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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3,5-8 and 10-14 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1’s “acid value of the plasticizer” and “YI of the plasticizer” is unclear. Which plasticizer is being limited? The combination of plasticizers?
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.
Claims 1-3,5,8 and 10-14 rejected under 35 U.S.C. 103 as being unpatentable over Kim 2019/0048167 in view of Patil 2019/0308925 or CN104230714 or CN104496819.
Kim exemplifies (table 1) blends of terephthalate plasticizer with hydrogenated terephthalate (ie cyclohexane dicarboxylate) plasticizer in ratios of 3:7 to 7:3. Kim does not state the source of his terephthalate plasticizer.
It is well known in the art to produce terephthalate plasticizer such as dioctylterephthalate from waste/recycled sources. Each of the secondary references teach methods of making dialkylterephthalates from waste/recycled sources. Patil (paragraph 34) and CN104230714 (abstract) indicates their production methods result in a colorless or near colorless dialkylterephthalate. CN104496819 (abstract) actually terms the product “pure” DOTP and shows (paragraph 26,38) its dialkylterephthalate has an acid number below 0.25mgKOH/g.
Applicant admits (page 10 line 6-12) that recycled phthalate plasticizers have acid values of 0.05-0.25mgKOH/g – higher than conventional (ie virgin) plasticizers. The combination of recycled plasticizer with virgin plasticizer would have acid values below that of the recycled plasticizer itself.
The claimed yellowing index is only incrementally better than the yellowing index of the recycled plasticizers itself (see applicant’s comparative #1). It is not surprising that a combination of recycled plasticizer with virgin plasticizer has a yellowing index “in-between” that of each individually.
It would have been obvious to obtain any known “recycled” dialkylterephthalate for use as Kim’s dialkylterephthalate for cost savings or environmental reasons.
In regards to applicant’s dependent claims:
Kim’s terephthalate plasticizer (#1) may be DEHTP (ie dioctylterephthalate) meeting applicant’s claim 3.
Kim’s hydrogenated terephthalate plasticizer (#2) may be DEHCH (ie dioctyl cyclohexane diester) meeting applicant’s claim 5.
The Yellow index and carbon emission of applicant’s claims 8,12 and 13 are presumably met as the claimed terephthalate plasticizer with cyclohexane dicarboxylate plasticizer meets such values even without substituting recycled terephthalate plasticizer for virgin terephthalate plasticizer.
Kim adds 40 parts of the plasticizer combination to PVC (paragraph 75) – meeting applicant’s claims 10 and 11.
Kim’s plasticized PVC was molded into test sheets (paragraph 75) – meeting applicant’s claim 14.
Claims 1-3,5,6,8 and 10-14 rejected under 35 U.S.C. 103 as being unpatentable over Kim 2019/0047938 in view of Patil 2019/0308925 or CN104230714 or CN104496819.
Kim exemplifies (#1) blends of terephthalate plasticizers DEHTP + BEHTP + DBTP with hydrogenated terephthalate (ie cyclohexane dicarboxylate) plasticizer DEHCH + BEHCH + DBCH in a 6:4 ratio. Kim does not state the source of his terephthalate plasticizers.
It is well known in the art to produce terephthalate plasticizer such as dioctylterephthalate from waste/recycled sources. Each of the secondary references teach methods of making dialkylterephthalates from waste/recycled sources. Patil (paragraph 34) and CN104230714 (abstract) indicates their production methods result in a colorless or near colorless dialkylterephthalate. CN104496819 (abstract) actually terms the product “pure” DOTP and shows (paragraph 26,38) its dialkylterephthalate has an acid number below 0.25mgKOH/g.
Applicant admits (page 10 line 6-12) that recycled phthalate plasticizers have acid values of 0.05-0.25mgKOH/g – higher than conventional (ie virgin) plasticizers. The combination of recycled plasticizer with virgin plasticizer would have acid values below that of the recycled plasticizer itself.
The claimed yellowing index is only incrementally better than the yellowing index of the recycled plasticizers itself (see applicant’s comparative #1). It is not surprising that a combination of recycled plasticizer with virgin plasticizer has a yellowing index “in-between” that of each individually.
