DETAILED ACTION
Summary
This is a non-final office action for application 18/265,892 filed on 7 June 2023. The preliminary amendment filed on the same date is acknowledged.
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.
Claims 2-4 and 9-11 and 13 are 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.
Claims 2-3 and 9-10 each recite a limitation on "the organic material". There is insufficient antecedent basis for this limitation in the claim. Each claim, and Claim 1 from which it depends, recites in its preamble that the claim is directed to an organic material based shaped article, but none of the claims positively recite “an organic material”. The only material certain to be organic which is explicitly recited in Claim 1 is the compound of formula (1), but Claims 2-3 each recite that the organic material is something besides that compound and Claims 9-10 each recite a weight ratio of the organic material in relation to the amount of that compound. Please positively recite the presence of “an organic material”, either in Claim 1 or in each of Claims 2-3 and 9-10.
Claim 4 recites a limitation on “the thermoplastic polyolefin”. There is insufficient antecedent basis for this limitation in the claim. Claim 4 depends upon, and therefore includes, Claim 1. Claim 1 does not recite a thermoplastic polyolefin. Claim 3 recites a thermoplastic polyolefin, but Claim 4 does not depend upon Claim 3.
Claim 11 recites that the composition further comprises a phenolic antioxidant. Claim 11 depends upon and therefore includes Claim 1. The compound of formula (1) recited by Claim 1 has a hindered phenol structure and is commonly known in the prior art as an antioxidant. It is not clear whether (A) the phenolic antioxidant recited by Claim 11 can be satisfied by the compound of formula (1), in which case Claim 11 is automatically satisfied and fails to further limit Claim 1 raising a potential 112(d) issue, or (B) the phenolic antioxidant recited by Claim 11 is required to be a different compound. Please clarify so that skilled users can know if they are within the scope of the claims. Claim 13 is rejected because it depends upon, and therefore includes, Claim 11. Claim 12 is not rejected as it adds further limitations to the phenolic antioxidant component which require that it is a different compound.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 7-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by CLIFF (US-20220282064-A1).
The CLIFF (US-20220282064-A1) reference is prior art under 102(a)(2) due to its PCT filing date of 30 July 2019.
Regarding Claim 1, CLIFF teaches a plastic article (abstract) which is molded ([0014]) for automotive interior applications ([0146]). A plastic article for use in automotive interior applications is presumed to be shaped. CLIFF teaches that its plastic article may comprise a thermoplastic polyolefin substrate ([0015]) which is an organic material. CLIFF teaches the inclusion of a phenolic antioxidant (AO1) of tris(3,5-ditert-butyl-4-hydroxybenzyl) isocyanurate (CAS No. 27676-62-6) ([0050], [0166])
PNG
media_image1.png
470
463
media_image1.png
Greyscale
which is the compound of formula (1) recited by the claim. CLIFF exemplifies this component in Example 2 ([00165], [0166], Table 5). CLIFF teaches that its composition may contain an antiscratch additive ([0136]). CLIFF exemplifies in Example 2, a primary amide antiscratch additive (Table 4) in combination.
Regarding Claim 2, CLIFF teaches the invention of Claim 1. CLIFF teaches that its plastic article may comprise a thermoplastic polyolefin substrate ([0015]) teaching may specific thermoplastic polyolefins and olefin-based elastomers ([0017]). CLIFF further teaches that is thermoplastic olefin may have other polymers incorporated therein such as polyamides ([0020]). CLIFF exemplifies polypropylene homopolymer or copolymer as well as ethylene-octene copolymers (Table 1) which are all polyolefins.
Regarding Claim 3, CLIFF teaches the invention of Claim 1. CLIFF teaches that its plastic article may comprise a thermoplastic polyolefin substrate ([0015]). CLIFF exemplifies polypropylene homopolymer or copolymer (Table 1).
Regarding Claim 4, CLIFF teaches the invention of Claim 1. CLIFF teaches that its plastic article may comprise a thermoplastic polyolefin substrate ([0015]). CLIFF exemplifies polypropylene homopolymer or copolymer (Table 1).
