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 .
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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed April 30, 2026, with respect to the rejection in view of Hammoud and Schilling (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant argues that a person having ordinary skill in the art would not combine the teachings of Hammoud and Schilling as Hammoud utilizes a vegetable oil specifically as a “fragrance oil” to impart scent to PVC while Schilling is directed to non-phthalate plasticizers intended to reduce exudation. However, Hammoud explicitly teaches that the fragrance oil that is a vegetable oil is used as a plasticizer (see, e.g., Title of Hammoud). Moreover, Hammoud contemplates that the inventive oil alleviates issues associated with exudation/migration of conventional plasticizers (see, e.g., [0006] of Hammoud). Therefore, even if Hammoud contemplates an additional benefit of fragrance, a person having ordinary skill in the art would recognize that Hammoud is directed towards plasticizer compositions for PVC, as is Schilling. It is therefore the position of the Office that Hammoud and Schilling are analogous art because they are directed towards the same field of endeavor, namely, plasticizers for PVC compositions. Furthermore, as put forth in the outstanding rejection, combination of the plasticizers of Hammoud and Schilling which are taught to be useful for the same purpose (i.e., plasticizing PVC) is prima facie obvious (see MPEP 2144.06 I).
Applicant has amended claim 1 to recite the limitations of canceled claims 2, 3, and 6. Applicant alleges that the calculation by the Office that was previously included in the rejection of claim 6 (see previous Office Action) erroneously presents relative amounts of plasticizer components calculated as a composition including a resin, while the instant claims recite parts as a proportion of a plasticizer composition (i.e., excluding a resin). As a threshold matter, it is the position of the Office that the instant claims recite a plasticizer composition “comprising” the claimed components, which is inclusive or open-ended and does not exclude additional, unrecited elements (e.g., a resin) (see MPEP 2111.03 I). Furthermore, the amounts presented within the previous rejection even when taken as a proportion of a plasticizer only (excluding the amount of a resin) still overlap with, and therefore render obvious, the claimed plasticizer composition:
Hammoud teaches an exemplary composition comprising 500 g PVA mixed with 150 g of a fragrance oil ([0045]) which may be a vegetable oil ([0021]). Converted to parts based on 100 parts by weight of the plasticizer composition, the exemplary composition of Hammoud yields an amount within the claimed range for vegetable oils:
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Hammoud further teaches that additional plasticizers, including epoxidized vegetable oils and cyclohexane dicarboxylate-based compounds, e.g., DINCH (di(isononyl)cyclohexane-1,2-dicarboxylate) ([0034]), may be used in addition to the fragrance oil which may be a vegetable oil ([0034]), but does not teach an amount for said epoxidized vegetable oil or a dicarboxylic acid esters cyclohexane dicarboxylate.
Schilling further teaches a plasticizer composition comprising, based on 100 parts PVC:
50 to 80 parts per 100 parts resin of a cyclohexane dicarboxylate-based compound having the structure shown in ([0005]), and
20 to 25 parts per 100 parts resin of a secondary plasticizer ([0032]) which may be an epoxidized soybean oil ([0018]).
Considering the ranges and relative amounts of the corresponding components taught by Hammoud and Schilling, the references embrace a plasticizer composition having 30 phr vegetable oil, 60 phr 1,4-(2-ethylhexyl)cyclohexane dicarboxylate (DOCH) (as in the DOCH example within Table Four of Schilling, pg. 5), and 20 phr of epoxidized soybean oil (an amount of a secondary plasticizer that is within the range taught by Schilling (see [0032] and [0018]). The relative amounts taught by the references are related to the claimed “parts by weight” of the plasticizer composition by the formula:
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which yields the relative amounts of 54.5 parts DOCH (1,4-(2-ethylhexyl)cyclohexane dicarboxylate), 27.3 parts vegetable oil, and 18.2 parts by weight of epoxidized vegetable oil. Therefore, the combination of references renders obvious the specific inter-component ratios of the three-component plasticizer system defined in claim 1 based on 100 parts by weight of plasticizer components.
Applicant further argues that the claimed three-component plasticizer system provides a synergistic effect that improves thermal stability, low-temperature stability, and viscosity based on the comparison within the instant specification between Comparative Examples 4 and 6, which exhibit degradation of low-temperature stability and viscosity characteristics compared to three-component compositions. It is noted that “whether the 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” (see MPEP 716.02(d)). In this instant case, it would appear that the claimed species of vegetable oils and epoxidized vegetable oils used for Examples 1-3 (i.e., one species for each of vegetable oil and epoxidized vegetable oil) are not commensurate in scope with the claimed scope, which recites the broad genera of vegetable oils and epoxidized vegetable oils.
Applicant’s arguments and amendments have been considered and are fully addressed in the remarks above and rejections below.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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, 4, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hammoud et al. (WO2015007263A2, English translation provided for citations, hereinafter referred to as “Hammoud”) and Schilling et al. (US 20180105673, hereinafter referred to as “Schilling”).
As to Claim 1: Hammoud teaches a PVC plastic containing a fragrance oil as a plasticizer ([0002]) wherein said fragrance oil may be a vegetable oil ([0021]). Hammoud further teaches that additional plasticizers, including epoxidized vegetable oils, may be used in addition to the fragrance oil which may be a vegetable oil ([0034]).
Hammoud contemplates that dicarboxylic acid esters are known within the art as suitable plasticizing compounds ([0007]), but does not teach a structure associated said dicarboxylic acid esters.
