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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/25/25 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 22 is 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.
In claim 22 it is unclear what it means for the phthalate-free plasticizer to be “additionally based on” adipic acid or benzoate ester, for example whether the plasticizer is required to be an ester prepared using a mixture of esters, or whether the plasticizer can simply be a mixture of separately prepared esters. For the purpose of examination, a mixture of a citric acid ester with an adipic acid ester or benzoate ester is considered to meet the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 23 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 21, from which claim 23 depends, requires the phthalate-free plasticizer to be based on citric acid, but claim 23 recites various plasticizers based on acids other than citric acid.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 21-25 and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Zawadzki (U.S. Pat. No. 3,700,616) in view of Freese ‘562 (U.S. PG Pub. No. 2007/0135562).
In the reference’s claim 1, Zawadzki discloses a composition comprising approximately 100 parts by weight of a plastisol-grade vinyl chloride resin (PVC), 50 to 150 parts by weight of a diluent-grade PVC, 50 to 150 parts by weight of a plasticizer, 0 to 50 parts by weight of fillers, and several additional additives. In column 2 lines 57-63 Zawadzki discloses that the diluent-grade resin acts as a filler. The combination of the plastisol-grade PVC and plasticizer meets the limitations of the plastisol of claim 21, where the PVC is the binder. The composition is adapted to be molded at room temperature and hardened by heating. In column 6 lines 19-21 Zawadzki indicates that the composition is oven-hardenable, as recited in amended claim 21.
The total amount of the compounds in claim 1 of Zawadzki ranges from 210 to 542.5 parts by weight (noting that the heat stabilizer g of claim 1 of Zawadzki is present in an amount of 15 parts per hundred parts of total PVC, and the PVC can be a total of up to 250 parts by weight, leading to a maximum of 37.5 parts by weight for the heat stabilizer). When the plasticizer is present at the minimum level of 50 parts by weight, the maximum total is 442.5 parts by weight, leading to a minimum plasticizer concentration of about 11.3% by weight, and when the plasticizer is present at the maximum level of 150 parts by weight, the minimum total is 310 parts by weight, leading to a maximum plasticizer concentration of about 48.4%. The plasticizer concentration therefore ranges from about 11.3 to about 48.4% by weight of the composition, overlapping the range recited in amended claim 21.
The plastisol-grade PVC is present in an amount of about 18.4% (100/542.5) to about 47.6% of the composition, overlapping the range recited for the binder of amended claim 21. The diluent-grade PVC is present in an amount of about 11.3 to about 48.4% by weight of the composition (same concentration and calculations as the plasticizer), and the additional filler (f) is present in an amount of up to 19.2% by weight (50/260), leading to a total about of filler of about 11.3 to about 67.6%, overlapping the range recited for the filler of amended claim 21. The amount left over for the other additives will encompass the range recited for the other additives of amended claim 21.
Polyvinyl chloride is an organic filler, as recited in claim 25. In Example I at the top of column 5, Zawadzki discloses that clay can be added as an additional filler, meeting the limitations of the inorganic filler of claim 24 as well as the clay of claim 27. In column 4 lines 62-66 Zawadzki discloses that the composition can comprise a pigment, as recited in claim 28, including carbon blacks, phthalocyanine blue, phthalocyanine green, and Prussian blue, which are azo-free color pigments as recited in claim 29. In column 5 lines 16-24 Zawadzki discloses mixing the components at 130° F (54.4° C), meeting the limitations of amended claim 21, as the “about 58” lower endpoint of the claimed temperature range will encompass 54.4° C, noting that page 15 lines 9-18 of the current specification indicates that temperatures of around 55° C will also have the effect associated with the narrower range recited in the amended claim. Even if the temperature of Zawadzki does not fall within the range recited in the amended claims, a prima facie case of obviousness would still exist, since one skilled in the art would expect the temperature of Zawadzki to have the same properties as the claimed mixing temperature. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See the discussion in MPEP 2144.05(I).
The differences between Zawadzki and the currently presented claims are:
i) From column 3 line 42 through column 4 line 19 Zawadzki discloses that suitable plasticizers include phthalate free plasticizers, as recited in amended claim 21, including plasticizers based on adipic acid, as recited in claims 22, and including diisodecyl adipate (column 4 line 11), as recited in claim 23. Zawadzki does not disclose the inclusion of a citric acid-based plasticizer, as recited in amended claim 21.
ii) The concentration ranges of Zawadzki overlap the claimed ranges rather than falling within them.
