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All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 12/8/2025.
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 new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 12/8/2025. Specifically, claims 1, 12, and 19 have been amended to exclude phthalates and phosphate plasticizers, and claims 21 and 22 are new. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1, on which claim 11 depends, already excludes all phthalates. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1-9 and 11-21 are rejected under 35 U.S.C. 103 as being unpatentable over Toyoda (JP 08-311283, machine translation).
With respect to claims 1-3, 12, and 14-16, Toyoda discloses a vinyl chloride resin composition comprising 50-200 parts by weight of a plasticizer (plasticizer composition) comprising 2wt % or more of a flame-retardant plasticizer (paragraph 0005), wherein the flame-retardant plasticizer is a chlorinated fatty acid ester (paragraph 0009) such as pentachlorostearic acid alkyl ester (paragraph 0008), which has pentachlorostearate (which has chlorine content of 38 wt % calculated from the compound’s molecular weight of 471 g/mol and molar mass of 5 chlorines of 177 g/mol). Toyoda teaches that the remaining plasticizer is one that is effective at plasticizing polyvinyl chloride such as epoxidized soybean or linseed oil (paragraph 0008). Toyoda teaches that phthalate and phosphate plasticizers are optional, used in the alternative to epoxidized soybean or linseed oil or chlorinated fatty acid ester, respectively (paragraphs 0008-0009).
Toyoda fails to disclose with sufficient specificity so as to anticipate the combination of chlorinated ester and epoxidized soybean or linseed oil, it is perfectly proper for the examiner to look to the whole reference for what it teaches rather than merely rely on preferred embodiments. In re Courtright 153 USPQ 735 (CCPA 1967).
Therefore, it would have been obvious to one of ordinary skill in the art to prepare a plasticizer composition for polyvinyl chloride comprising at least 20 wt % chlorinated ester.
With respect to claims 4-9, 13, and 21, alkyl pentachlorostearate reads on formula (I) when R1 is chlorinated C17 hydrocarbyl, R2 is alkyl, and n = 1.
While Toyoda does not disclose how long the alkyl group is, it would have been obvious to one of ordinary skill in the art to select one having 1-18 carbon atoms like claimed because it is not disclosed as a long-chain hydrocarbon.
With respect to claims 11, Toyoda does not require the use of phthalate plasticizer in addition to the flame-retardant plasticizer.
With respect to claim 17, the composition is molded into an article (paragraph 0015).
With respect to claim 19, Toyoda teaches that the composition is flexible due to the addition of plasticizers (paragraph 0008).
With respect to claim 20, alkyl pentachlorostearate reads on formula (I) when R1 is chlorinated C17 hydrocarbyl, R2 is alkyl, and n = 1.
While Toyoda does not disclose how long the alkyl group is, it would have been obvious to one of ordinary skill in the art to select one having 1-18 carbon atoms like claimed because it is not disclosed as a long-chain hydrocarbon.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Toyoda (JP 08-311283, machine translation) in view of Olsen (US 8,372,912).
The discussion with respect to Toyoda in paragraph 6 above is incorporated here by reference.
Toyoda discloses that its vinyl chloride resin composition is flexible and used in fire-resistance gaskets by adding plasticizer (paragraph 0008) but teaches preferred amount of plasticizer of 30-200 parts by weight per 100 parts by weight of vinyl chloride resin (paragraph 0009) which is outside the claimed range of 350-500 phr.
Olsen discloses polyvinyl chloride composition for use in gaskets comprising plasticizer which plasticizer renders the polyvinyl chloride more flexible and/or softer (col. 1, lines 14-25). Olsen teaches that a suitable amount of plasticizer is 20-800 phr (col. 3, lines 1-5).
While Toyoda’s preferred amount of plasticizer is outside the claimed range, it would have been obvious to one of ordinary skill in the art to utilize relatively more plasticizer, including 350-500 phr, because Olsen teaches these amounts as suitable in a plasticized polyvinyl chloride resin for use in gaskets. It is perfectly proper for the examiner to look to the whole reference for what it teaches rather than merely rely on preferred embodiments. In re Courtright 153 USPQ 735 (CCPA 1967).
Response to Arguments
Applicant's arguments filed 12/8/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that Toyoda fails to disclose or suggest a plasticizer comprising both a bioplasticizer and a chlorinated ester of a fatty acid that is also free from phthalates and phosphate plasticizers.
In addition to the chlorinated ester of a fatty acid, Toyoda teaches that the remaining plasticizer is one that is effective at plasticizing polyvinyl chloride such as epoxidized soybean or linseed oil (paragraph 0008). Toyoda teaches that phthalate and phosphate plasticizers are optional, used in the alternative to epoxidized soybean or linseed oil or chlorinated fatty acid ester, respectively (paragraphs 0008-0009). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Therefore, absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to utilize a plasticizer composition like claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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