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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6-12, 14-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Gibson (US 2006/0094802 A1) in view of Krupinski (US 2012/0021238 A1). Qiao (Journal of Polymer Research 2024, 31, 111, 1-18), and O’Dell (US 4,499,137) are cited as evidentiary references.
Regarding claim 1, Gibson teaches an extrudable reinforced resin-containing composition comprising a lubricant composition (Abstract), which reads on the claimed “additive,” wherein the lubricant composition comprises:
An oxidized polyethylene wax constituent ([0048]), which is included in the lubricant composition in amounts ranging from about 5.0 to about 50 wt.% ([0064]), which reads on the claimed “at least one functionalized polymer”
An ester wax constituent ([0052]), which is included in the lubricant composition in amounts ranging from about 6.5 to about 60 wt. % ([0064]).
An amide wax constituent ([0058]), which is preferably a bisamide ([0059]),which is included in the lubricant composition in amounts ranging from about 6.5 to about 60 wt. % ([0064]), which reads on the claimed “at least one diamide”
Gibson differs from claim 1 because, while it teaches the use of an ester wax constituent as described above, it is silent with regard to the incorporation of a hydrogenated castor oil component.
In the same field of endeavor, Krupinski teaches a polymer composition containing polymer resin particles (Abstract), and the use of polymers which are also featured in the teachings of Gibson (c.f. polyvinyl chloride and polyethylene/polybutadiene copolymers featured in both Gibson at [0004] and [0049] and Krupinski at [0037]). Krupinski also teaches the incorporation of lubricants (c.f. [0080] of Krupinski and Abstract of Gibson), and teaches that, among others, ester waxes and hydrogenated castor oil are suitable lubricants for the formulation ([0080]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art to substitute hydrogenated castor oil in place of the ester wax taught by Gibson, as Krupinski teaches the two as lubricants useful for similar polymer compositions.
Gibson further differs from claim 1 because it is silent with regard to the newly added limitation requiring that the claimed additive is thixotropic. Nevertheless, Gibson as modified by Krupinski results in a composition that is structurally identical to the claimed additive, which contains all of the same components. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed thixotropy characteristic will therefore be present in Gibson as modified by Krupinski, as applied above.
Regarding claim 2, Gibson teaches that the bisamide is formed from the condensation of a diamine with fatty acids ([0059]), which are carboxylic acids. Gibson teaches the use of ethylenediamine as an example diamine ([0059]), which is a C2 aliphatic diamine. Gibson teaches the use of stearic acid as an example fatty acid ([0059]), which is a C18 saturated, linear, unsubstituted carboxylic acid.
Regarding claim 3, Gibson teaches that the bisamide is formed from the condensation of a diamine with fatty acids ([0059]), which are carboxylic acids. Gibson teaches the use of ethylenediamine as an example diamine ([0059]), which is a linear C2 aliphatic diamine
Regarding claim 4, , Gibson teaches that the bisamide is formed from the condensation of a diamine with fatty acids ([0059]), which are carboxylic acids. Gibson teaches the use of stearic acid as an example fatty acid ([0059]), which is a C18 saturated, linear, unsubstituted carboxylic acid.
Regarding claim 6, Gibson teaches that the bisamide wax is included in the lubricant composition (which reads on the claimed “additive”) in amounts ranging from about 6.5 to about 60 wt. % ([0064]), which anticipates the claimed range of “35% to 90%.”
Regarding claim 7, Gibson teaches the incorporation of the oxidized polyethylene wax ([0048]). Oxidized polyethylene wax contains oxygenated polar functional groups (c.f. Qiao, p. 1, Introduction).
Regarding claim 8, Gibson teaches that the oxidized polyethylene wax has an acid number ranging from about 7 to about 20 mg KOH/g ([0051]).
Regarding claim 9, Gibson teaches the use of an oxidized polyethylene wax ([0048]).
Regarding claim 10, Gibson teaches that the oxidized polyethylene wax constituent is included in the lubricant composition in amounts ranging from about 5.0 to about 50 wt.% ([0064]).
Regarding claim 11, Gibson teaches the use of AC 316 oxidized polyethylene ([0051]) as one of two suitable commercially available oxidized polyethylene waxes. AC 316 has a softening point of 140°C (c.f. O’Dell col. 8, lines 33-34). The teachings of Gibson therefore anticipate the claimed range of “greater than 70°C.”
Regarding claim 12, Gibson teaches the use of an ester wax ([0052]) which are synthesized from starting chemicals ([0053]), and which therefore reads on the claimed “synthetic wax.”
Regarding claim 14, Gibson teaches that the ester wax component (which reads on the claimed “component C)” is incorporated in amounts ranging from about 6.5 to about 60 wt. % ([0064]).
Regarding claim 15, Gibson teaches that the bisamide wax is included in the lubricant composition in amounts ranging from about 6.5 to about 60 wt. % ([0064]) and that the oxidized polyethylene wax is included in the lubricant composition in amounts ranging from about 5.0 to about 50 wt.% ([0064]). The weight ratio of these two components may therefore range between 0.13 (6.5% bisamide and 50% oxidized polyethylene) and 12.0 (60% bisamide and 5% oxidized polyethylene).
Regarding claim 16, Gibson teaches that the lubricant composition may be formed by mixing solid materials together ([0073]).