With respect to i), it is noted that Freese ‘562 is a different reference than the Freese reference cited in the office action mailed 5/13/25. Freese ‘562 discloses in paragraphs 1 and 32-39 a modelling material based on PVC and phthalate-free plasticizer. In paragraph 16 Freese ‘562 discloses that the phthalate-free plasticizer can be based on citric acid, as recited in amended claim 21. Freese ‘562 discloses that any mixture of the disclosed plasticizers is possible, therefore indicating that the citric acid-based plasticizer can be combined with an adipic acid and/or benzoate ester plasticizer, meeting the limitations of claim 22. In paragraph 16 Freese ‘562 discloses that the plasticizer can be specific plasticizers meeting the limitations of claim 23. The inclusion of the citric acid-based plasticizer of Freese ‘562 as the plasticizer in the composition of Zawadzki therefore meets the limitations of claims 21 and 23 and the further inclusion of an adipic acid and/or benzoate ester plasticizer further meets the limitations of claim 22, as well as claim 23 for the case where the adipic acid and/or benzoate ester plasticizer is one of the specific compounds disclosed in paragraph 16 of Freese ‘562 and recited in claim 23.
It would have been obvious to one of ordinary skill in the art to use the citric acid-based plasticizer of Freese ‘562, optionally in combination with an adipic acid and/or benzoate ester based plasticizer, as the plasticizer of Zawadzki, since Freese ‘562 teaches that they are effective plasticizers for PVC-based modelling compositions. While Freese ‘562 discloses compositions having a lower plasticizer content than the claimed compositions, there is no indication in Freese ‘562 that the effectiveness of the plasticizers is contingent on the concentration thereof, and that the negative effects identified in paragraphs 6-7 of Freese ‘562 are directed only to phthalate-containing plasticizers.
With respect to ii), See MPEP 2144.05(I): “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);”
Claims 21-25 and 27-29 are therefore rendered obvious by Zawadzki in view of Freese.
Double Patenting
Claims 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 12-14 of copending Application No. 17/922,100. Although the claims at issue are not identical, they are not patentably distinct from each other.
The claims filed 9/17/25 in the ‘100 application are used in setting forth this rejection, noting that the proposed amendment filed 12/8/25 was not entered by the examiner. Claims 7 and 14 of the ‘100 application recite a method for producing a molding compound which comprises a binder, plasticizer, filler, and other additives in concentration ranges encompassing the ranges recited in claim 21 of the current application, where the binder is PVC and the plasticizer is phthalate-free, and the mixing temperature also encompasses the range recited in claim 21 of the current application. Claims 12-13 of the ‘100 application are analogous to claims 22-23 of the current application, and recite citric acid-based plasticizers as recited in amended claim 21 of the current application. The difference between the claims of the ‘100 application and claims 21-23 of the current application are that the ranges of the claims of the ‘100 application encompass the ranges recited in the current application rather than falling within them.
See MPEP 2144.05(I): “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);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
While the claims of the ‘100 application do not specifically recite that the molding compound is a modeling clay, since the molding compounds of the claims of the ‘100 application render obvious the compositional limitations of the composition produced by the currently recited claims, they will be capable of use as modeling clays. Claims 21-23 of the current application are therefore rendered obvious by the claims of the ’100 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 11/25/25 have been fully considered but they are not persuasive. Applicant argues that Zawadzki does not teach citric acid-based plasticizers. However, the newly applied Freese ‘562 reference teaches the use of citric-acid based plasticizers in PVC-containing modelling compositions, and teaches that the citric acid-based plasticizers have equivalent use to adipic acid-based plasticizers, which are disclosed by Zawadzki, such as diisodecyl adipate. Freese ‘562 therefore provides motivation for one of ordinary skill in the art to use a citric acid-based plasticizer in the composition and method of Zawadzki.
Applicant further argues that the plasticizer concentration range and temperature range in the composition and method of Zawadzki would not apply to citric acid-based plasticizers, but applicant does not provide reasoning or evidence as to why one of ordinary skill in the art would expect the concentration range of plasticizer to be contingent on the specific plasticizer, and neither Zawadzki nor Freese ‘562 provide such a teaching. Paragraph 77 of Freese ‘562 teaches that the material of the reference can be manufactured according to German Patent 25 15 757 C3, which Freese ‘562 identifies in paragraph 6 as being directed to a composition comprising a phthalate-containing plasticizer, while Freese ‘562 is directed toward phthalate-free plasticizers; one of ordinary skill in the art would understand this as an indication that the method of preparing the modelling clay does not depend on the specific type of plasticizer.
Regarding the double patenting rejection and the terminal disclaimer filed 11/25/25, applicant is directed to the remarks in the advisory actions mailed 12/3/25 for the reasons why the terminal disclaimer was not approved. In the co-pending 17/922,100 application, applicant filed an updated Request for Corrected Filing Receipt and updated Application Data Sheet on 8/23/24 updating the name of the name of the assignee; applicant should consider whether a similar update would be appropriate in this application in order to match the assignee listed on the terminal disclaimer filed 11/25/25.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771