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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 June 2026, has been entered.
Response to Arguments
In response to the Office Action (dated 16 March 2026), the Applicants submit the following:
-- Dependent claim 6 has been canceled.
-- The independent base claim 1 has been amended with the limitations established by the now canceled claim 6.
-- No new matter has been entered.
The Applicant’s remarks have been thoroughly reviewed & fully considered but are ultimately found unpersuasive in view of the amended claims.
The Applicant states Kawanami does not establish the equivalence of Terephthalate and Isophthalate, and challenges the motivation to combine prior art references (Remarks, p. 5).
Examiner acknowledges the above. Kawanami goes beyond a mere listing of compounds. The reference identifies suitable plasticizers (A) based on boiling point, solubility parameter, and the degree of swelling they may impart to the thermoplastic resin (p. 3, [0045]-[0048]). Kawanami then identifies a wide range of compounds that fit these criteria, among which are listed both phthalate and isophthalate diesters (p. 4, [0053]). The phthalates and isophthalates are listed in parallel as equally suitable alternatives which have the necessary characteristics to function as component (A). Therefore, the prior art recognizes that these compounds exhibit sufficiently similar behavior to be used interchangeably or in combination with a reasonable expectation of success.
Applicants challenges the rejection of (now canceled) claim 6 and maintains the prior art does not teach or suggest the amended weight ratio as required by the (now amended) independent base claim 1. The Applicants find fault with this by concluding the Examiner's argument requires first substituting a terephthalate with an isophthalate (which the Examiner has shown is proper, as demonstrated above), and then extrapolating weight ranges taught for individual terephthalate components to define a ratio between the resulting isophthalate/terephthalate pair (Remarks, p. 6).
Examiner notes that the above summary is incorrect. The equivalence of dihexyl terephthalate, dihexyl isophthalate &/or dihexyl phthalate has been established (via Kawanami). Prior art teaches a plasticizer composition including three terephthalates: a lower alkyl terephthalate, a terephthalate of a different carbon number type and a higher alkyl terephthalate (col. 8, lines 7-13), each can be included in an amount of 0.5 to 50 wt.%, 3.0 to 70 wt.% and 0.5 to 95 wt.% based on the total weight of the plasticizer composition. Preferably, the lower alkyl has 5 or 6 carbon atoms (col. 6, lines 24-25) and the higher alkyl may have 6 to 8 carbons (col. 5, lines 48-49). Thus, alkyl groups with 6 carbons may abide by limitations of higher alkyl terephthalates.
As shown above, the Office action did not define a weight ratio between the resulting dihexyl isophthalate and di(2-ethylhexyl) terephthalate. Examiner found and provided prior art teaching the equivalence of compounds, enabling proper substitution of compounds, then abided by disclosures for a plasticizer composition disclosed by the prior art.
Lastly, the weight ratio limitation for the phthalates of 90:10 – 10:90 detailed in the amended base claim 1 is taught by claim 6 of patent application 18/023,323 (as detailed in the Double Patenting rejection herein).
The arguments provided by the Applicant pertaining to the double patenting rejection(s) herein are considered moot in view of the above rebuttals and the rejection herein.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 5 & 7 – 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Kim et al. (WO 2020/045901 A1; via English equivalent US 12,122,895 B2) in view of Kawanami et al. (US 2018/0056267 A1).
Regarding claims 1, 2 & 7, Kim teaches a plasticizer composition comprising at least two kinds of terephthalates wherein ester groups join alkyl groups to the terephthalates. The carbon number of alkyl groups bonded to said ester groups may be different (i.e., lower alkyl or higher alkyl) or the same (Abstract). Preferably, the lower alkyl has 5 or 6 carbon atoms (col. 6, lines 24-25) and the higher alkyl may have 6 to 8 carbons (col. 5, lines 48-49).
Kim provides examples of alkyl groups having 5 – 7 carbons (col. 7, lines 23-27), Kim teaches this mix of alkyl groups may be obtained from a mixture alcohol. When the alkyl group has 6 carbons, n-hexyl and isohexyl are preferred.
Kim provides “isohexyl” as a generic term for branched alkyl groups with 6 carbons. Example include 2-methylpentyl, 3-methylpentyl, 4-methylpentyl, 2-ethylbutyl, 2,2-dimethylbutyl, 2,3-dimethylbutyl, 2-ethylbutyl, 3-ethylbutyl, or the like can be applied. (col. 5, lines 31-37). Alcohols of these isomers (i.e., 2-methylpentanol for 2-methylpentyl, etc.) are all branched alcohols.
