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 .
DETAILED ACTION
STATUS OF THE CLAIMS: Claims 1-12 are pending in this application.
Election/Restrictions
Applicant’s election of species in the reply filed on June 27, 2025 is acknowledged. This election was for search purposes only, and thus, all claims were examined.
Claim Objections
Claims 10 and 12 are objected to because of the following informalities: Claims 10 and 12 do not appear to be grammatically correct. Appropriate correction is required.
Claim Rejections - 35 USC § 112, 2nd paragraph
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 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over JP47-025234.
Applicants claim low migration hindered phenol antioxidant compounds of the following formula (I):
PNG
media_image1.png
218
350
media_image1.png
Greyscale
wherein all the variables are defined in the claim.
JP47-025234 discloses a generic group of low migration hindered phenol antioxidant compounds containing multiple hindered phenolic units of formula I, and describes how these compounds are useful in inhibiting or delaying its oxidative degradation--prolonging its service life. Additionally, JP47-025234’s generic group of low migration hindered phenol antioxidant compounds has a high molecular weight, has oxidation resistance, heat resistance and can stabilize polyolefin. This results in improving the thermal oxidative aging resistance of polymers, and thus embraces Applicant’s claims. The reference also teaches compositions and methods of preparing said low migration hindered phenol antioxidant compounds. (See Abstract and entire document).
Applicant claims differ from the reference by reciting specific species and a more limited genus than the reference (i.e., replacing “(R3)r” with various substituents such as alkyls, phenyl, and benzyl).
It would have been obvious to one having ordinary skill in the art at the time of the invention to replace various substituents of formula I or add various substituents to formula I as taught by the reference, because it is generally known to a person skilled in the art that it would easily obtain other hindered phenolic antioxidant compounds having excellent performance through the substitution or changing of substituents. One of ordinary skill in the art would have been motivated to select the claimed compounds replacing (R3)r with various substituents such as alkyls, phenyl, and benzyl since such compounds would have been suggested by the reference as a whole. Further, a prior art disclosed genus of useful compounds is sufficient to render prima facie obvious a species falling within a genus. Thus, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Since Applicant’s claims are prima facie obvious in view of the teachings of JP47-025234, Applicant’s claims are obvious, and therefore, rejected under 35 U.S.C. 103.
Conclusion
Claims 1-12 are pending. Claims 1-12 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL V WARD whose telephone number is (571)272-2909. The examiner can normally be reached M-F 9am to 5pm.
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, James Alstrum-Acevedo can be reached at 571-272-5548. 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.
/PAUL V WARD/Primary Examiner, Art Unit 1622
Prosecution Insights