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 .
This communication responds to the amended claim set and the response to non-final rejection filed 09/02/2025. Claims 1-6, 9, 10, 14-16, 18, 23-30 are current pending. Claims 14-16, 18 and 23-24 are withdrawn for directing to non-elected group and species.
The 35 USC 103 rejections dated 06/02/2025 are MAINTAINED. Thus, the following action is properly made final.
Claims 1-6, 9, 10, 25-30 are further rejected for the reasons set forth below. The new ground of rejections are necessitated by the new claims.
Claim Rejections - 35 USC§ 103
Claims 1-6, 9-10 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Paulsson
(EP3194496Bl) in view of Stefano et al. (EP2294122Al), as evidenced by Gredegard
(US20150203657 Al) and Pevalen™ and Glentham pentaerythritol product data sheets.
The non-final rejection dated 06/02/2025 at paragraph 7 is maintained.
Claims 1-4 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Odaira et al.
(US5,519,076) in view of Gredegard et al. (US20150203657 Al).
The non-final rejection dated 06/02/2025 at paragraph 8 is maintained.
Claims 1-6, 9-10 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Laufer et
al. (US2019/0127554 Al) in view of Odaira et al. (US5,519,076).
The non-final rejection dated 06/02/2025 at paragraph 9 is maintained.
Claims 1-6, 9, 25-26, 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Gredegard et al. (US20150203657 Al), as evidenced by Galata Chemicals Mark CZ 118 E safety data sheet, Pevalen™ and Glentham pentaerythritol product data sheets, in view of Ramey et al. (US2003/0158054).
Regarding Claims 1-3, 5-6, 28-29, Gredegard teaches making a plasticizer comprising an ester formed by reaction of a polyol and a monocarboxylic acid (claim 1) and using the plasticizer in a PVC resin (claim 10). Attention is drawn to Example 2 and Example 4. Example 2 teaches synthesis of pentaerythritol tetravalerate and Example 4 teaches a composition comprising 100 phr PVC, 50 phr pentaerythritol tetravalerate and 2 phr Mark CZ 118 E. According the Galata Chemicals Mark CZ 118 E safety data sheet, Mark CZ 118 E is liquid Ca/Zn PVC stabilizer.
Gredegard teaches that pentaerythritol tetravalerate is produced through esterification of valeric acid and pentaerythritol (claim 6) but is silent on pentaerythritol tetravalerate having an acid value of less than 0.05 mg KOH/g and pentaerythritol having a purity of at least 98%, an ash content of less than 200 ppm, and a dipentaerythritol content of 0.1-2 wt%.
However, the commercial product PevalenTM data sheet shows the acid value is no more than 0.05 mg/KOH/g. "obtained through esterification of valeric acid and high purity pentaerythritol having a purity of at least 98%, an ash content of less than 200 ppm, and a dipentaerythritol content of 0.1-2 wt%" is a format of product-by-process, the patentability of a product does not depend on its method of production (MPEP 2113). Moreover, Glentham's product data sheet shows the pentaerythritol has a purity of at least 98% (thereby dipentaerythritol <2% ), an ash content no more than 15ppm. It is common sense that one ordinary skilled artisan to use commercially available chemicals for the R&D. The screenshot below shows PevalenTM was available as early as in 2015.
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The difference between Gredegard and instant claims is that Gredegard is silent on the PVC composition comprising one overbased additive.
However, Ramey teaches that overbased calcium oleate/carbonate (claim 7) is a polyvinyl chloride resin stabilizer ([0047]), therefore, it was obvious to one ordinary skilled artisan, before the effective filing date of instant application, to add the overbased calcium oleate/carbonate in the PVC composition of Gredegard to obtain a modified PVC composition because Gredegard teaches that Mark CZ 118 E is a PVC stabilizer (example 4). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose ( see MPEP 2144.06(I)).
Gredegard in view of Ramey is silent on the free valeric acid content in the PVC composition,
however, the content is expected because the modified PVC composition is substantially identical to the
claimed PVC composition. "Products of identical chemical composition cannot have mutually exclusive
properties." 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
(See MPEP 2112.01 II). In this case, the modified PVC comprising pentaerythritol tetravalerate and the claimed liquid Ca/Zn PVC stabilizer in the amounts falling within the claimed ranges, respectively. The modified PVC composition also contains the claimed overbased calcium oleate/carbonate. The liquid Ca/Zn PVC stabilizer and overbased calcium oleate/carbonate keep pentaerythritol tetravalerate stable and reduce valeric acid amount in the manufacturing process and storage.
