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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jang (KR 20190121249 A, attached with machine translation) in view of Kim (KR 20160119616 A, attached with machine translation). All references have been cited in a prior Office action.
Regarding claims 1-10, Jang teaches a plasticizer mixture of 1,4-DEHCH (p. 4) and an ester compound of citric acid and C2-C8 alcohol, which may be acetylated or non-acetylated, including tributyl citrate, tri(butyloctyl)citrate, acetyl tributyl citrate, and the like (p. 5). Jang's plasticizer mixture may be present in a total amount of 50 to 90 parts by weight, wherein the ratio of 1,4-DEHCH to citrate compound ranges from 9.5:1 to 1:9.5, which is equivalent to amounts ranging from 4.76-81.42 parts by weight for each (p. 5). The composition may further include 100 parts by weight of vinyl chloride resin (p. 5). Jang also teaches inclusion of stabilizer in the composition, and titanium dioxide in amounts ranging from 1-20 parts by weight (pp. 7-8). Finally, Jang specifies that the composition may be molded (p. 3).
However, Jang is silent as to use of dioctyl adipate. In a similar composition, Kim teaches including 1-30 parts by weight dioctyl adipate in plasticizer compositions that have 40-100 total parts by weight of plasticizer per 100 parts by weight of a resin, which may be polyvinyl chloride (p. 3). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the dioctyl adipate taught by Kim and the composition of Jang, to arrive at the claimed invention, and to produce a composition having excellent physical properties, as taught by Kim (p. 3). These prior art ranges overlap all claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Jang in view of Kim, as applied to claim 10 above, and further in view of Inoue (US 2018/0127390 A1).
Regarding claim 11, Jang and Kim remain as applied to claim 10 above. However, Jang and Kim are silent as to use of the composition in a hose. In a similar composition, Inoue acknowledges that plasticized compositions useful for wallpaper applications are also useful in forming hoses (p. 40, [0492]). Inoue teaches that compositions of chlorine-containing resin and plasticizer are suitable for use as soft material for hose applications (p. 40, [0492]). Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See MPEP 2143(I)(F). One skilled in the art might have been financially motivated to seek out additional markets for Jang’s composition, and would have sought to form alternative articles such as hoses because Inoue establishes that similar compositions are useful in both this application and in Jang’s original field of wallpaper applications. The variation in end uses would have been predictable to one of ordinary skill in the art based on the compositional similarities between Jang and Inoue. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the composition of Jang in view of Kim for use in the hose application of Inoue to arrive at the claimed invention, and because of the art-recognized suitability for intended purpose. See MPEP 2144.07.
Response to Arguments
Applicant's arguments filed 29 June 2026 have been fully considered but they are not persuasive.
Applicant argues that the instant disclosure teaches unexpected results. Whether the unexpected results are the result of unexpectedly improved results of a property not taught by the prior art, objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). In other words, the results must occur over the entire claimed range. As amended, the claims require 50-80 parts by weight of di(2-ethylhexyl)cyclohexane-1,4-dicarboxylate, 10-20 parts by weight of dioctyl adipate, and 10-20 parts by weight of a compound represented by Chemical Formula 1 (claim 1). The examples teach 60 or 70 parts by weight of di(2-ethylhexyl)cyclohexane-1,4-dicarboxylate, 15 or 20 parts by weight of dioctyl adipate, and either 15 or 20 parts by weight of tributyl citrate. Even considering the additional comparative examples submitted via affidavit on 29 June 2026, Applicant does not present evidence that the unexpected results are present across the entire claimed range. The scope of the unexpected results is not commensurate with the scope of the claims.
Applicant correctly notes that neither Jang nor Kim, taken on its own, teaches the claimed invention in its entirety. Nevertheless, the combination of the prior art references teaches a composition having identical ingredients in identical amounts, and the prior art further provides sufficient motivation to combine the teachings (see above rejection).
Applicant argues that the range of dioctyl adipate taught by Kim is not applicable because Kim teaches the range relative to 100 parts by weight of an isophthalate-based compound. Applicant is correct that one embodiment of Kim’s invention includes 1-30 parts by weight of an additive, which may be dioctyl adipate, based on 100 parts by weight of an isophthalate-based compound (claims 6-7). However, Kim also teaches use of 1-30 parts by weight dioctyl adipate in embodiments including 100 parts by weight of a resin, and that the resin may be vinyl chloride (p. 3). A reference may be relied on for all that it teaches. See MPEP 2121. Further, in the absence of claim limitations requiring dioctyl adipate content relative to another ingredient, Kim’s range reads on the claimed range.
For the above reasons, the rejection is maintained. All of Applicant’s arguments are believed to have been addressed in full above.
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 ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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