 9, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Koch (US 6,787,591).
With respect to claim 1, 5, 9, and 18-20, Koch discloses a synergistic stabilizer composition comprising hindered amine stabilizers (claim component B), phenolic antioxidant (claimed component C), and UV absorbers (claimed component A) (abstract). The phenolic antioxidant includes bis-[3,3-bis-(4'-hydroxy-3'-tertbutylphenyl)-butanoic acid]-glycolester (AO1) (reads on claimed formula (III)b when Rx is tert-butyl, Ry is hydrogen, Rz is methyl, X is -O-(CH2)q-O, p = 1, q = 2) (col. 20, lines 7-8) and is exemplified in Table 1B in col. 19. The UV absorber includes an oxanilide (col. 20, line 35) such as 2-ethoxy-2’-ethyloxanilide (col. 15, line 35) which reads on formula (I) when one of Ra and Rb groups on one ring is a methoxy group and when one of Ra and Rb groups on the other ring is a methyl. Koch teaches that the ratio of hindered amine (claimed component B), phenolic antioxidant (claimed component C), and UV absorber (claimed component A) is 5:1:1 to 1:5:5 (col. 20, lines 36-37). These ratios provide for 14-45 wt % UV absorber (claimed component A), 14-45 wt % of hindered amine (claimed component B), and 14-70 wt % phenolic antioxidant (claimed component C), which substantially overlaps with the claimed ranges 30-50 wt %, 25-50 wt %, and 5-40 wt %, respectively. While Koch discloses that tetrakismethylene(3,5-di-tert.butyl-4-hydroxyphenyl)-hydrocinnamate (i.e., pentaerythritol tetrakis(3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate) as “AO 2,” it does not require adding pentaerythritol tetrakis(3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate. Therefore, it would have been obvious to one of ordinary skill in the art to utilize one of the other stabilizers such as AO 1 or AO 3-8 (col. 2, lines 38-56)
Koch fails to disclose with sufficient specificity so as to anticipate the combination of an oxanilide of formula (I), hindered amine light stabilizer, and phenolic antioxidant having formula (III)b.
Even so, given that Koch teaches the use of each one, especially the specific phenolic agent of formula (III)b, it would have been obvious to one of ordinary skill in the art to prepare a composition comprising the oxanilide UV absorber of formula (I), a hindered amine light stabilizer, and a phenolic antioxidant of formula (III)b.
With respect to claim 4, the examples include a stabilizer composition consisting of 0.1 parts by weight (pbw) calcium stearate, 0.1 pbw phosphite antioxidant, 0.1 phenolic antioxidant (either “AO 1” and/or “AO 2”), and 0.2 or 0.3 pbw of light stabilizers (col. 18, lines 34-40). The calcium stearate reads on diluent used in an amount of 20 and 17 wt %, respectively, for 0.2 and 0.3 pbw light stabilizers.
With respect to claim 17, Koch does not require two antioxidants or any other additional ingredient excluded from closed transitional language “consists of.”
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Koch (US 6,787,591) in view of Stährfeldt (US 6,174,940).
The discussion with respect to Koch in paragraph 7 above is incorporated here by reference.
Koch teaches that the hindered amine stabilizer includes a polymer of epichlorohydrin and 2,2,4,4-tetramethyl-7-oxa-3, 20-diaza-20-(2,3-epoxipropyl)-dispiro-[5.1.11.2]-heneicosane-21-one (col. 19, lines 64-67)) but fails to disclose the combination of hindered amine stabilizers of formulae (II)a, (II)b, and (III)c.
Stährfeldt discloses synergistic stabilizer mixture based on polyalkyl-1-oxa-diazaspirodecane compounds which are epoxy oligomers like taught by Koch, wherein the mixture comprises 65-95 wt % Compound I, 5-35 wt %Compound II, and 0-10 wt % Compound III:
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166
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(Compound I, reads on claimed formula (II)a),
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144
454
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(Compound II, reads on claimed formula (II)b), and
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(Compound III, reads on claimed formula (II)c) where R1, R2, R3, R4, R5, and m are like those claimed (col. 2, line 10 to col. 3, line 8).
Given that both Koch and Stährfeldt disclose a similar class of hindered amine stabilizers and further given that Stährfeldt teaches that the claimed combination of hindered amine stabilizers provides for synergistic effects, it would have been obvious to one of ordinary skill in the art to utilize the advantageous and synergistic hindered amine stabilizer of Stährfeldt in the stabilizer composition of Koch.
Response to Arguments
Applicant's arguments filed 10/20/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that Koch discloses and exemplifies adding tetrakismethylene(3,5-di-tert.butyl-4-hydroxyphenyl)-hydrocinnamate (i.e., pentaerythritol tetrakis(3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate) as “AO 2.”
While Koch discloses that tetrakismethylene(3,5-di-tert.butyl-4-hydroxyphenyl)-hydrocinnamate (i.e., pentaerythritol tetrakis(3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate) as “AO 2,” it does not require adding pentaerythritol tetrakis(3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate. Therefore, it would have been obvious to one of ordinary skill in the art to utilize one of the other stabilizers such as AO 1 or AO 3-8 (col. 2, lines 38-56). Regading the examples, Koch discloses both “AO 2” in Tables 1A and Table 1C but does not in Table 1B and therefore not required. Even if the examples had only included “AO 2,” case law holds “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant also agues that one of ordinary skill in the art would have been dissuaded from selecting claimed oxalanilide UV absorber because Koch exemplifies UV absorbers other than claimed oxalanilide UV absorber.
While the exemplified UV absorbers taught by Koch are preferred because they are exemplified, it also clearly teaches using other UV absorber such as claimed oxalanilide UV absorber. Case law holds “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Selecting another UV absorber taught by Koch would have been obvious to one of ordinary skill in the art.
Applicant lastly argues that the claimed invention provides for unexpected results as shown by the data of the specification as originally filed an in the declaration filed on 6/9/2025. The data has been fully considered, however, it is insufficient to establish unexpected results because the data is not reasonably commensurate in scope with the scope of the claims. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983). Specifically, the inventive data only includes 2-ethyl-2′-ethoxy-oxalanilide as UV absorber A and bis-(3,3-bis-(4′-hydroxy-3′-tert. butylphenyl)butanic acid)-glycolester as antioxidant C which are not representative of the claimed UV absorber or phenolic antioxidant C, respectively. Therefore, it has not been shown not compounds other than applicant’s A1 and C1 would also provide the observed improvements in heat stability, though significant differences are seen before inventive and comparative examples. It is suggested a numerical heat stability property be added to the independent claim to distinguish over Koch.
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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