Further, the example 4 composition containing pentaerythritol tetravalerate does not contain another plasticizer.
Regarding Claim 4, as discussed above, the PVC composition contains 2phr liquid Ca/Zn PVC stabilizer.
Regarding Claim 9, the PVC of the Ex4 composition of Gredegard is a S-PVC.
Regarding Claims 25-26, the modified composition comprising overbased calcium oleate/carbonate.
Claims 1-6, 9-10, 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over Gredegard et al. (US20150203657 Al), as evidenced by Pevalen™ and Glentham pentaerythritol product data sheets, in view of Stefano et al. (EP2294122Al).
Regarding Claims 1-3, 5-6, 28 and 29, Gredegard teaches making a plasticizer comprising an ester formed by reaction of a polyol and a monocarboxylic acid (claim 1) and using the plasticizer in a PVC resin (claim 10). Attention is drawn to Example 2 and Example 4. Example 2 teaches synthesis of pentaerythritol tetravalerate and Example 4 teaches a composition comprising 100 phr PVC, 50 phr pentaerythritol tetravalerate and 2 phr stabilizer Mark CZ 118 E. Mark CZ 118 E is liquid Ca/Zn PVC stabilizer.
Gredegard teaches that pentaerythritol tetravalerate is produced through esterification of valeric acid and pentaerythritol (claim 6) but is silent on pentaerythritol tetravalerate having an acid value of less than 0.05 mg KOH/g and pentaerythritol having a purity of at least 98%, an ash content of less than 200 ppm, and a dipentaerythritol content of 0.1-2 wt%. However, the commercial product PevalenTM data sheet shows the acid value is no more than 0.05 mg/KOH/g. "obtained through esterification of valeric acid and high purity pentaerythritol having a purity of at least 98%, an ash content of less than 200 ppm, and a dipentaerythritol content of 0.1-2 wt%" is a format of product-by-process, the patentability of a product does not depend on its method of production (MPEP 2113). Moreover, Glentham's product data sheet shows the pentaerythritol has a purity of at least 98% (thereby dipentaerythritol <2% ), an ash content no more than 15ppm. It is common sense that one ordinary skilled artisan to use commercially available chemicals for the R&D.
The difference between Gredegard and instant claims is that Gredegard is silent on the PVC composition comprising one overbased additive.
Stefano teaches a mixture of liquid PVC stabilizers comprising Ba/Zn (claim 4) and costabilizer
of solutions of barium carboxylate/barium carbonate (overbased barium) ( claim 2). It was obvious to one ordinary skilled artisan, before the effective filing date of instant application, to add the liquid Ba/Zn stabilizer and the overbased calcium oleate/carbonate taught by Stefano into the PVC composition of Gredegard to obtain a modified PVC composition because Gredegard teaches that Mark CZ 118 E is a PVC stabilizer (example 4). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose ( see MPEP 2144.06(I)).
one ordinary skilled artisan would have also been motivated to replace Mark CZ 118 E with the stabilizer mixture of Stefano because both Mark CZ 118 E and the stabilizer mixture of Stefano are PVC stabilizers. The replacement is a simple substitution of a known element with another known element.
Further, the example 4 composition containing pentaerythritol tetravalerate does not contain another plasticizer.
Regarding Claim 4, Stefano discloses that the liquid stabilizer mixture is in the amount of 1 to 5
phr (p8/lns10-15) and the overbased barium is 0.1 to 8% of the total weight of the stabilizer mixture (page
7 /lns5-8), therefore, the overbased barium is 0.001 to 0.4 phr, therefore, the liquid Ba/Zn stabilizer is 0.6 to about 5 phr. In the case that one ordinary skilled artisan combines the stabilizers, Gredegard teaches the Ca/Zn stabilizer is 2 phr, therefore, the total of Ba/Zn and Ca/Zn stabilizers is 2.6 to 5 phr.
Regarding Claim 9, the PVC of the Ex4 composition of Gredegard is a S-PVC.
Regarding Claim 10 and Claim 30, the modified composition comprising liquid Ba/Zn stabilizer.
Regarding Claims 25-26, Stefano teaches the overbased barium solution is barium carboxylate/barium carbonate solution (claim 2).
Regarding Claim 27, the overbased barium carboxylate/barium carbonate solution is 0.001 to 0.4 phr (see claim 4), overlapping with the claimed 0.25 to 1 phr.
Response to Arguments
Applicant's arguments filed 09/02/2025 have been fully considered but they are not persuasive.
