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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 in the reply filed on November 12, 2025 is acknowledged.
Claims 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 12, 2025.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on December 26, 2022, April 17, 2023, February 13, 2024, May 25, 2024, and August 21, 2024 were filed. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the Office.
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 1-7 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.
As to Claim 2: Hammoud and Schilling teach the plasticizer composition of claim 1 (supra).
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 1-1. Schilling also explicitly identifies 1,4-(2-ethylhexyl)cyclohexane dicarboxylate as a known primary plasticizer for PVC compositions (Abstract and [0014]). 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.
As to Claim 3: Hammoud and Schilling teach the plasticizer composition of claim 1 (supra).
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. Schilling also explicitly identifies 1,4-(2-ethylhexyl)cyclohexane dicarboxylate as a known primary plasticizer for PVC compositions (Abstract and [0014]), which reads on the claimed di(2-ethylhexyl)cyclohexane-1,4-dicarboxylate. 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.
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 6: Hammoud and Schilling teach the plasticizer composition of claim 1 (supra).
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 of a cyclohexane dicarboxylate-based compound having the structure shown in ([0005]), and
20 to 25 parts of a secondary plasticizer ([0032]) which may be an epoxidized soybean oil ([0018]).
These amounts overlap with the claimed ranges for an amount of a 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 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.
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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/C.L.G.D./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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