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
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and 102/103 rejections have been maintained and repeated.
Claim Rejections - 35 USC § 102
Claim(s) 1-4 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohtsubo et al. (TW 201434957, machine translation provided).
As to claims 1-4, Ohtsubo (claims, abs., pg. 5-6, Ex. 1-4) discloses a polyester modifier having Mn 500-1800 and a content of the polyester resin having a molecular weight of less than 350 contained in the modifier composition is 3% by mass or less. In Ex. 1, a polyester is prepared by polymerizing 1,2-propanediol, adipic acid, and benzoic acid as a monocarboxylic acid. The Mn is 590, and content of the polyester resin having a molecular weight of less than 350 was 2.0% by mass.
Ohtsubo is silent on the intended use of "plasticizer for vinyl chloride resin” of claim 1. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional difference between the claimed and disclosed polyester, and the disclosed composition would inherently be capable of performed the claimed intended use.
Claim Rejections - 35 USC § 103
Claim(s) 4-6 and 11-14 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Ohtsubo et al. (TW 201434957, machine translation provided).
Disclosure of Ohtsubo is adequately set forth in ¶1 and is incorporated herein by reference.
As to claims 6 and 11-14, the disclosed Mn 500-1800 overlaps with the claimed range (1500-4000). It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
As to claims 4-5, Ohtsubo (pg.5) discloses adding mono acid such as 2-ethylhexyl acid (among 7 candidates) or monool such as 2-ethyl-1-hexanol (among 15 candidates) with preferred diol of ethylene glycol and preferred diacid of adipic acid. In light of this, one having ordinary skill in the art would obviously recognize to prepare the claimed polyester by selecting aforementioned 2-ethylhexyl acid/2-ethyl-1-hexanol, adipic acid, and ethylene glycol, because although many compositions are disclosed in the reference and therefore anticipation does not appear to be present, it has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combination less obvious (Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989).
Claim(s) 1-6 and 11-14 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Hamsen et al. (US 5786442).
As to claims 1-6 and 11-14, Hamsen (claims, abs., 2:10-68, Ex. 1) discloses a polyester plasticizer for polyvinyl chloride having Mn 2000-8000 and having a content of molecular weight of less than 800 contained in the plasticizer of less than 1.5% by mass. The exemplary polyester (EX.1) is prepared via adipic acid, propylene glycol (1,2-Propanediol), and 2-ethylhexanol. The disclosed molecular weights overlap with the claimed ranges: (1500-4000) and <600. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
The examiner disagrees with applicant’s attack on Ohtsubo (pg.3-4). The attack appears merely arguementative. Ohtsubo (claims, abs., pg. 5-6, Ex. 1-4) discloses a polyester modifier having Mn 500-1800 and a content of the polyester resin having a molecular weight of less than 350 contained in the modifier composition is 3% by mass or less. In Ex. 1, a polyester is prepared by polymerizing 1,2-propanediol, adipic acid, and benzoic acid as a monocarboxylic acid. The Mn is 590, and content of the polyester resin having a molecular weight of less than 350 was 2.0% by mass. The examiner asserts the cited Ex.1 of Ohtsubo anticipates claims 1-4:
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The examiner asserts the previous 103 rejection over Ohtsubo because of the overlapping range. As to claims 6 and 11-14, the disclosed Mn 500-1800 overlaps with the claimed range (1500-4000). It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05. Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicants to show otherwise. A case indicating that the burden of proof can be shifted to the applicant to show that the subject matter of the prior art does not possess the characteristic relied on whether the rejection is based on inherency under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 2184. In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). The applicant fails to provide evidence rebutting the overlapping rationale.
The applicant attacked Hamsen by citing Fig. 1 of Hamsen and argued that one of ordinary skill in the art would understand from Fig. 1 that Hamsen discloses that the resulting polyester mixture contained at most 2.0wt% of low-molecular polyesters having a molecular weight of under 800. As such, one of ordinary skill in the art would readily understand that low molecular weight components with a molecular weight of 600 are clearly less than 0.5wt% in Fig. 1. Hamsen does teach said wt% from Fig.1. The applicant fails to provide evidence to show said wt% derived from Fig.1. Hamsen (claims, abs., 2:10-68, Ex. 1) discloses a polyester plasticizer for polyvinyl chloride having Mn 2000-8000 and having a content of molecular weight of less than 800 contained in the plasticizer of less than 1.5% by mass. The exemplary polyester (EX.1) is prepared via adipic acid, propylene glycol (1,2-Propanediol), and 2-ethylhexanol. The disclosed molecular weights overlap with the claimed ranges: (1500-4000) and <600. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Therefore, the previous restriction and 102/103 rejections have been maintained and repeated.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766