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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/28/2025, 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.
Claims 31-33 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.
Regarding Claim 31, The claim 31 fails to recite the limitation “n” and “M” for the formula I.
For the purpose of further examination, it has been interpreted as “M is selected from the group consisting of alkali metals, alkaline earth metals, aluminum, and zinc, n is an integer from 1 to 4”.
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 18-20, 22, 24, 26-30 are rejected under 35 U.S.C. 103 as being unpatentable over Mauz (DE2544014, herein Mauz, a machine translation is being used for citation purpose), in the view of Bandyopadhyayopadhyay (US20110206624, herein Bandyopadhyayopadhyay).
Regarding claims 18, 22, Mauz teaches method for stabilizing an organic material comprising combining the organic material with a compound or a mixture of compounds in accordance with general formula I. Wherein, the claimed compound is “phenol-substituted aliphatic carboxylic acids or their salts in the presence of metal precursors known as stabilizers” [0066], Mauz does not explicitly teach the specific compound with general formula I, however, Bandyopadhyay teaches sodium-p-methoxycinnamate [0024] which matches the formula I as evidenced by CAS Registry Number: 7340-42-3, structure see below, [Scifinder], wherein, R1, R3 are hydrogen; R2 is -OCH3; M is sodium; n=1.
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Mauz and Bandyopadhyay are both considered to be analogous to the claimed invention because they are in the same field of phenol carboxylic acid-based stabilizer and acrylate copolymer-based composition formation with stability under the light. 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 Mauz to substitute the teachings of Bandyopadhyay and provide wherein said the sodium-p-methoxycinnamate [0024] and apply into the composition formation. Doing so would lead to the effective stabilizing the acrylate copolymer-based sunscreen [0036; 0095], as taught by Bandyopadhyay.
Regarding claim 19, Mauz teaches stability against oxidative damage by atmospheric oxygen [0025].
Regarding claim 20, Mauz teaches polyethylene and polypropylene or copolymers of such olefins [0065] reads on organic material.
Regarding claim 24, Mauz teaches “0.01 to 5 parts by weight of one of the phenol-substituted aliphatic carboxylic acids to be used according to the invention or their salts” [0075], which lies in the claimed range.
Regarding claims 26, 27, 28, Mauz teaches calcium stearate [0163] which reads on the further additive, acid scavengers, which further reads on the costabilizer, in the range of “0.20 parts by weight” [0163], which lies in the claimed range.
Regarding claim 29, Mauz teaches calcium stearate [0163] reads on the further additive, acid scavengers, which further reads on the costabilizer, which is combined in the composition.
Regarding claim 30, Mauz teaches petal alcohols [0060] reads on polyol, as costabilizer.
Claims 31-33 are rejected under 35 U.S.C. 103 as being unpatentable over Mauz (DE2544014, herein Mauz, a machine translation is being used for citation purpose), in the view of Bandyopadhyayopadhyay (US20110206624, herein Bandyopadhyayopadhyay).
Regarding claim 31, Mauz teaches method for stabilizing an organic material comprising combining the organic material with a compound or a mixture of compounds in accordance with general formula I. “phenol-substituted aliphatic carboxylic acids or their salts in the presence of metal precursors known as stabilizers” [0066]. Mauz does not explicitly teach the specific compound with general formula I, however, Bandyopadhyay teaches sodium-p-methoxycinnamate [0024] which matches the formula I as evidenced by CAS Registry Number: 7340-42-3, structure see below, [Scifinder], wherein, R1, R3 are hydrogen; R2 is -OCH3; M is sodium; n=1.
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Mauz and Bandyopadhyay are both considered to be analogous to the claimed invention because they are in the same field of phenol carboxylic acid-based stabilizer and acrylate copolymer-based composition formation with stability under the light. 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 Mauz to substitute the teachings of Bandyopadhyay and provide wherein said the sodium-p-methoxycinnamate [0024] and apply into the composition formation. Doing so would lead to the effective stabilizing the acrylate copolymer-based sunscreen [0036; 0095], as taught by Bandyopadhyay.