Regarding Claims 9-10, CLIFF teaches the invention of Claim 1. CLIFF teaches that its phenolic antioxidant is present in amounts of 0.01-0.3 wt% ([0040]) which is consistent with the recited ranges of 0.01-1% and 0.01-2% based on the amount of antioxidant and organic material. Interpreting the organic material as the polymeric substrate, CLIFF teaches in Example 2, 55-65 (e.g. 61) parts polypropylene, 15-25 (e.g. 21) parts ethylene-octene copolymer (Table 4) and 0.08-0.12 parts of the (AO1) phenolic antioxidant (Table 5). The exemplary amounts calculate to 0.08/(61+21+0.08), or 0.0974 wt% which is a ratio of 99.903 to 0.097 which is within the ranges recited by both Claim 9 and Claim 10.
Regarding Claim 11, CLIFF teaches the invention of Claim 1. CLIFF characterizes the component which satisfies formula (1) of Claim 1 as a phenolic antioxidant ([0050]) which satisfies the claim. Additionally CLIFF teaches that its composition may contain at least one of a phenolic antioxidant and/or a phosphite stabilizer ([0013]). CLIFF teaches many phosphite stabilizers that include phenyl groups ([0032]) and exemplifies a phosphite stabilizer (Table 1) which is tris(2,4-di-tert-butylphenyl) phosphite ([0168]) which is phenolic.
Regarding Claim 12, CLIFF teaches the invention of Claim 11 which recites the inclusion of a phenolic antioxidant and/or a phenolic phosphite. Claim 12 modifies the limitation on the phenolic antioxidant such that it is different than the phenolic antioxidant recited as formula (1) in Claim 1. This makes it an optional limitation of Claim 11. CLIFF satisfies Claim 11 by teaching and exemplifying the a phosphite stabilizer (Table 1) which is tris(2,4-di-tert-butylphenyl) phosphite ([0168]), so CLIFF teaching the invention of Claim 11 automatically satisfies Claim 12.
Regarding Claim 13, CLIFF teaches the invention of Claim 11 where CLIFF teaches and exemplifies tris(2,4-di-tert-butylphenyl) phosphite (Table 1, [0168]).
Regarding Claims 14-15, CLIFF teaches the invention of Claim 1. CLIFF teaches that its compositions may contain a hindered amine light stabilizer (HALS)([0011]) and teaches a very large number of specific HALS ([0062]-[0116], Claim 13) including many that are specifically recited in Claim 15. CLIFF exemplifies bis(2,2,6,6,-tetramethyl-4-piperidyl) sebacate as HALS 1 ([0151]) which is the second hindered amine light stabilizer recited in Claim 15 and satisfies both Claim 14 and Claim 15.
Regarding Claim 16, CLIFF teaches the invention of Claim 14. Claim 16 modifies an optional limitation on Claim 14. CLIFF satisfies Claim 14 by teaching an exemplary composition including the other component, the sterically hindered light stabilizer (HALS), so CLIFF’s teaching of the invention of Claim 14 automatically satisfies Claim 16.
Regarding Claim 17, CLIFF teaches the invention of Claim 1. CLIFF teaches that its composition may contain a slip agent ([0136]) and teaches in its examples that its anti-scratch agent is a slip agent (Table 1). CLIFF further teaches that its composition may contain pigments or fillers ([0132]) and teaches many specific fillers ([0135]) and pigments ([0133]). CLIFF exemplifies a colorant masterbatch without specifying whether it is pigment-based (Table 1) and also exemplifies a talc filler (Table 1). Any one of these would satisfy the requirements of the claim.
Regarding Claim 18, CLIFF teaches the invention of Claim 1. CLIFF further teaches that its plastic articles are for use in the automotive industry ([0002]) such as an automotive component ([0016]). CLIFF teaches in the examples that its articles are used in automotive interior applications ([0146]).
Claims 1-6, 9-11 and 13-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LEDERER (WO-2009092691-A1).
The LEDERER (WO-2009092691-A1) reference is in the IDS dated 10 July 2023.
