DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/2025 has been entered.
Claim Rejections - 35 USC § 103
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.
Claims 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Billings et al. (US 4,278,718) and further in view of Piotrwoski (US 6,350,400).
Billings et al. teach a composition essentially comprising a vinyl chloride resin (i.e. polyvinyl chloride), a plasticizer, and a metal oxide. The plasticizer is preferably present in amounts ranging from about 60 to about 200 parts by weight plasticizer per 100 parts by weight (PVC) resin (col. 3, ln. 33-36), and the metal oxide (corresponding to “any other supplements and/or additives” of claim 1 and the filler and/or other additives of claim 14) is preferably present in an amount of from 0.1 to 5 parts by weights per 100 parts by weight (PVC) resin (col. 2, ln. 66-68). This makes the amount of plasticizer about 36.6wt% to about 66wt%; the amount of vinyl chloride resin (i.e. PVC) from about 32.8 to about 62wt%; and the amount of metal oxide from about 0.03 to about 3wt%. The composition is a plastisol (col. 2, ln. 34-35). While a filler is disclosed in preferable amounts of up to 400 parts by weight, this is a range of 0 to 400 parts by weight filler, making the filler optional. The PVC corresponds to the instantly claimed binder. The PVC has a particle size of less than about 10 microns and is therefore a “powder.” See col. 4, ln. 6.
The amount of PVC (32.8wt% to about 62wt%) of Billings falls within the range of instant claim 14. The amount of metal oxide (corresponding to “any other supplements and/or additives” of claim 1 and the filler and/or other additives of claim 14) meets instant claim 14. The amount of plasticizer in the plastisol composition overlaps the amounts recited in instant claims 7 and 14. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings Billings et al. to use an amount of plasticizer which meets the instant claim limitations of instant claims 7 and 14 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Examples of plasticizers include both phthalate-containing plasticizers and non-phthalate plasticizers. Examples of non-phthalate plasticizers include acetyl tributyl citrate, which meets instant claims 12-13. See col. 3, ln. 24. It would have been obvious to use to acetyl tributyl citrate, because it is expressly disclosed for use in Billings et al. MPEP 2123 states “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Billings does not expressly teach the temperature that the composition is subjected to for mixing.
However, Piotrwoski teaches products produced from PVC plastisol compositions containing plasticizers. The components of the PVC plastisol, which include PVC powder and the plasticizer, are mixed at a temperature of from 50 to 100ºC, which overlaps the range of instant claim 7. The PVC corresponds to the instantly claimed binder. The binder and the plasticizer form the plastisol. The PVC powder, plasticizer, and other additives is blended at a temperature of from 50 to 140ºC (see claim 1 of Piotrwoski). This overlaps the temperature of instant claim 7. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings of Piotrwoski to combine a PVC powder and plasticizer with other additives (i.e. supplements) at a temperature which meets the instant claim limitations of instant claim 7 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Both Billings and Piotrwoski relate to the field of PVC plastisol compositions and products produced therefrom. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to combine the components of Billings at the temperature (5 to 140ºC) disclosed in Piotrwoski in order to provide a simplified process by which to produce products of PVC (col. 1, ln. 25-28). Piotrwoski teaches that premixing of the plasticizer with the PVC powder using the disclose temperature allows for shorter periods of time required for the PVC powder to absorb the plasticizer, providing for a simplified, shorter, and less-complicated process of making articles from PVC plastisols. See col. 1, ln. 40-57.
Response to Arguments
Applicant argues that the previously applied prior art does not disclose a plasticizer based on citric acid, wherein the plasticizer is at least one of the group consisting of: acetyl tributyl citrate, tri(2-ethylhexyl) acetyl citrate, trioctyl citrate, tridecyl citrate, tributyl citrate, trihexyl citrate, and triethyl citrate.
This is not persuasive.