It would have been obvious to obtain any known “recycled” dialkylterephthalate for use as Kim’s dialkylterephthalate for cost savings or environmental reasons.
In regards to applicant’s dependent claims:
Kim’s DEHTP (ie dioctylterephthalate) + BEHTP + DBTP meets applicant’s claim 3 and 6.
Kim’s DEHCH (ie dioctyl cyclohexane diester) meets applicant’s claim 5 and 6.
The Yellow index and carbon emission of applicant’s claims 8,9,12 and 13 are presumably met as the claimed terephthalate plasticizer with cyclohexane dicarboxylate plasticizer meets such values even without substituting recycled terephthalate plasticizer for virgin terephthalate plasticizer.
Kim adds 40 parts of the plasticizer combination to PVC (paragraph 88) – meeting applicant’s claims 10 and 11.
Kim’s plasticized PVC was molded into test sheets (paragraph 88) – meeting applicant’s claim 14.
Claims 1-3,7,8 and 10-14 rejected under 35 U.S.C. 103 as being unpatentable over Gosse 2005/0020718 in view of CN102516586.
Gosse exemplifies (#12) a blend of 100 parts PVC, 30 parts diisononylphthalate, 30 parts DIHCH (diisoheptylcyclohexane dicarboxylate) and 2 parts LZ1364. DIHCH qualifies as applicant’s 2nd plasticizer. Gosse does not identify the source of his diisononylphthalate.
It is known in the art to recover phthalate plasticizers from waste plastics.
CN102516586 discloses such a process.
Applicant admits (page 10 line 6-12) that recycled phthalate plasticizers have acid values of 0.05-0.25mgKOH/g – higher than conventional (ie virgin) plasticizers. The combination of recycled plasticizer with virgin plasticizer would have acid values below that of the recycled plasticizer itself.
The claimed yellowing index is only incrementally better than the yellowing index of the recycled plasticizer itself (see applicant’s comparative #1). It is not surprising that a combination of recycled plasticizer with virgin plasticizer has a yellowing index “in-between” that of each individually.
It would have been obvious to obtain a “recycled” diisononylphthalate from waste plastics as taught by CN102516586 for use as Gosse’s phthalate plasticizer for cost savings or environmental reasons.
In regards to applicant’s dependent claims:
The diisononylphthalate qualifies as the phthalate of applicant’s claim 7.
Additionally, epoxidized soy bean oil (example 3), phosphate (paragraph 62) and esters (paragraph 62) may be included which meet applicant’s claim 7.
The Yellow index carbon emission of applicant’s claims 8,12 and 13 are presumably met as the reference composition meets the minimum material requirements of applicant’s claim
Gosse forms the composition into discs for testing – meeting applicant’s claim 14.
Applicant's arguments filed 4/21/26 have been fully considered but they are not persuasive.
Applicant argues that recycled material exhibit yellowing, odor and migration problems compared to pure substances.
This is not convincing. It is noted that applicant’s comparison #2 falls within the scope of applicant’s claims, yet exhibits poor yellowing and odor.
Secondly, applicant’s comparison #3 (virgin plasticizers) have better yellowing and odor than the inventive compositions (recycled phthalate + virgin cyclohexane diester) that correspond to the primary reference’s compositions. In other words, applicant’s composition is inferior to that of the primary references.
Applicant’s examples replace some of the recycled phthalate plasticizer with virgin cyclohexane plasticizer (eg comparison #1 vs #1) and achieves the corresponding decrease in yellowing.
Even if some examples were considered to show better than expected yellowing and odor, these results would presumably depend on the precise method of making the recycled plasticizer.
The lower carbon emission is exactly what would have been expected from using recycled plasticizer instead of virgin plasticizer. The amount of carbon emission reduction would depend on exactly how the recycled phthalate plasticizer was made. A phthalate plasticizer made from alcohol + 99% virgin phthalic acid + 1% recycled phthalic acid would have very little reduction in carbon emission.
Applicant cites nothing regarding the example’s R-DOTP apparently purchased from third party Runzenengyuan. There is no reason to believe any unexpected results extend to any/all recycled phthalates.
The terminal disclaimer overcomes the obviousness double patenting.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 5/8/26
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