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).
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.
Conclusion
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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