For alkyl groups with 6 carbons, when the alkyl groups are derived from a mixture alcohol, the alkyl groups may include n-hexyl, 2-methylpentyl, 2-ethylbutyl, and the like. The mixture alcohol may comprise these isomers as well as the ones previously described (col. 7, lines 53-57).
Suitable mixture alcohols may comprise n-hexanol and isohexanol (col. 8, lines 42-46).
Kim details an embodiment (col. 9, lines 7-15) teaching the exchange of alkyl groups between the terephthalate & the alcohol (i.e., transesterification), wherein di(2-ethylhexyl) terephthalate reacts with a mixture alcohol containing alcohol isomers with the same number of carbons. The mixture alcohol may comprise n-hexanol and isohexanol.
In view of the disclosures above, Kim effectively teaches:
-- A plasticizer composition of at least 2 terephthalates comprising alkyl groups
-- The alkyl groups may be derived from a mixture alcohol
-- The mixture alcohol may comprise n-hexanol (i.e., 1-hexanol // straight alcohol), isohexanol (i.e., 4-methylpentanol // branched alcohol), 2-methylpentanol (for 2-methylpentyl), 2-ethylbutanol (for 2-ethylbutyl) & 3-methylpentanol (for 3-methylpentyl).
-- A method of incorporating the alkyl groups into the phthalate via transesterification, demonstrated with di(2-ethylhexyl terephthalate).
In summary, Kim teaches terephthalates whereas the claims require an isophthalate and a terephthalate.
In the same field of endeavor, Kawanami teaches microspheres and a component (A) (Abstract) which are used in combination with base polymers such as polyvinyl chloride (p. 10, [0137]). Component (A) functions as a plasticizer (p. 3, [0039]). Suitable plasticizers include various dialkyl esters of both terephthalic and isophthalic acid. Examples include di-2-ethylhexyl isophthalate and terephthalate; dihexyl isophthalate and terephthalate; and diisohexyl isophthalate and terephthalate (p. 4, [0053]). Thus, Kawanami recognizes terephthalate and isophthalate esters of 2-ethylhexanl, n-hexanol and isohexanol as equivalents suitable for the same purpose.
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the dihexyl terephthalate taught by Kim with dihexyl isophthalate as Kawanami recognizes them as equivalents suitable for the same purpose. It would have been further obvious to one of ordinary skill in the art to combine dihexyl isophthalate and di(2-ehtylhexyl) terephthalate in any amounts such that they fall within the claimed ranges.
In the alternative, Kim details a plasticizer composition including three terephthalate: a lower alkyl terephthalate, a terephthalate of a different carbon number type and a higher alkyl terephthalate (col. 8, lines 7-13), each can be included in an amount of 0.5 to 50 wt.%, 3.0 to 70 wt.% and 0.5 to 95 wt.% based on the total weight of the plasticizer composition.
As previously stated above, preferably the lower alkyl has 5 or 6 carbon atoms (col. 6, lines 24-25) and the higher alkyl may have 6 to 8 carbons (col. 5, lines 48-49). Thus, alkyl groups with 6 carbons abide by limitations of both lower & higher alkyl terephthalates. Observing the embodiment wherein the higher alkyl terephthalate is present in amounts of 0.5 – 95 wt.%, it would have been obvious to one of ordinary skill in the art at the time of filing to include di(2-ethyl hexyl) terephthalate and dihexyl isophthalate, both in amounts of 0.5 to 95 wt.%, as Kim teaches a mixture of at least two such di(2-ethyl hexyl) terephthalate & dihexyl terephthalate (col. 20, claim 4). As such, both di(2-ethyl hexyl) terephthalate and di(n-hexyl) isophthalate will be present in the plasticizer composition in a weight ratio of from 10:90 to 90:10.
A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07. Modification of Kim in view of Kawanami as detailed above results in a plasticizer composition comprising di(2-ethylhexyl) terephthalate and dihexyl isophthalates derived from alcohols reading on 1-hexanol, 2-methylpentanol & 3-methylpentanol. Modification in this way reads on claims 1, 2 & 7 of the instant application.
