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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/5/2025 has been entered. Claims 1, 12, 17-18 are amended; claims 21, 23-24 are withdrawn from consideration as being drawn to non-elected invention; and claims 22 and 25 are cancelled/. Accordingly, claims 1-21 and 23-24 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
.
Claim 12 is objected to because of the following informalities: Claim 12 recites “the phosphite comprises one or more trialkyl phosphites”. For consistency and clarity within the claims, Applicant is advised to rephrase it as “the alkyl phosphite comprises one or more trialkyl phosphites”.
Appropriate correction and/or clarification are required.
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nakagawa et al (US 2018/0244898 A1) in view of Hill et al (US 2018/0265673 A1) and Narayan et al (GB 2 184 733 A).
Regarding claims 1, 4-6, and 10, Nakagawa et al disclose a stabilizing composition comprising a phenolic antioxidant and one or more phosphite antioxidants (abstract). See example 1, wherein the stabilizing composition comprises ANOX® 1315 and Weston® 705 (Table 2 and paragraph 0071) which reads on phosphite in present claim 1. ANOX® 1315 is C13-C15 linear and branched alkyl esters of 3-(3’,5’-di-t-butyl-4’-hydroxyphenyl)propionic acid (Table 1 and paragraph 0065). It is noted that ANOX® 1315 has a melting point of -560C and a molecular weight of about 485 g/mol (i.e., reads on first derivatized phenolic antioxidant having a molecular weight of at least about 400 g/mol and melting point of less than about 1000C in present claim 1; antioxidant of formula I in present claim 4 wherein n = 1, R2 and R3 = branched alkyl group having 4 carbon atoms, and R1 is a C13 to C15 alkyl group; R2 and R3 = t-butyl groups in present claim 5; and species 3,5-bis(1,1-dimethylethyl)-4-hydroxy-benzene propanoic acid, C13-C15 ester in present claim 6).
Nakagawa et al are silent with respect to a second derivatized phenolic antioxidant having a lower steric hinderance than the first derivatized phenolic antioxidant, which is a solid at ambient conditions; silent with respect to thioester and/or differs with respect to the species of phosphite.
However, regarding second derivatized phenolic antioxidant having a lower steric hinderance than the first derivatized phenolic antioxidant, which is a solid at ambient conditions, Hill et al teach a stabilizing composition comprising (a) first phenolic antioxidant comprising one or more phenolic compounds having the structure of formula
PNG
media_image1.png
152
194
media_image1.png
Greyscale
wherein R1 is a linear or branched alkyl group having 12 to 20 carbon atoms and (b) one or more second phenolic antioxidant independently selected from a mono-hydroxybenzene having lower steric hinderance than the first phenolic antioxidant, and a di-hydroxybenzene (abstract) which reads on second antioxidant in present claims 1 and 10. Examples of di-hydroxybenzene include catechol and hydroquinone (paragraph 0062) which read on the second derivatized phenolic antioxidant having lower steric hinderance than the first derivatized phenolic antioxidant in present claim 1. It is noted that catechol and hydroquinone have a melting point of 1050C and 1720C, respectively (i.e., reads on second derivatized phenolic antioxidant is a solid under ambient conditions in present claim 1). The presence of one or more second phenolic antioxidants increases the activity of the stabilizing composition with regards to scorch protection. They have a high activity with regards to scorch protection than the first phenolic antioxidant. Thus, when one or more second phenolic antioxidants are added to the first phenolic antioxidant, the activity of the stabilizing composition with regards to scorch protection is increased (paragraph 0043). Therefore, in light of the teachings in Hill et al, it would have been obvious to one skilled in art prior to the filing of present application, to include the second phenolic antioxidant, of Hill et al, to the stabilizing composition, of Nakagawa et al, for above mentioned advantages.