Examiner thanks Applicant’s detailed remarks to each set of 35 USC 103 rejections dated 06/02/2025. Sets of Applicant’s responses have three common themes: 1) addressing the differences of each reference from the instant application; 2) argued the combination of references would not produce a modified composition which is substantially identical to that of instant claimed, therefore, the amount of free valeric acid in the modified composition is not expected; 3) Example 5 of the present application provides objective evidence of unexpected results. Examiner’s responses to the remarks set forth below.
Regarding the differences of each reference from the instant application.
Examiner Response: each of 35 USC 103 rejections dated 06/02/2025 is based combination of two or more references. Case law holds that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references (See MPEP 2145 IV).
the combination of references would not produce a modified composition which is substantially identical to that of instant claimed.
Paulsson in view of Stefano
Applicant’s argument: the resulting composition would still require an epoxidized fatty acid ester and would differ from the claimed invention. Because the components are not the same, the free valeric acid content cannot be predicted with certainty, as different stabilizers and co-stabilizers interact differently with pentaerythritol tetravalerate and result in varying levels of degradation.
Examiner’s response: the current claim claims a PVC composition comprising. The transition word comprising means the composition is open to other components other than the claimed. Therefore, the current claim does not exclude a component like an epoxidized fatty acid ester. Additionally, Paulsson does not disclose that the epoxidized fatty acid ester is a stabilizer or co-stabilizer for PVC. Paulsson discloses that Ca/Zn and Ba/Zn compounds are stabilizers for PVC. And Stefano teaches the PVC stabilizer being liquid Ba/Zn which is one of the claimed component ( c) and the co-stabilizer being solutions of barium carboxylate/barium carbonate which reads on the claimed component ( d). The modified composition comprising pentaerythritol tetravalerate, the claimed component (c ) and the claimed component (d ), therefore, the stabilizer and the co-stabilizer should interact with pentaerythritol tetravalerate the same way as the current claimed composition, consequently, result in the same levels of degradation. Moreover, Applicant did not present evidence that the epoxidized fatty acid ester of Paulsson would interfere with stability of pentaerythritol tetravalerate produced by the stabilizer and the co-stabilizer.
Odaira in view of Gredegard
Applicant’s argument: Odaira relies on stabilizers formed from overbased complexes with polybasic carboxylic acid anhydrides, which differ fundamentally from the liquid Ca/Zn, solid Ca/Zn, or Ba/Zn
stabilizers recited in the claims.
Examiner’s answer: as explained at para.8 of the non-final rejection, Odira teaches the PVC composition comprising 0.5 parts zin stearate and 0.5 parts barium stearate stabilizer which reads on 0.5 phr Ba/Zn stabilizer of instant component ( c). The overbased complexes read on the current claimed component ( d).
Applicant’s argument: such polybasic carboxylic acid anhydrides may accelerate degradation of pentaerythritol tetravalerate, moving further away from the present invention rather than toward it.
Examiner’s answer: the overbased complexes read on an overbased additive. Applicant needs to provide evidence to show the overbased complexes accelerate degradation of pentaerythritol tetravalerate.
Laufer in view of Odaira
Applicant twisted the non-final rejection dated 06/02/205. As stated at para. 9 of the non-final OA, Laufer discloses a composition comprising PVC, pentaerythritol tetravalerate, and Ca/Zn stabilizer; Odaira supplements the overbased additive.
Example 5 of the present application provides objective evidence of unexpected results.
Examiner Response: Applicant's argument of unexpected results is unpersuasive and insufficient because:
Unexpected results must, in actuality, be unexpected.
Data shown in Table 1 and Table 2 do not support the addition of an overbased additive uniquely reduces degradation of pentaerythritol tetravalerate and significantly improves process and storage stability. Ex A, E and comparative Ex T do not contain an overbased additive. Exs L-O each contains an overbased additive. The Ex A, E and comparative Ex T resulted same storage stability as Ex L, N, O. The Ex A, E and comparative Ex T resulted better storage stability than Ex M.
Unexpected results must be commensurate in scope with the claim.
Instant Exs A-O resulted superior process stability than the comparative Exs P-T. However, the difference between the Exs and the comparative Exs is that the comparative compositions contain different stabilizers. Nonetheless, the amount of the stabilizer in each composition is 2 phr while the current claim 1 claims 0.3-14 phr stabilizer. Both the Exs and comparative Exs contain liquid Ca/Zn, therefore, stabilizer being liquid Ca/Zn does not support unexpected results. Therefore, the current claim 1 is not commensurate in scope with the results in view of process stability.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763