Schilling teaches a plasticizer for PVC compositions (Abstract) wherein said plasticizer may be a cyclohexane dicarboxylate plasticizer having the structure:
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wherein R may be, a C1 to C13 alkyl group, which yields a structure that reads on the claimed Chemical Formula (1), for example, 1,4-(2-ethylhexyl)cyclohexane dicarboxylate (Abstract). Schilling further teaches that such cyclohexane dicarboxylate plasticizers may also be used with secondary plasticizers, including epoxidized soybean oil (i.e., an epoxidized vegetable oil). Hammoud and Schilling are considered analogous art because they are directed towards the same field of endeavor, namely, plasticizers for PVC compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a cyclohexane dicarboxylate plasticizer having the claimed structure, such as 1,4-(2-ethylhexyl)cyclohexane dicarboxylate, within the plasticizers of Hammoud and the motivation would have been that Hammoud teaches that additional plasticizers, including epoxidized vegetable oils, may be used in addition to the fragrance oil which may be a vegetable oil ([0034]) and further recognizes that dicarboxylic acid esters are known within the art as suitable plasticizing compounds while Schilling teaches that cyclohexane dicarboxylate plasticizer having the claimed structure, such as 1,4-(2-ethylhexyl)cyclohexane dicarboxylate, are known within the art for use as plasticizers for PVC compositions having improved compatibility and decreased exudation in the presence of secondary plasticizers (Abstract of Schilling). Thus, a person having ordinary skill within the art would combine the plasticizing compounds of Hammoud and Schilling which are useful for the same purpose of plasticizing PVC compositions with reasonable expectation of success.
Hammoud further teaches an exemplary composition comprising 500 g PVA mixed with 150 g of a fragrance oil ([0045]) which may be a vegetable oil ([0021]). Converted to parts based on 100 parts by weight of the plasticizer composition, the exemplary composition of Hammoud yields an amount within the claimed range for vegetable oils:
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Hammoud further teaches that additional plasticizers, including epoxidized vegetable oils and cyclohexane dicarboxylate-based compounds, e.g., DINCH (di(isononyl)cyclohexane-1,2-dicarboxylate) ([0034]), may be used in addition to the fragrance oil which may be a vegetable oil ([0034]), but does not teach an amount for said epoxidized vegetable oil or a dicarboxylic acid esters cyclohexane dicarboxylate.
Schilling further teaches a plasticizer composition comprising, based on 100 parts PVC:
50 to 80 parts per 100 parts resin of a cyclohexane dicarboxylate-based compound having the structure shown in ([0005]), and
20 to 25 parts per 100 parts resin of a secondary plasticizer ([0032]) which may be an epoxidized soybean oil ([0018]).
Considering the ranges and relative amounts of the corresponding components taught by Hammoud and Schilling, the references embrace a plasticizer composition having 30 phr vegetable oil, 60 phr 1,4-(2-ethylhexyl)cyclohexane dicarboxylate (DOCH) (as in the DOCH example within Table Four of Schilling, pg. 5), and 20 phr of epoxidized soybean oil (an amount of a secondary plasticizer that is within the range taught by Schilling (see [0032] and [0018]). The relative parts by weight of the overall plasticizer (i.e., excluding the amount of resin) can be calculated by:
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which yields the relative amounts of 54.5 parts DOCH (1,4-(2-ethylhexyl)cyclohexane dicarboxylate), 27.3 parts vegetable oil, and 18.2 parts by weight of epoxidized vegetable oil. These amounts overlap with the claimed ranges for an amount of a vegetable oil, cyclohexane dicarboxylate-based compound, and an epoxidized vegetable oil. In the case where 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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range for the corresponding components taught by Hammoud, and the motivation to have done so would have been, as Schilling suggests, that the overlapping portion is a useable range for an amount of a cyclohexane dicarboxylate-based compound and a secondary plasticizer which may be an epoxidized vegetable oil within a mixture of plasticizers suitable for plasticizing PVC.
As to Claim 4: Hammoud and Schilling teach the plasticizer composition of claim 1 (supra).
Hammoud further teaches that the fragrance oil which may be a vegetable oil ([0021]) may be chosen from, inter alia, soybean oil, castor oil, linseed oil, palm oil, and olive oil ([0028]).
As to Claim 5: Hammoud and Schilling teach the plasticizer composition of claim 1 (supra).
Hammoud further teaches that additional plasticizers, including epoxidized vegetable oils, may be used in addition to the fragrance oil which may be a vegetable oil ([0034]). However, Hammoud does not teach the source of the vegetable oil (e.g., soybean, etc.).
Schilling teaches that secondary plasticizers are typically used in conjunction with primary plasticizers (Schilling explicitly identifies 1,4-(2-ethylhexyl)cyclohexane dicarboxylate as a known primary plasticizer for PVC compositions ([0014])) and further teaches that epoxidized soybean oil is a known secondary plasticizer ([0018]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select epoxidized soybean oil as the epoxidized vegetable oil recited by Hammoud and the motivation would have been that Schilling explicitly teaches that epoxidized soybean oil is a known species of epoxidized vegetable oil suitable for its intended purpose of addition to cyclohexane dicarboxylate plasticizers as a secondary plasticizer. The selection of a known material based on its suitability for its intended use is prima facie obvious (see MPEP 2144.07).
As to Claim 7: Hammoud and Schilling teach the plasticizer composition of claim 1 (supra).
Hammoud and Schilling are silent towards the state of the composition at -20 ˚C to -10 ˚C.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., the final paragraph on pg. 11 of the instant specification suggests that the freezing behavior of the composition may be controlled by the amount of cyclohexane dicarboxylate-based compound present in the composition). Therefore, the claimed effects and physical properties, i.e. state of the composition at a given temperature (e.g., -20 ˚C to -10 ˚C ), would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on (571) 272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.L.G.D./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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