Billings et al. expressly and unambiguously teaches examples of plasticizers which are not phthalates. Examples of non-phthalate plasticizers include acetyl tributyl citrate, which meets instant claim 7. See col. 3, ln. 24. It would have been obvious to use to acetyl tributyl citrate, because it is expressly disclosed for use in Billings et al. MPEP 2123 states “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Billings is not limited to and does not require a phthalate-containing plasticizer, but expressly teaches acetyl tributyl citrate as an example for plasticizer for use in the disclosed invention. Therefore, Applicant’s assertion that Billings “only teaches phthalate-containing plasticizers” is not accurate and is not persuasive.
Many of the examples of plasticizer in Billings are not phthalates. Applicant’s attention is drawn to column 3, lines 23-30. Billings expressly teaches plasticizers which are not phthalates for use in the plastisols disclosed therein.
Applicant further asserts that “neither of the references provide any teaching or suggestion regarding the content of phthalate-free plasticizer.” Billings et al. teaches a content of plasticizer which is 36.6wt% to about 66wt% of the plastisol composition disclosed therein, for the reasons discussed above. Billings et al. also specifically teaches examples of plasticizer which are not phthalates. Thus, Billings teaches (1) phthalate-free plasticizers (see column 3, lines 22-30) in amounts which overlap amended instant claims 7 and 14. The only feature not expressly disclosed in Billings, is the temperature at which the components are mixed. One of ordinary skill in the art would look to Piotrwoski, which is from the same field of endeavor as Billings (PVC plastisol compositions and products produced therefrom), to determine the appropriate temperature range, the temperature range of which is 5 to 140ºC, and would use this temperature range for the motivation of providing a simplified process by which to produce products of PVC (col. 1, ln. 25-28). Piotrwoski teaches that premixing of the plasticizer with the PVC powder using the disclose temperature allows for shorter periods of time required for the PVC powder to absorb the plasticizer, providing for a simplified, shorter, and less-complicated process of making articles from PVC plastisols. See col. 1, ln. 40-57.
It will be further made of note that not only does the instant specification not provide evidence of criticality of phthalate-free plasticizers, the instant specification (and previously presented claim 11) specifically teaches that either phthalate-containing or phthalate-free plasticizers can be used in the instantly claimed method. See page 9, lines 11-12 and page 10, lines 13-20. The instant specification also provides no comparative data regarding the use of phthalate-free plasticizers versus phthalate-containing plasticizers.
In Summary, Billings teaches examples of plasticizers for use in the disclosed compositions which do not contain phthalates, in an amount which overlaps the amount required in the instant claims. Billings only does not disclose a particular temperature at which the components are mixed. However, Piotrwoski teaches products produced from PVC plastisol compositions containing plasticizers. The components of the PVC plastisol, which include PVC powder and the plasticizer, are mixed at a temperature of from 50 to 100ºC, which overlaps the range of instant claim 7. Both Billings and Piotrwoski relate to the field of PVC plastisol compositions and products produced therefrom. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to combine the components of Billings at the temperature (5 to 140ºC) disclosed in Piotrwoski in order to provide a simplified process by which to produce products of PVC (col. 1, ln. 25-28). Piotrwoski teaches that premixing of the plasticizer with the PVC powder using the disclose temperature allows for shorter periods of time required for the PVC powder to absorb the plasticizer, providing for a simplified, shorter, and less-complicated process of making articles from PVC plastisols. See col. 1, ln. 40-57.
The rejection is based on the combination of Billings in view of Piotrwoski and not either reference alone. Each of the instantly claimed features is present in the prior art as discussed in the rejection above. There is an expressly rationale to combine the references, i.e. in order to provide a simplified process by which to produce products of PVC, as Piotrwoski teaches that premixing of the plasticizer with the PVC powder using the disclose temperature allows for shorter periods of time required for the PVC powder to absorb the plasticizer, providing for a simplified, shorter, and less-complicated process of making articles from PVC plastisols. See col. 1, ln. 40-57.
For the reasons provided above, Applicant’s arguments regarding the rejection of the claims over Billings in view of Piotrwoski are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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/K. BOYLE/Primary Examiner, Art Unit 1766