Regarding Claim 1, LEDERER teaches a composition comprising polypropylene (Abstract) which satisfies the requirement of an organic material, at least one phenolic antioxidant (Abstract) and at least one slip agent which is a fatty acid amide (Abstract). LEDERER teaches that its invention is directed to automative articles which are presumed to be shaped (p. 29, lines 10-14). In comparative example 1 (Table 5), LEDERER teaches a composition containing polypropylene copolymer and homopolymer, the antioxidant AO 106 and the slip agent SA 110 (Table 4). LEDERER teaches that AO 106 is 1,3,5-tris (3',5'-di-tert-butyl-4 '-hydroxybenzyl)-isocyanurate (CAS no. 27676-62-6) (p. 38, lines 1-2) which is the compound of formula (1) recited by the claim, and that SA 110 is cis-9,10 Octadecenoamide (CAS no. 301-02-0)(p. 38, line 15) which is a synonym for oleamide. LEDERER does not characterize SA 110 as an anti-scratch agent. Here, the specification of the current invention is used as evidence that the oleamide taught by LEDERER is an anti-scratch agent suitable for use in the current invention (cur spec: lines 37-39). It is presumed that oleamide would behave as an anti-scratch agent in the compositions taught by LEDERER because it is the same compound used as an anti-scratch agent in the instant application.
Regarding Claims 2-4, LEDERER teaches the invention of Claim 1 where LEDERER teaches that its composition is based on polypropylene (Abstract, Table 4) and exemplifies polypropylene homopolymer and polypropylene copolymer. Polypropylene is a polyolefin which satisfies Claim 2 and its homopolymer is thermoplastic which satisfies Claim 3 and Claim 4.
Regarding Claims 5-6, LEDERER teaches the invention of Claim 1 where LEDERER exemplifies SA 110 in Comparative Example 1 (Table 4), which is cis-9,10 octadecenoamide (CAS no. 301-02-0)(p. 38, line 15) which is a synonym for oleamide which satisfies Claim 6. Oleamide is an amide of the fatty acid oleic acid (also known as cis-9,10 octadecenoic acid) which satisfies Claim 5.
Regarding Claims 9-10, LEDERER teaches the invention of Claim 1. In the Comparative Example 1 used to reject Claim 1, LEDERER teaches that AO 106, which is the compound of formula 1 recited by the claim, is present in amounts of 2500 ppm which is 0.25 wt%. LEDERER teaches that its two polymeric compound is present in 12 wt% and about 58.2 wt% (Note the sum of the weight percents add up to 99 and the sums of the ppm’s add up to 8000, or 0.8 wt%, hence the extra 0.2 wt% on the PP copolymer). This calculates to a wt% of AO 106 relative to the total amount of PP plus AO106, of 100*0.25/(0.25+12+58.2) ≈ 0.35 wt%. This corresponds to weight ratios as recited by the claim of 99.65:0.35 which is within 99.99:0.01 to 99.0:1.0 range recited by Claim 9 and the 99.99:0.01 to 98:2 range recited by Claim 10.
Regarding Claim 11, LEDERER teaches the invention of Claim 1. The compound of formula (1), is a phenolic antioxidant which satisfies the claim. Also, the Comparative Example 1 used to reject Claim 1 also includes AO 101 (Table 4) which is pentaerythrityl-tetrakis (3-(3,5-di-tert-butyl-4-hydroxyphenyl)
Propionate (p. 38, lines 3-4) which an additional phenolic antioxidant and AO 200 (Table 4) which is tris-(2,4-di-tert-butylphenyl) phosphite (p. 38, line 5) which is a phenolic phosphite.
Regarding Claim 13, LEDERER teaches the invention of Claim 11 where in the Comparative Example 1 used to reject Claim 1, LEDERER teaches the inclusion of AO 200 (Table 4) which is tris-(2,4-di-tert-butylphenyl) phosphite (p. 38, line 5).
Regarding Claims 14-15, LEDERER teaches the invention of Claim 11. In the Comparative Example 1 used to reject Claim 1, LEDERER teaches UV 200 (Table 4) which is bis-(2,2,6,6-tetramethyl-4-piperidyl) sebacate (p. 38, line 9) which is the second in the list of hindered amine light absorbers recited in Claim 15. LEDERER teaches that this compound is a hindered amine light stabilizer (p. 13, line 24) which satisfies Claim 14.
Regarding Claim 16, Claim 16 adds a limitation to an optional component of Claim 14. LEDERER satisfies Claim 14 with a hindered amine light stabilizer (see above). LEDERER teaches that its hindered amine light stabilizers do not absorb UV radiation (p. 13, line 11). LEDERER teaching the invention of Claim 14 automatically satisfies Claim 16.