Regarding claims 3 – 5, maintaining the modification of Kim in view of Kawanami previously detailed, for alkyl groups with 6 carbons, when the alkyl groups are derived from a mixture alcohol, the alkyl groups may include n-hexyl, 2-methylpentyl, 2-ethylbutyl (col. 7, lines 54-55).
Kim discloses a suitable mixture alcohols for the esterification (direct &/or transesterification) process of terephthalates. Said suitable mixture may comprise n-hexanol and isohexanol (col. 8, lines 42-46).
In both disclosures, Kim details a mixture alcohol comprising a straight alcohol (n-hexanol) and a branched alcohol (isohexanol, 2-methylpentyl, 2-ethylbutyl, etc.).
As such, said mixture alcohol will have a straight alcohol and a branched alcohol, reading on the limitations established by claims 3, 4 & 5 of the instant application.
The weight limitations on said alcohols established in claims 3, 4 & 5 dictate limitations & requirements for starting materials only. These limitations do not apply to the final products, place no further limitation on the weight ratios of dihexyl isophthalate and di(2-ethylhexyl) terephthalate, and as such, said weigh ratios do not need to be taught by the prior art.
It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 8 & 9, maintaining the modification of Kim in view of Kawanami previously detailed, Kim discloses an embodiment of their invention: a resin composition including 100 parts by weight of a resin and 5 to 150 parts by weight of the plasticizer composition.
The resin may be selected from the group consisting of straight vinyl chloride polymers, paste vinyl chloride polymers, ethylene vinyl acetate copolymers, ethylene polymers, propylene polymers, polyketones, polystyrenes, polyurethanes, natural rubbers, and synthetic rubbers (col. 2, lines 33-42).
A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 5 & 7 – 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/023,323 (hereafter ‘323) in view of Kawanami et al. (US 2018/0056267 A1). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of ‘323 teaches a plasticizer composition comprising dihexyl isophthalate and di(2-ethylhexyl) isophthalate. In the same field of endeavor, Kawanami teaches microspheres including a component (A) (Abstract) which are used in combination with base polymers such as polyvinyl chloride (p. 10, [0137]). Component (A) functions as a plasticizer (p. 3, [0039]). Suitable plasticizers include various dialkyl esters of both terephthalic and isophthalic acid. Examples include di-2-ethylhexyl isophthalate and terephthalate; and dihexyl isophthalate and terephthalate (p. 4, [0053]). Thus, Kawanami recognizes terephthalate and isophthalate esters of 2-ethylhexanol, n- hexanol and isohexanol as equivalents suitable for the same purpose.
Claim 6 of ‘323 teaches a weight ratio for the phthalates in the range of 90:10 – 10:90 (p. 10, claim 6).
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the di-2-ethylhexyl isophthalate taught by ‘323 with di-2-ethylhexyl terephthalate, as Kawanami recognizes them as equivalents suitable for use in this capacity. It would have been further obvious to include the phthalates in amounts within the weight range as detailed by claim 6. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
The features of claims 2-5 & 7-9 are taught by claims 2-9 of ‘323 in view of Kawanami.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 5 & 7 – 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 & 8-11 of U.S. Patent No. US 12,528,931 B2 (hereafter ‘931) in view of Kawanami et al. (US 2018/0056267 A1).
Claim 1 of ‘931 teaches a plasticizer composition comprising one or more dihexyl benzene dicarboxylates, wherein the one or more dihexyl benzene dicarboxylates include one or more selected from dihexyl isophthalate and dihexyl terephthalate.
In the same field of endeavor, Kawanami teaches microspheres including a component (A) (Abstract) which are used in combination with base polymers such as polyvinyl chloride (p. 10, [0137]). Component (A) functions as a plasticizer (p. 3, [0039]).
Suitable plasticizers include various dialkyl esters of both terephthalic and isophthalic acid. Examples include di-2-ethylhexyl isophthalate and terephthalate; and dihexyl isophthalate and terephthalate (p. 4, [0053]). Thus, Kawanami recognizes terephthalate and isophthalate esters of 2-ethylhexanol, n-hexanol and isohexanol as equivalents suitable for the same purpose.
It would have been obvious to one of ordinary skill in the art at the time of filing to substitute the dihexyl terephthalate taught by ‘931 with di-2-ethylhexyl terephthalate as Kawanami recognizes them as equivalents suitable for use in this capacity. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
The features of claims 2-5 & 7-9 are taught by claims 2-5 and 8-11 of ‘931 in view of Kawanami.
Conclusion
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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