Regarding claim 32, Mauz teaches 0.01 to 5 parts by weight of one of the phenol-substituted aliphatic carboxylic acids to be used according to the invention or their salts [0075], lies the claimed range; calcium stearate [0163] reads on the further additive, in the range of 0.20 parts by weight [0163] lies in the claimed range; polyethylene and polypropylene or copolymers of such olefins, based on 100 parts by weight of polymer [0065] reads on organic material overlaps the claimed range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 33, Mauz teaches calcium stearate [0163] reads on the additive of acid scavengers.
Claims 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Mauz (DE2544014, herein Mauz, a machine translation is being used for citation purpose), in the view of Martin (US20050093205, herein Martin).
Regarding claims 34-36, Mauz teaches method for stabilizing an organic material comprising combining the organic material with a compound or a mixture of compounds of “phenol-substituted aliphatic carboxylic acids or their salts in the presence of metal precursors known as stabilizers” [0066], wherein, the metal compounds known as stabilizers are understood to mean: aluminum salt [0067]. Mauz teaches “0.01 to 5 parts by weight of one of the phenol-substituted aliphatic carboxylic acids to be used according to the invention or their salts” [0075], as a); Mauz teaches calcium stearate [0163] which reads on the acid scavengers, which further reads on the costabilizer, in the range of “0.20 parts by weight” [0163] as b), therefore, the a)/b)=0.01/0.2 to 5/0.2=0.05 to 25, lies in the claimed range.
Mauz does not explicitly teach the specific compound with general formula I, however, Martin teaches metal salts of cinnamic acid [structure see below: Cinnamic Acid | C9H8O2 | CID 444539 - PubChem] and aluminum [0061], which reads on the claimed formula I, wherein, R1, R2, R3 are hydrogen, M is aluminum, n=3.
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Martin further teaches the incorporation of from metal salt of an unsaturated organic acid into the ethylene-alpha-olefin elastomeric composition [0063]. Because both the aluminum salt [0067] as taught by Mauz and the metal salts of cinnamic acid and aluminum [0061] taught by Martin are known in the art to be useful for stabilizer for thermoplastic composite, at the time of the invention a person of ordinary skill in the art would have found it obvious to substitute the metal salts of cinnamic acid and aluminum [0061] taught by Martin with the aluminum salt [0067] taught by Mauz, and would have been motivated to do so because both compounds individually are known to be effective stabilizers for thermoplastics. (see MPEP 2144.06).
Response to Arguments
Applicant’s arguments, filed 10/28/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Mauz (DE2544014, herein Mauz, a machine translation is being used for citation purpose) and Bandyopadhyayopadhyay (US20110206624, herein Bandyopadhyayopadhyay) as set forth above.
In this case, the newly added reference_ Bandyopadhyayopadhyay teaches the specific compound with general formula I as set forth in the new rejection above.
In response to the argument of “improved performance”, is not persuasive.
In fact, When Examples 1-8 and Comparative Example 1 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison.
Claim 24 is open to the content of the totality of all the compounds in accordance with general formula I is included in the organic material at a weight proportion of 0.01 to 10.00 wt.%. However, Examples 3-8 only show data for the compounds in accordance with general formula I one single value of the 0.25%. Hence, the Examples 3-8 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).
The declaration under 37 CFR 1.132 filed in 10/28/2025 is insufficient to overcome the rejection of claim 1 based upon the rejection of claim 1 as set forth in the new rejection because:
the newly added reference_ Bandyopadhyayopadhyay teaches the specific compound with general formula I as set forth in the new rejection above.
In response to the argument of “improved performance”, is not persuasive.
When Examples 1-8 and Comparative Example 1 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison.
Claim 24 is open to the content of the totality of all the compounds in accordance with general formula I is included in the organic material at a weight proportion of 0.01 to 10.00 wt.%. However, Examples 3-8 only show data for the compounds in accordance with general formula I one single value of the 0.25%. Hence, the Examples 3-8 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).
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
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767