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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 3-14 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gosse 2005/0020718.
Gosse exemplifies (#3) a sheeting composition of 100 parts PVC, 35 parts DEHCH (diethylhexylcyclohexane dicarboylate), 0.5 parts epoxidized soy bean oil and 2 parts LZB722.
DEHCH qualifies as applicant’s 2nd plasticizer. Applicant permits zero amount of 1st plasticizer as applicant’s “or less” includes zero.
In regards to applicant’s dependent claims:
The epoxidized soy bean oil qualifies as applicant’s plasticizer of claim 7.
The Yellow index carbon emission of applicant’s claims 8,9,12 and 13 are presumably met as the reference composition meets the minimum material requirements of applicant’s claim
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 1-5 and 8-14 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. 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.
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 exemplified mixing ratios are 3:7 to 7:3 – meeting applicant’s claim 2.
Kim’s terephthalate plasticizer (#1) may be DEHTP (ie dioctylterephthalate) meeting applicant’s claim 3.
CN104496819 (paragraph 26,38) shows its dialkylterephthalate has an acid number below 0.25mgKOH/g – meeting applicant’s claim 4.
Kim’s hydrogenated terephthalate plasticizer (#2) may be DEHCH (ie dioctyl cyclohexane diester) meeting applicant’s claim 5.
The Yellow index 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 74) – meeting applicant’s claims 10 and 11.
Kim’s plasticized PVC was molded into test sheets (paragraph 74) – meeting applicant’s claim 14.
Claims 1-6 and 8-14 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. 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.
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 exemplified mixing ratios are 3:7 to 7:3 – meeting applicant’s claim 2.
Kim’s DEHTP (ie dioctylterephthalate) + BEHTP + DBTP meets applicant’s claim 3 and 6.
CN104496819 (paragraph 26,38)) shows its dialkylterephthalate has an acid number below 0.25mgKOH/g – meeting applicant’s claim 4.
Kim’s DEHCH (ie dioctyl cyclohexane diester) meets applicant’s claim 5 and 6.
The Yellow index 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.
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 8,9,12 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.
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 1-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,152,126. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent also claims blends of recycled phthalate plasticizer with a cyclohexane dicarboxylate plasticizer (eg #1). The instant claims are broader in the sense that the citrate plasticizer is not required.
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 1/14/26