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 Arguments
From the non-final Office Action dated 3 September 2025:
Claims 1 – 9 were rejected under 35 U.S.C. § 103 as being obvious 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).
Claims 1 – 9 were rejected on the ground of non-statutory Double Patenting over claims 1-9 of co-pending application 18/022,980 in view of Kawanami et al. (US 2018/0056267 A1).
Claims 1 – 9 were rejected on the ground of non-statutory Double Patenting over claims 1-5 & 8-11 of co-pending application 18/023,260 in view of Kawanami et al. (US 2018/0056267 A1).
In response, Applicant traverses the rejection without amendments. No new matter has been entered. In regards to the double patenting rejections, Applicant states if obviousness-type double patenting exists between allowable subject matter in the instant application and claims of 18/022,980 Applicant will file a terminal disclaimer.
The Applicant has filed a terminal disclaimer regarding application 18/023,260 which was granted the patent (US 12,528,931 B2) in January 2026.
The Applicant submits that Kim relates to a completely different technical concept from the claimed invention, that Kim requires terephthalates rather than isophthalates, and that Kim utilizes different isomeric alcohols as starting materials (p. 4, bottom half – p. 5, top half).
In response to applicant's arguments against Kim individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). While Kim alone teaches terephthalates, the combination of references as applied in the rejection reads on all features of the claimed invention. Additionally, while Kim discloses a variety of isomeric alcohols as starting materials, each is recognized by the prior art as being suitable for its intended purpose. Therefore it would have been obvious to select the claimed combination of isomers as stated in the rejection.
The Applicant states isophthalates and terephthalates are completely different materials and points to empirical data from examples in the specification (p. 5, bottom half – p. 6, top two paragraphs).
Examiner notes the empirical data supplied by the Applicant, however, said data is not commensurate in scope with the claims and the Applicant has not provided an explanation regarding how the exemplified results could reasonably be extended to the full scope of the claims. Applicant must show unexpected results over the entire claimed ranged to support unexpected results for the entire range and generic structures. Whether 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). Therefore, the examples are insufficient to establish nonobviousness of the claims.
The Applicant argues Kawanami merely discloses isophthalates and terephthalates as theoretical candidates of suitable compounds for use as Kawanami’s component (A).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The modification of Kim in view of Kawanami, detailed in the prior Office Action as well as herein, is a substitution/combination of equivalents. This is prima facie obvious as detailed in MPEP § 2144.06.
This rejection is FINAL.
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.
Claims 1 – 9 are rejected as being obvious over Kim et al. (WO 2020/045901 A1; US 12,122,895 B2 referenced herein as English equivalent), 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. Examples 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) 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).
In an embodiment (col. 9, lines 7-15), Kim details 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.
In view of the above disclosures, Kim provides disclosures effectively teaching:
- 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.
As such, Kim teaches the invention of the instant application but with terephthalates, whereas the claims require isophthalates.
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; dihexyl isophthalate and terephthalate; and diisohexyl 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 terephthalate esters taught by Kim with their corresponding isophthalate esters taught by Kawanami, 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.
Modification of Kim in view of Kawanami as detailed above results in a composition comprising dihexyl isophthalate, di-2-ethylhexyl isophthalate and alcohols reading on 1-hexanol, 2-methylpentanol & 3-methylpentanol. Modification in this way reads on claims 1, 2 & 7 of the present 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 & the like (col. 7, lines 54-55). Kim discloses a suitable mixture alcohol 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. 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 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) isophthalate, and as such, said weight ratios do not need to be taught by the prior art.
Regarding claim 6, maintaining the modification of Kim in view of Kawanami previously detailed, Kim details 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 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) isophthalate and di(n-hexyl) isophthalate, both in amounts of 0.5 to 95 wt.%, as Kim teaches a mixture of at least two such analogous (tere)phthalates (col. 20, claim 4). As such, both di(2-ethyl hexyl) isophthalate and di(n-hexyl) isophthalate will be present in the plasticizer composition in a weight ratios spanning more than the claimed 10:90 to 90:10 weight ratio.
In the alternative, it would have been obvious to one of ordinary skill in the art to combine dihexyl isophthalate and di(2-ehtylhexyl) isophthalate in any amounts such that they fall within the claimed ranges. 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.
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/022,980 (hereafter ‘980) 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.
Regarding claim 1, claim 1 of ‘980 teaches a plasticizer composition comprising dihexyl isophthalate and di(2-ethylhexyl) 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 di-2-ethylhexyl terephthalate taught by ‘980 with di-2-ethylhexyl isophthalate 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 limitations of instant claim 2 and 6-9 are taught by claims 2 and 6-9 of ‘980 modified in view of Kawanami.
Regarding claims 3 – 5, maintaining the modification of ‘980 in view of Kawanami previously detailed, claims 3 – 5 depend on claim 1 which was rejected on the basis of nonstatutory double patenting above. Instant claims 3 – 5 differ from the reference application only in that they recite overlapping ranges. 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.
This is a provisional nonstatutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762