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 Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 3/11/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 102/103
Claims 1-3 and 5-8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sukigara (JP 2014-240473, machine translation).
The rejection is adequately set forth in paragraph 3 of the Office action mailed on 9/12/2025 and is incorporated here by reference.
Claim Rejections - 35 USC § 103
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sukigara (JP 2014-240473, machine translation) in view of Ayabe (US 2015/0353710).
The rejection is adequately set forth in paragraph 4 of the Office action mailed on 9/12/2025 and is incorporated here by reference.
Response to Arguments
Applicant's arguments filed 3/11/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that light stabilizer bis(2,2,6,6-tetramethyl-4-piperidyl) sebacate does not read on claimed formula (1) because formula (1) is a monomeric structure.
It is the examiner’s position that formula (1) is not limited to a monomeric structure because the claim only requires that R6 is a “fatty acid residue having 7 to 29 carbon atoms.” Furthermore, the specification as originally filed does not require the fatty acid residue to be a hydrocarbon group. Bis(2,2,6,6-tetramethyl-4-piperidyl) sebacate has structure
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which clearly reads on claimed formula (1) when R1 is a hydrogen; R2, R3, R4, and R5 are methyl; and R6 is a fatty acid residue having 10 carbon atoms. The fatty acid residue of bis(2,2,6,6-tetramethyl-4-piperidyl) sebacate is this portion
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which includes sebacic acid (a fatty acid) residue.
Applicant argues that Sukigara fails to disclose or suggest the claimed L* (0 h) or LI (2,040 h) or ΔE, i.e., claimed properties which are related to weather resistance.
Sukigara teaches that the stabilizers improve weather resistance (paragraph 0055). It is inherent or at least expected that a composition comprising a light stabilizer (though not identical to the ones in Applicant’s own examples of the specification) and an antioxidant provides for the claimed properties.
Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, Sukigara inherently has the claimed properties. Alternatively, it would have been obvious to one of ordinary skill in the art to arrive at the claimed properties given that Sukigara exemplifies a polyolefin formulation comprising the two light stabilizers and teaches that weather resistance is improved. Applicant has not provided evidence to establish criticality for the claimed properties with Applicant’s exemplified light stabilizer and antioxidant. Specifically, Comparative Example 1 comprises polypropylene homopolymer and not the ethylene-octene copolymers exemplified by Sukigara (paragraph 0153, Comparative Example 2 does not contain a light stabilizer containing a fatty acid residue, and Comparative Example 3 does not comprise light stabilizer or antioxidant (Table 3 of the specification). Case law holds that comparative showings must compare the claimed subject matter with the closest prior art to be effective. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979).
Conclusion
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 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 VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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