Regarding Claim 17, LEDERER teaches the invention of Claim 1. In the Comparative Example 1 used to reject Claim 1, LEDERER teaches talc (Table 4) which is a filler and CMB (Table 4) which is a color masterbatch including pigments (p. 38, lines 16-17). Also LEDERER characterizes its oleamide anti-scratch agent as a slip agent (see Claim 1 rejection).
Regarding Claim 18, LEDERER teaches the invention of Claim 1. LEDERER teaches that its composition is for automotive interior applications (Title; p. 1, lines 3-4).
Claims 1-13 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by QI (CN-104559007-A) as evidenced by MINAMI (US-6562886-B1).
The QI (CN-104559007-A) reference is included with translation in the IDS dated 10 July 2023.
Regarding Claim 1, QI teaches a scratch-resistant polypropylene material including an antioxidant and a scratch-resistant assistant (Abstract). Polypropylene satisfies the requirement of an organic material. QI teaches that its composition is for use in automotive interior plastic parts ([0004]) and teaches a process of mixing and extruding ([0032]) and injection molding ([0034]) to form parts ([0046]). This satisfies the requirement of a shaped article. QI an antiscratch additive ([0031]) and exemplifies 0.2-0.6 parts of this antiscratch additive (Table 1, fifth row). QI teaches the antioxidant Irganox 3114 ([0031]). QI does not teach the correct chemical structure of Irganox 3114. Here, MINAMI is used as evidence to teach the inherent chemical structure of the Irganox 3114 taught by QI (see MPEP 2131.01-III. for this use of a secondary evidentiary reference in 102 rejections). MINAMI discloses that Irganox 3114 is tris(3,5-di-tert-buty 1-4-hydroxybenzy l) isocyanurate which is the compound of formula (1) recited by the claim. QI exemplifies Irganox 3114 (Table 1).
Regarding Claim 2, QI teaches the invention of Claim 1. QI generally teaches that its composition may contain a polypropylene copolymer ([0012]), high-density polyethylene (HDPE) ([0013]) and an ethylene octene (POE) copolymer ([0015], Table 1) which are all polyolefins. QI exemplifies polypropylene copolymer (M2600R) ([0031]), HDPE ([0031], Table 1) and POE ([0031], Table 1).
Regarding Claims 3-4, QI teaches the invention of Claim 1. QI generally teaches that its composition may contain a polypropylene copolymer ([0012]), high-density polyethylene (HDPE) ([0013]) and an ethylene octene (POE) copolymer ([0015], Table 1) which are all polyolefins. QI exemplifies polypropylene copolymer (M2600R) ([0031]), HDPE ([0031], Table 1) and POE ([0031], Table 1). QI is silent on whether its polypropylene copolymer and POE are thermoplastic, but HDPE is known to be thermoplastic which satisfies the Claim 3 and that it is a thermoplastic high density polyethylene satisfies Claim 4.
Regarding Claims 5-7, QI teaches the invention of Claim 1. QI teaches that its anti-scratch auxiliary agent is one or more combinations of erucamide and oleamide ([0016]) which are fatty acid amides. QI exemplifies erucamide ([0031]). The teaching of fatty acid amides satisfies Claim 5. The teaching and exemplifying of erucamide satisfies Claim 6 and Claim 7.
Regarding Claim 8, QI teaches the invention of Claim 1 where QI teaches Irganox 3114 as the antioxidant which satisfies the compound of formula (1) recited by Claim 1. QI generally teaches 0.1-0.5 wt% antioxidant (Abstract) and 0.1-1% of scratch-resistant assistant (Abstract). This calculates to a broad ratio of antioxidant to anti-scratch agent of 1:10 to 5:1 which overlaps the recited range of 1:70 to 30:99. QI exemplifies erucamide ([0031]) as its anti-scratch agent. QI teaches in examples which include multiple antioxidants, including Irganox 311, 0.1 parts of Irganox 3114 (Table 1) and 0.2-0.6 parts of the erucamide antiscratch agent (Table 1, fifth row). The recited range of 1:70 to 30:99, rescaled, is the equivalent of a range from 1:70 to 1:3.3. The examples with ratio of Irganox 3114 to the scratch additive of 0.1:0.6 (Table 1, Ex 1-3) and 0.1:0.4 (Table 1, Ex 5) correspond to ratios of 1:6 and 1:4, respectively, and are both within the recited range.