Regarding claims 18 and 19, Gibson teaches the formation of a composition containing the lubricant composition as well as a processing aid and a resin ([0074]), and teaches that the composition may be extruded into molding ([0003]), which reads on the claimed “binder composition.”
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Gibson (US 2006/0094802 A1) in view of Krupinski (US 2012/0021238 A1), and further in view of Heinrichs (US 2007/0203272 A1).
Regarding claim 5, Gibson as modified teaches all of the limitations of claim 1, as described above. Gibson as modified teaches that the bisamide is formed from the condensation of a diamine with fatty acids ([0059]), and teaches the use of ethylenediamine ([0059]). Gibson teaches the use of stearic acid, but differs from claim 5 because it is silent with regard to the use of 12-hydroxystearic acid.
In the same field of endeavor, Heinrichs teaches a wax composition useful as a processing aid for thermoplastics (Abstract), which includes an amide wax which is the reaction product of an alkylenediamine with 12-hydroxystearic acid (Abstract). Heincrichs teaches that the alkylenediamine is preferably ethylenediamine ([0017]), and teaches that the inventive waxes are compatible with other industrially-available waxes ([0024]). It therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the instant claims to incorporate 12-hydroxystearic acid, as taught by Heinrichs, into the bisamide wax of Gibson for the purpose of forming a bisamide wax suitable for improving the processability of thermoplastics.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Gibson (US 2006/0094802 A1) in view of Krupinski (US 2012/0021238 A1), and further in view of Demir (Journal of Applied Polymer Science 2013, 1948-1961).
Regarding claim 17, Gibson as modified teaches all of the limitations of claim 1 as described above. Gibson as modified teaches the use of the inventive formulation as an additive composition for polyvinylchloride (PVC) polymers ([0114]) and teaches that any common additives for PVC can be included in the formulation ([0115]). Gibson finally teaches that the other PVC additives may be combined with the inventive formulation prior to extrusion with the PVC resin ([0116]), thereby producing a lubricating formulation which also contains other PVC additives. Plasticizers, and particularly phthalate plasticizers, are known in the art to be a very common additive for PVC polymers (c.f. Demir, Abstract). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to incorporate phthalate plasticizers into the lubricant formulation of Gibson for the purpose of creating an additive package suitable for PVC extrusion.
Response to Arguments
Applicant's arguments filed May 15, 2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art documents fail to disclose the newly added limitation of claim 1, which requires that the composition is thixotropic. However, as described above, the composition of Gibson in view of Krupinski meets all of the claimed compositional limitations, and therefore will necessarily possess the claimed thixotropy characteristic.
The applicant argues that Gibson teaches away from thixotropy given that it is focused on lubricating compositions, stating that “a skilled person would understand that lubricants are generally intended to reduce viscosity and flow resistance, which teaches away from thixotropic structuring.”
As an initial matter, lubricants are, contrary to applicant’s assertion, understood to reduce friction within a composition, not necessarily to directly reduce viscosity and flow resistance per se (for example, a lubricant could be used with the intention of preventing undesirable molecular weight degradation due to friction-induced overheating of a polymer during extrusion, rather than merely reducing the viscosity of the composition).
Assuming arguendo that lubricants are intended to reduce viscosity however, a thixotropic effect, known in the art as “shear thinning,” is not contrary or mutually exclusive thereto. While a composition’s poise at rest is not decided by the mere incorporation of a lubricant, one having ordinary skill in the art would understand that the incorporation of a lubricant would, by the applicant’s definition of a lubricant, reduce the viscosity of the composition relative to a non-lubricated composition. The incorporation of a lubricant would therefore be understood to reduce viscosity at essentially all shear rates, but would not be understood as necessarily precluding thixotropy. Importantly, the Applicant has not provided evidence to substantiate the assertion that a reduction in viscosity and flow resistance “teaches away from thixotropic structuring” – to the contrary, it appears that the reduction of flow resistance, is often a common characteristic of thixotropic and lubricating additives.
Applicant argues that Gibson and Krupinski do not, individually, explicitly contemplate thixotropic behavior. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that there is not teaching or reasonable expectation that the combined prior art documents would possess “a structured, gel-forming additive.” However, the claim merely requires thixotropy and, as described above, said characteristic would necessarily be present in the combined prior art composition because said composition meets all of the claimed compositional limitations.
Applicant contends that “a reasoned basis for modification and a reasonable expectation of success” is required to combine documents. Applicant asserts that the Examiner has shown that the two documents can be combined, but has not shown a reasonable expectation of success in doing so. However, as described above, the Examiner has explained that Krupinski teaches a polymer composition containing polymer resin particles (Abstract), and the use of polymers which are also featured in the teachings of Gibson (c.f. polyvinyl chloride and polyethylene/polybutadiene copolymers featured in both Gibson at [0004] and [0049] and Krupinski at [0037]). Krupinski also teaches the incorporation of lubricants (c.f. [0080] of Krupinski and Abstract of Gibson), and teaches that, among others, ester waxes and hydrogenated castor oil are suitable lubricants for the formulation ([0080]). The two prior art documents therefore contemplate similar polymers and similar waxes. Additionally, as described above, it is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). The Examiner has therefore shown that there are significant levels of compositional overlap between the two documents and that particular components incorporated into the primary reference from the secondary reference would have been prima facie obvious. The Examiner has therefore shown how one having ordinary skill in the art would reasonably expect to find success in combining the prior art references.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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