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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/26/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites the limitation "the alkyl group having 5 to 20 carbon atoms" in claim 6. There is insufficient antecedent basis for this limitation in the claim. The range in claim 6 is 8 to 20 carbon atoms.
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.
Claim(s) 6, 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tu et al. (CN 110643179A).
Tu et al. teach a method of adding 0.2 to 0.5 part by weight of an antioxidant to polyphenylene sulfide to enhance the moldability of the polyphenylene sulfide [0004-0005, 0008, 0044; Examples]. Tu et al. teach zinc dialkyl dithiophosphate [0044] as the antioxidant.
Tu et al. fail to specify the alkyl group of the zinc dialkyl dithiophosphate.
However, Tu et al. teach dihexyl as the dialkyl group for an analogous dithiophosphate [0044].
It would have been obvious to one of ordinary skill in the art before effective filing date of the claimed invention to use zinc dihexyl dithiophosphate as the antioxidant in Tu et al.
An alkyl group of 6 carbon atoms is very close structurally to an alkyl group having 8 carbon atoms, and a hexyl group is structurally similar to octyl an octyl group.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, paragraph II.A.4.(c).
Response to Arguments
Applicant's arguments filed 1/26/2026 have been fully considered but they are not persuasive.
The Applicant has made the argument that Tu teaches the dihexyl group with a copper compound instead of a zinc compound. This is not persuasive because both are metal dialkyl dithiophosphate compounds, which are both utilized as antioxidants. Since Tu is silent on the alkyl group for the zinc compound, it would have been obvious to use dihexyl as the alkyl group since it is utilized in an analgous compound in Tu for the exact same purpose. The only difference is the metal. A difference in metal does not constitute a teaching away as alleged by the Applicant. It is noted that zinc and copper are similar transition metals that are right next to one another on the Periodic Table.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
With regard to the alkyl chain length, the applicant does not have any data to show any difference between a hexyl group and an octyl group. The instant Example in the specification does not even identify the alkyl chain length.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN E USELDING/ Primary Examiner, Art Unit 1763