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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Jang (KR 2019/0121249 A, hereinafter referring to EP 3,783,062 A1 as the English language equivalent) in view of Kim (KR 2020/0074020 A, hereinafter referring to US 2021/0214524 A1 as the English language equivalent).
Regarding claim 1, Jang teaches a vinyl chloride resin composition for wallpaper (Abstract), comprising 100 parts of a vinyl chloride resin, 50 to 90 parts of a plasticizer, and 5 to 20 parts of a carboxylic acid ester-based viscosity depressant which may be, inter alia, di(2-ethylhexyl)cyclohexane-1,4-dicarboxylate (([0010]). The carboxylic acid ester-based viscosity depressant therefore reads on the claimed “cyclohexane dicarboxylate-based compound” represented by the claimed “chemical formula 1.” Jang teaches that the formulation may further comprise a stabilizer ([0052]), which may include Na-Zn-based compounds and Ba-Zn-based compounds ([0053]), which may be used in combination as mixtures of two or more ([0053]).
Jang differs from claim 1 because it is silent with regard to the incorporation of an epoxidized vegetable oil plasticizer.
In the same field of endeavor, Kim teaches a plasticizer composition superior to phthalate-based plasticizers in various metrics (Abstract). The composition is taught as being used in polyvinyl chloride compositions ([0003]). The plasticizer composition contains cyclohexane diesters ([0008]), and may incorporate an additional plasticizer which may be an epoxidized oil ([0030]) such as epoxidized soybean, castor, linseed, or palm oils and epoxidized stearate, oleate, tall oil, and linoleate, inter alia ([0072]). Kim further teaches that the incorporation of the epoxidized oil allows for improved thermal stability, volatile loss, oil resistance, and absorption rate of the composition to be improved ([0071]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate epoxidized oil, as taught by Kim, within the formulation of Jang for the purpose of improving the thermal stability, volatile loss, oil resistance, and absorption rates of the PVC composition.
Regarding claim 2, Kim exemplifies the usage of epoxidized soybean oil in an amount of 20 parts per 40 parts of a cyclohexane diester (p. 7, Table 1, Example 8), which equates to about 33.3 parts by weight per 100 parts of the claimed “plasticizer,” and which therefore falls within the claimed range of “30 parts by weight to 90 parts by weight,” establishing a prima facie case of obviousness.
Regarding claims 3 and 4, Jang does not expressly disclose the claimed amounts of each of the Ba-Zn and Na-Zn compounds. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Jang discloses the Ba-Zn and Na-Zn compounds as equally suitable alternatives to one another and therefore recognizes the equivalence of the two. It would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine these two compounds in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. This incorporation of 50 parts by weight of each with respect to 100 parts by weight in total of the two (which is a 1:1 ratio), falls within the claimed ranges of “30 parts by weight to 90 parts by weight,” “50 parts by weight to 70 parts by weight,” and “30 parts by weight to 50 parts by weight,” establishing prima facie cases of obviousness.
Regarding claim 5, Jang teaches the use of di(2-ethylhexyl)cyclohexane-1,4-dicarboxylate ([0010]).
Regarding claim 6, as described above, Kim teaches that the additional epoxidized oil may be epoxidized soybean, castor, linseed, or palm oils and epoxidized stearate, oleate, tall oil, and linoleate, inter alia ([0072]).
Regarding claim 7, Jang teaches that the polymerization degree of the vinyl chloride resin is 700-1,700 or an average molecular weight of 45,000 to 200,000 (p.16, claim 2), both of which fall within the claimed ranges, establishing prima facie cases of obviousness.
Regarding claim 8, as described above, Jang teaches the incorporation of 5 to 20 parts by weight of the carboxylic acid ester-based viscosity depressant per 100 parts by weight of the vinyl chloride resin ([0010]). Also as described above, Kim exemplifies the incorporation of half as much epoxidized soybean oil compared to the amount of diester included in the formulation (p. 7, Table 1, Example 8). A composition containing 5 to 20 parts of the carboxylic acid ester-based viscosity depressant and half as much of the epoxidized soybean oil would therefore contain about 7.5 to 30 parts of the claimed “plasticizer” per 100 parts of the vinyl chloride resin, which overlaps the claimed range of “20 parts by weight to 100 parts by weight,” establishing a prima facie case of obviousness.
