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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/19/2026, has been entered.
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.
Claim 11, 12, 13, 15 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.
Claim 11 recites the phrase “A vinyl chloride-based resin composition comprising the ester-based plasticizer”, there is insufficient antecedent basis for this limitation in the claim. As such, the scope of the claim is indefinite.
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.
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 11-13, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kue (KR20090038514, herein Kue, a machine translation is being used for citation purposes), in the further view of Okubo (JP2018193660, herein Okubo, a machine translation is being used for citation purposes).
Regarding Claims 11, 12, Kue teaches 1,4-cyclohexanedicarboxylate used as a plasticizer when processing various polymer resins, particularly, polyvinyl chloride resins [P1; L16], and the plasticizer composition included in the polymer resin composition is preferably 5 to 250 parts by weight per 100 parts by weight of the polymer resin. [P9; L566] which overlaps the claimed range. Kue does not teach the specific ester-based plasticizer composition with formula (1), however, Okubo teaches cyclohexanedicarboxylic acid ester represented by the following general formula (2), component B1 [0024], similar to specified the chemical formula 1, structure see below [FOR; Pg 3], wherein the “R 2 and R 3 each independently represent a hydrocarbon group having 8 to 22 carbon atoms.” [0026] comparing to the wherein R1 and R2 are independently of each other Cl-C6 alkyl, wherein, the cyclohexanedicarboxylic acid ester from Okubo are homologs to the claimed formula (1) differing regularly by the successive addition of two -CH2- groups. Homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. Additionally, the cyclohexanedicarboxylic acid ester from Okubo and the invention of the claimed ester-based plasticizer formula (1) have similar utility, i.e., plasticizer, and the claims are drawn to an ester-based plasticizer composition.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties. Compounds which are position isomers (com-pounds having the same radicals in physically differ-ent positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious) and MPEP 2144.09.
Okubu further teaches “R 4 represents divalent hydrocarbon group having 2 to 10 carbon atoms.” [0026] overlaps the claimed L1 range.
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Kue and Okubo are both considered to be analogous to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of ester-based compound development for improving the composites workability. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Kue to substitute the specific cyclohexanedicarboxylic acid ester represented by the following general formula (2) as component B1 [0024] as taught by Okubu as plasticizer and apply into the composite formulation toward processability improvement. Doing so would further lead to the optimization of the composites processability, owing to the fact that the specific cyclohexanedicarboxylic acid ester represented by the following general formula (2) as component B1 [0024] can sufficiently prevent the fibers in the precursor fiber bundle from fusing to each other [0027], which is taught by Okubu.
Kue further teaches “Preparation and measurement of specimens for heat loss; The composition was processed at 165°C; Then, processed at 185°C; Then, after
24 hours” [P12; L746] and the result of the ASTM D638 method at room temperature is divided by the result after heating to obtain the value in %. [P12; L773], collectively reads on the heating loss specimen preparation and measurement method.
Regard to the ratio of heating loss, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Kue and Okubo teach all of the claimed ingredients, in the claimed amounts, and Kue teaches the composition as being made by a substantially similar process and the test method. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. ratio of heating loss would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 13, Kue teaches “filler” [P1; L34].
Regarding Claim 15, Kue teaches polymer resin molded article [P1; L20].
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
In response to the applicant’s argument that “unexpected results; as such, it can be seen that the properties of the composition vary greatly depending on the carbon number of the substituent of the cyclohexane diester”, the argument is still not persuasive.
In fact, when Examples 1-4 and Comp. Example 1 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 11 is open to the limitations of a) R1 and R2 are independently of each other C1-C6 alkyl; b) Li is C1-C10 alkylene. However, Examples 1-4 and Comp. Example 1 are all based on the DEHCH, which is cyclohexane diester (Hanwha Chemical Corporation, Eco-DEHCH) [Instant App. US20230054496; 0161], wherein, the DEHCH structure see below, wherein, the R1 and R2 of DEHCH are C8 alkyl, which falls out of the claimed R1 and R2 range, which is C1-C6 alkyl; L1 of DEHCH is C6 alkylene, as single value, however, the claimed Li is C1-C10 alkylene range, hence, the C6 is not commensurate in scope with the claimed C1-C10 alkylene range.
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Hence, The Examples 1-4 and Comp. Example 1 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Additionally, the data which applicant replied upon for unexpected results, is not a direct comparison with the closest prior art. Okubo teaches cyclohexanedicarboxylic acid ester represented by the following general formula (2), component B1 [0024], similar to specified the chemical formula 1, structure see below [FOR; Pg 3], wherein the “R 2 and R 3 each independently represent a hydrocarbon group having 8 to 22 carbon atoms.” [0026] and “R 4 represents divalent hydrocarbon group having 2 to 10 carbon atoms.” [0026] overlaps the claimed L1 range.
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However, the data relied on to establish unexpected results, which is based on the DEHCH (structure see above) does not compare the claimed subject matter with the closest prior art and thus are not indicative of the unexpected property which is not replies on the closest prior art. Furthermore, the applicant’s data is directed towards a commercial product whose structure is not named in the instant application by the applicant.
A showing of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). See MPEP § 716.02(e).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Kue teaches plasticizer composition based on 1,4-cyclohexanedicarboxylate used as a plasticizer when processing various polymer resins [P1; L16], and lead to When the 1,4-cyclohexanedicarboxylate compositions manufactured in Examples 1 to 5 were used as a plasticizer, the mechanical properties such as tensile strength and elongation were maintained at an equivalent or higher level compared to when they were used as general-purpose plasticizers, and in particular, it was confirmed that the heating loss was small and the properties of tensile residual rate after heating and elongation residual rate after heating were excellent [P12; L781], as analogous art, Okubo teaches cyclohexanedicarboxylic acid ester represented by the following general formula (2), component B1 [0024], similar to specified the chemical formula 1, as set forth above, further lead to cyclohexanedicarboxylic acid ester represented by the following general formula (2) used as plasticizer and apply into the composite development toward processability improvement, which can sufficiently prevent the fibers in the precursor fiber bundle from fusing to each other [0027], collectively match good for compatibility, such as processability and workability, thereby having high plasticization efficiency. That is, according to the present invention, an ester-based compound which may satisfy both heat resistance and compatibility [Instant App. US20230054496; 0047].
Hence, neither Kue nor Okubu teaches away the instant application.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767