DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant's election with traverse of the various species as set forth in the reply filed on 12/22/25 is acknowledged. The claims that read on the all the species at the same time are claims 1-20 and 24-34 and thus they will be examined. Only claims 21-23 are being withdrawn as drawn to non-elected species. The traversal is on the ground(s) that there would not be an undue burden on the examiner to search and examine all species together. This is not found persuasive for the reasons set forth in the written restriction requirement mailed 10/21/25, and because the examiner closer proximity to both searching and examining the claims, is deemed to lead to a better approximation of the burden involved.
The requirement is still deemed proper and is therefore made FINAL.
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 1-20 and 24-34 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.
In independent claim 1, the limitation: “(iii) a basic co-additive selected from alkali metal or alkaline metal salts of higher fatty acid” [Emphasis added], is confusing in regards to the sub-limitation of: “or alkaline metal” because the metes and bounds of what is meant by “or alkaline metal” is unclear. Is it Applicant’s attention to actually claim --alkaline earth metal-- salts?
The co-additive species zinc stearate is NOT a alkali metal or alkaline “earth” metal salt of a higher fatty acid as required by independent claim 1. It should be noted that according to Applicant’s specification, such as the examples, zinc stearate seems to be Applicant’s most preferred higher acid metal salt used in the stabilizer composition. As such, Applicant might want to amend independent claim 1 so that component: “iii) a basic co-additive” also encompasses zinc stearate instead of deleting zinc stearate from dependent claims 30 co-additive Markush Group.
All other claims are rejected here because they are either directly or indirectly dependent on a rejected base claim.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
EXAMINATION NOTES
Applicant’s independent claim 1 is a Product-By-Process type claim. It is well established that the patentability of product-by-process claims is found in the product itself and not in how it is made. Also note that Applicant’s “at least one chroman-based compound according to Formula (V)” as set forth in independent claim 1, is/are tocopherols/tocotrienols types compounds that encompass Vitamin E acetate, see dependent claim 12. Finally, the below applied secondary reference to Mayama et al. JP 58-96638 A (published 06/08/83), is listed on Applicant’s I.D.S. filed 03/17/22 in the Present Application. Furthermore, the English language translation of Mayama et al. JP 58-96638 A (published 06/08/83), was set forth in Parent Application S.N. 13/323,173 now U.S. Patent Number 11,312,043.
Claims 1-20 and 24-34 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Rotzinger et al. U.S. Patent Application Publication No.: 2006/0167146 A1 in view of Mayama et al. JP 58-96638 A (published 06/08/83).
Rotzinger et al. discloses stabilization of organic polymers (e.g. polyethylene) using a combination of novel stabilizer mixtures comprising i) a processing stabilizer selected from the group consisting of hydroxylamine stabilizers, nitrone stabilizers, benzofuran-2-one stabilizers and/or a compound of the formula I, and ii) an antistatic agent selected from the group consisting of an ethoxylated amine and/or an ethoxylated amide, as stabilizers for protecting organic materials, in particular synthetic polymers, against oxidative, thermal or light induced degradation.
Rotzinger et al.’s Example 4 teaches a process of rotomolding polyethylene to make a hallow article. The stabilizer mixture used in Example 4 contained six (6) components: 1) 100 ppm of EOA-1 a chroman-based compound according to Formula (I), 2) 150 ppm PS-1 (i.e. Irganox E201) which is a phosphite stabilizer, 3) 1000 ppm P-1 (Irgafos 168) which is a phosphite stabilizer, 4) 500 ppm AS-1 (zinc stearate) which is a metal salt of a fatty acid, 5) 150 ppm AO-4 (Irganox 3114) which is a sterically hindered phenolic antioxidant and 6) 2000ppm HALS-3 (Tinuvin 783) which is a hindered amine light stabilizer mixture of Tinuvin 622 and Chimassorb 994.
Rotzinger et al.’s said Example 4, and the rest of the disclosure, differ from Applicant’s invention only in that Applicant’s “at least one chroman-based compound according to Formula (V)”, as set forth in independent claim 1, does not fall within Rotzinger et al.’s chroman-based compound according to their Formula (I). Nevertheless, Applicant’s “at least one chroman-based compound according to Formula (V)”, and Rotzinger et al.’s chroman-based compound according to their Formula (I) are almost identical in structure with the only difference being that Rotzinger et al.’s chroman-based compound according to their Formula (I) has one hydroxyl group bonded to the benzo ring, whereas Applicant’s “at least one chroman-based compound according to Formula (V)” has, in lieu of a hydroxyl group, has at least one OR27 group bonded to the benzo ring; wherein R₂₇ is chosen from C₁-C₁₂ hydrocarbyl, COR" or Si(R₂₈)₃, wherein R" is chosen from H or C₁-C₂₀ hydrocarbyl and R₂₈ is chosen from C1-C₁₂ hydrocarbyl or alkoxy. As way of illustration only, Rotzinger et al.’s chroman-based compound according to their Formula (I) encompasses Vitamin E, available as Irganox E210, see paragraph [0050]; whereas Applicant’s “at least one chroman-based compound according to Formula (V)” encompasses Vitamin E acetate, see dependent claim 12.
The secondary reference to Mayama et al. JP 58-96638 A discloses that polymers (e.g. polyethylene) have improved heat-stability when combined with a vitamin E carboxylic acid ester (e.g. vitamin E acetate), see abstract, Examples 1-3 and claims.
Mayama et al. discovered that in contrast with the well-known tocopherol stabilizers (such as those disclosed in Rotzinger et al.’s chroman-based compound according to their Formula (I)), a carboxylic acid ester derivative of vitamin E, namely α-tocopherol acetate, provides notable improvements by which thermal deterioration of a polyolefin composition subjected to molding is largely suppressed, and by which a negative odor and discoloration that might otherwise result from molding such a composition may be reduced, see pages 3-4 and Examples 1-3 of the English Language translation wherein α-tocopherol acetate is disclosed as most preferred.
Thus one having ordinary skill in the art would have ample motivation to use the various teachings by Mayama et al. to actually select Mayama et al.’s above-cited vitamin E carboxylic acid ester (e.g. vitamin E acetate) over Rotzinger et al.’s chroman-based compounds according to their Formula (I) (e.g. vitamin E), due to their superior impact on suppressing thermal deterioration and on their ability to reduced odor and discoloration, as disclosed by Mayama et al., when admixed with polyolefins (e.g. polyethylene), such as during molding operations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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