Regarding claim 9, Jang teaches the incorporation of 0.5 to 7 parts by weight of the stabilizer per 100 parts of the vinyl chloride resin ([0054]), which falls within the claimed range of “0.1 parts by weight to 10 parts by weight,” establishing a prima facie case of obviousness.
Regarding claim 10, Jang teaches the optional addition of fillers and pigments ([0003, [0005], and [0052]).
Regarding claims 11 and 12, Jang teaches the formation of a wallpaper, flooring, artificial leather, and automobile part, inter alia ([0069]), all of which read on the claimed “molded article.”
Response to Arguments
Applicant's arguments filed December 3, 2025 have been fully considered but they are not persuasive.
Applicant argues that one having ordinary skill in the art would not be motivated to include the epoxidized oil of Kim into the formulation of Jang because Jang does not teach the diisononyl terephthalate which is a component within the formulation of Kim. However, it is prima facie obvious to select a material known in the art as suitable for its intended purpose (see MPEP 2144.07). In this case, Kim teaches that epoxidized oils are suitable additional plasticizers which are useful in compositions that contain cyclohexane-1,2-diester-based materials. Furthermore, while Kim does appear to require the diisononyl terephthalate, Kim does not teach away from the suitability of epoxidized oils in compositions which do not contain said plasticizer. One having ordinary skill in the art would therefore understand the epoxidized oil to be compatible with cyclohexane-1,2-diester-based materials, and would not be led away from the suitability thereof in the formulation of Jang.
Furthermore, assuming arguendo that one having ordinary skill in the art would only be motivated to include epoxidized oil if diisononyl terephthalate was also included, Jang does not teach away from the incorporation of diisononyl terephthalate. To the contrary, as described above, Jang states that the plasticizer within the inventive formulation comprises the cyclohexane-1,2-diester material ([0065]), and therefore additional plasticizers may be included. Finally, the claimed composition does not negatively limit the incorporation of diisononyl terephthalate (i.e., diisononyl terephthalate may be included in the claimed composition). Therefore, if one having ordinary skill in the art would be only motivated to add both the epoxidized oil and diisononyl terephthalate of Kim into the formulation of Jang, doing so would nonetheless read on the claimed composition.
Applicant next argues that Jang fails to teach the claimed combination of stabilizers. However, as described above, Jang teaches both of the claimed stabilizers, and specifically teaches the incorporation of combinations of stabilizers ([0053]). Furthermore, while Kim only exemplifies the use of a single stabilizer, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II). The presence of example formulations which do not disclose the use of combinations of stabilizers does not rebut the specific disclosure thereof. Since Jang teaches both stabilizers and teaches that stabilizers may be combined, it would have been obvious to one having ordinary skill in the art to use the claimed combination despite Jang not explicitly stating or exemplifying said combination.
In response to the Applicant’s final arguments and the accompanied Rule 132 declaration, the new Experimental Data provided merely shows that compositions which fall outside of the scope of the claims perform differently than compositions which fall inside the scope of the claims. These results do not rebut the teachings of Jang and Kim, which together read on the claimed composition. Applicant asserts that the experimental data shows evidence of unexpected results. However, 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. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d). The data provided shows results for a single PVC resin and a single cyclohexane-1,2-diester-based plasticizer (DEHCH), despite the claims being open to virtually any PVC resin and any compound falling within the scope of claimed “Chemical Formula 1.” Furthermore, the examples that the Applicant relies on (Example 1 and Comparative Examples 4 and 5) contain only 2.5 parts of stabilizer(s), despite the claims being open to between 0.1 and 10 phr (c.f. claim 9). Finally, Example 1 only indicates a 1:1 ratio of the two stabilizers, whereas the claims are open to significantly broader ratios (c.f. claims 3 and 4).
The Applicant need not provide evidence for every possible composition as claimed, but the data provided is not reasonably commensurate in scope with the claims, and thus the data provided is insufficient to rebut a prima facie determination of obviousness.
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762