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 .
Claim Objections
Claims 11-13 and 15 are objected to because of the following informalities:
Claim 11 recites “a ester-based plasticizer” for the purpose of further examination it is interpreted as “an ester-based plasticizer”.
Claims 12, 13, and 15 are objected to based on their dependence on claim 11.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 11-13, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kue (KR20090038514, see machine translation for citations), in the further view of Okubo (JP2018193660, see machine translation for citations).
Regarding Claims 11-13: Kue teaches a polymer resin composition comprising an ester-based plasticizer composition comprising a 1,4 cyclohexanedicarboxylate and a polyvinyl chloride resin (page 1, lines 16-24) wherein the plasticizer composition is present in an amount of 5 to 250 parts by weight per 100 parts by weight of the polymer resin (page 9, line 566) overlapping the claimed range. However, Kue is silent on the polymer resin comprising the ester-based plasticizer of [Chemical Formula 1].
Okubo teaches a cyclohexanedicarboxylic acid ester, component B1, following general formula 2 (para 24), see below for structure (Page 3 of the foreign reference), wherein R2 and R3 are independently alkyl groups having 8-22 carbons (para 28) including 2-ethylhexyl (para 21) and R4 is represented by a residue obtained by removing two hydroxyl groups from a polyoxyalkylene glycol with 2 to 4 carbons or a divalent hydrocarbon group having 2 to 10 carbon atoms(para 29), overlapping the claimed range of carbon atoms.
PNG
media_image1.png
200
400
media_image1.png
Greyscale
Kue and Okubo are analogous art as they are both directed towards the same field of endeavor namely ester-based compounds with good heat resistance and compatibility with polymers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the cyclohexanedicarboxylic acid ester of the polymer resin composition of Kue with the cyclohexanedicarboxylic acid ester of Okubo. Okubo discloses that the cyclohexanedicarboxylic acid ester represented by general formula 2 can sufficiently prevent the fibers in the precursor fiber bundle from fusing to each other (para 27). One or ordinary skill in the art would be motivated to make the substitution as cyclohexanedicarboxylic acid ester of Okubo when used as a plasticizer in the polymer resin composition of Kue would further lead to the optimization of the composites processability.
The references do not expressly teach a polymer resin composition with a ratio of heating loss of 0.01 to 1.4%. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, when the ester-based plasticizer according to the present invention is used as the plasticizer of a heat- resistant resin composition, a synergistic effect to improve physical properties such as migration resistance and heating loss is provided (Lines 188-192). Therefore, the claimed effects and physical properties, i.e. a ratio of heating loss of 0.01 to 1.4%, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Regarding Claim 13: Modified Kue teaches all of the limitation of claim 11, as seen above. Kue further teaches the polymer resin composition comprising filler (page 10, line 574)
Regarding Claim 15: Modified Kue teaches all of the limitation of claim 11, as seen above. Kue further teaches a polymer resin molded article (page 1, line 20).
Response to Arguments
Applicant's arguments filed June 9, 2026 have been fully considered but they are not persuasive.
Applicants argues that Okubo is directed towards preventing fiber fusion within carbon fiber precursor bundles which differs form the technical field and objective of the claimed invention, improving heat loss and migration resistance in PVC resins. Applicant argues that there would be no motivation for one of ordinary skill in the art to combine a reference directed towards carbon fiber manufacturing in the context of developing a PVC plasticizer. While Okubo does not address the problem of heat loss and migration resistance in PVC resins prior are is considered analogous are if it is reasonably pertinent or in the same field of endeavor (MPEP 2141.01(a)). Applicant cites the objective of the claimed invention as “improving heat loss and migration resistance in the PVC resins” however this is on one of the technical problems that is address by the instant application. The instant application discloses “an object of the present invention is to provide an ester-based compound with both heat resistance and compatibility being improved and a use thereof.” (US20230054496 para 7). Okubo teaches that an oil treatment liquid comprising of the cyclohexanedicarboxylic acid ester reading on chemical formula 1 of Claim 1 is used in the treatment of polyacrylonitrile fibers (para 98). Okubo further discloses that the cyclohexanedicarboxylic acid ester is able to remain stably on the surface of the precursor fiber bundle without being dispersed during a flame-retardant treatment step (para 24) and that component B1 has sufficient thermal stability to prevent the fusion of polyacrylonitrile fibers during the a flame-retardant treatment step (para 40) at 200°C to 400°C (para 2). The teaching of Okubo show an ester-based compound that has good thermal stability and compatibility with a polymer. Okubo has the same field of endeavor in ester-based compounds with heat resistance and compatibility with polymers. Since Okubo is an analogous art its is suitable to be used in an obviousness rejection.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J BELUNIS whose telephone number is (571)270-3186. The examiner can normally be reached Monday-Friday 8am-4pm.
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, Mark Eashoo can be reached at (571) 272-1197. 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.
/T.J.B./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767 /MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