Regarding thioester and/or species of phosphite, Narayan et al teach a stabilizer package for the preparation of thermoplastic polyurethanes having improved high temperature color stability (title). Discoloration is eliminated by the addition of a small amounts of stabilizer package characterized as 2,4-di(t-butyl)-p-cresol and a compound selected from triisodecyl phosphite (i.e., reads on the alkyl phosphite in present claim 1), distearyl thiodipropionate (i.e., reads on the thioester in present claim 1) and blends thereof (abstract). It is noted that 2,4-di(t-butyl)-p-cresol is a phenolic compound having a melting point of 56.80C and molecular weight of 206.32 g/mol. Therefore, in light of the teachings in Narayan et al, it would have been obvious to one skilled in art prior to the filing of present application to include the stabilizer package, of Narayan et al, comprising triisodecyl phosphite and/or distearyl thiodipropionate, in the composition, of Nakagawa et al in view of Hill, for above mentioned advantages.
Regarding claim 2, see example 1, of Nakagawa et al, wherein the composition does not include any diphenylamine and/or alkylated diphenylamine.
Regarding claim 3, see example 1, of Nakagawa et al, wherein the first stabilizing phenolic antioxidant is Anox® 1315. Given that Anox® 1315 is the same as one used in examples of present application (Tables 2 and 6, paragraphs 0122 and 133) and exhibits low VOC and FOG, it is the Office’s position that first derivatized phenolic antioxidant Anox® 1315 necessarily has the presently claimed VOC of less than about 10 ppm and FOG of less than about 100 ppm. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 7, see example 1, of Nakagawa et al, wherein the stabilizing composition includes 50% by weight of the first phenolic antioxidant (i.e., reads on the amount of first derivatized phenolic antioxidant in present claim 7).
Regarding claims 8 and 9, examples of second phenolic antioxidant, in Hill et al, include hydroquinone and catechol (paragraph 0062). It is noted that catechol and hydroquinone both have a molecular weight of about 110 g/mol (i.e., reads on second derivatized phenolic antioxidant has a lower molecular weight than the first derivatized phenolic antioxidant ANOX® 1315 having a molecular weight of 485 g/mole in present claim 8, and molecular weight lower than about 400 g/mol in present claim 9).
Regarding claim 11 and 13, Hill et al teach that second phenolic antioxidant is present in amounts of about 1 to about 50 wt% (paragraph 0066).
Regarding claim 12, examples of phosphites, in Narayan et al, include triisodecyl phosphite (abstract).
Regarding claim 14, it is noted that triisodecyl phosphite is a liquid and necessarily has a melting point lower than room temperature. Given that the first phenolic antioxidant and phosphite have a low melting point of -560C and less than room temperature, respectively, and second phenolic antioxidant is a solid and has a melting point close to 1000C, it is the Office’s position that one skilled in art prior to the filing of present application would have a reasonable basis to expect the composition, of Nakagawa et al in view of Hill et al and Narayan et al, to have the presently claimed melting point of lower than 1000C, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claims 15-16 and 19-20, given that composition, of Nakagawa et al in view of Hill et al and Narayan et al, include Anox® 1315 as a first phenolic derivatized antioxidant which has a molecular weight of at least 400 g/mol, triisodecyl phosphite (i.e., a phosphite), and second derivatized phenolic antioxidant such as hydroquinone and catechol as in present invention, it is the Office’s position that one skilled in art would have a reasonable basis to expect the stabilizing composition, of Nakagawa et al in view of Hill et al and Narayan et al, to have the presently claimed properties (i.e., VOC of less than about 20 ppm; FOG of less than about 200 ppm; when incorporated into a polyurethane foam causes the foam to undergo, on the application of a microwave scorch test, a color change ΔE less than that of an equivalent foam into which an equivalent amount of industry-available stabilizing composition has been incorporated; and a contribution to VOC and/or FOG as measured according to standard test method VDA 278, is less than the contribution exhibited by an equivalent amount of industry-available stabilizing composition), absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claims 17 and 18, see paragraphs 9a to 9d and 9f above.
Response to Arguments
The rejections under 35 U.S.C. 103 as set forth in paragraph 9, of Office action mailed 8/21/2025, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, 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.
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.
/KARUNA P REDDY/Primary Examiner, Art Unit 1764