Regarding Claims 9-10, QI teaches the invention of Claim 1. QI teaches 0.1-0.5 wt% of antioxidant (Abstract) and 58-88wt% of polypropylene (Abstract), 5-15 wt% of HDPE (Abstract) and 1-5 wt% of polyolefin elastomer (POE)(Abstract). QI teaches examples which satisfy both claims. For example in Example 1 (Table 1), QI teaches 0.1 parts of Irganox 3114 (the compound of formula 1) and 75+5+2 = 82 parts of polymeric components. This calculates to a ratio of polymeric components to the compound of formula 1 of 99.88 to 0.12 which is within 99.99:0.01 to 99.0:1.0 range recited by Claim 9 and the 99.99:0.01 to 98:2 range recited by Claim 10.
Regarding Claim 11, QI teaches the invention of Claim 1 where QI teaches Irganox 3114 as an antioxidant, which is phenolic and satisfies the claim. Also QI teaches and exemplifies Irgafos 168 (tris-2,4-di-tert-butylphenyl) phosphite ([0031], Table 1).
Regarding Claim 12, QI teaches the invention of Claim 1. Claim 12 modifies an optional limitation of Claim 11. Claim 11 can be satisfied by QI teaching a phenolic phosphite, so Claim 12 is automatically satisfied by QI teaching the invention of Claim 11.
Regarding Claim 13, QI teaches the invention of Claim 11 where teaches and exemplifies Irgafos 168 (tris-2,4-di-tert-butylphenyl) phosphite ([0031], Table 1).
Regarding Claim 17, QI teaches the invention of Claim 1. QI teaches 5-20wt% of inorganic filler (Abstract) and exemplifies talc and titanium dioxide (Table 1). Titanium dioxide also satisfies the recited option of a pigment.
Regarding Claim 18, QI teaches the invention of Claim 1. QI teaches that its composition is for use in automotive interior plastic parts ([0004])
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 8, 12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over CLIFF (US-20220282064-A1).
Regarding Claim 8, CLIFF teaches that its phenolic antioxidant is present in amounts of 0.01-0.3 wt% ([0040]). CLIFF teaches in Example 2 compositions having 0.08-0.12 parts by weight of the (AO1) phenolic antioxidant and 0.3-0.6 (e.g. 0.25) parts by weight of anti-scratch/slip agent (e.g. primary amide) (Table 4). Using the ranges, this calculates to a range of ratios of 0.05/0.6 to 0.1/0.3 which calculates to 0.083 to 0.33. The recited range of 1/70 to 30/99 calculates to 0.014 to 0.30 so the ranges taught by CLIFF largely overlaps the recited range. CLIFF exemplifies 0.25 parts of anti-scratch agent (Table 4) which results in a ratio of antioxidant to anti-scratch agent which is outside the recited range but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of CLIFF and use amounts of antioxidant and antiscratch additives that are within the amounts taught in its specification that also result in a ratio between those two components that is within the recited range. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 12, Claim 12 is rejected above under the argument that Claim 12 modifies an optional limitation of Claim 11 and CLIFF satisfies the invention of Claim 11 by teaching the other component.
Additionally, CLIFF teaches the invention of Claim 1 above. CLIFF teaches that its phenolic antioxidant component may contain at least one of tris(3,5-di-tert-butyl-4-hydroxybenzyl) isocyanurate (the component represented by formula (1) of Claim 1) as well as other phenolic antioxidants including 1,3,5-tris-(3,5-di-tert-butyl-4-hydroxybenzyl)-2,4,6-trimethylbenzene and octadecyl 3-(3,5-di-tert-butyl-4-hydroxyphenyl) propionate which are recited by the claim and mixtures thereof ([0037]). CLIFF does not exemplify a mixture of the formula (1) antioxidant and another recited phenolic antioxidant, but it would be obvious to one of ordinary skill in the art to modify the examples of CLIFF and use a combination of the formula (1) phenolic antioxidant and either 1,3,5-tris-(3,5-di-tert-butyl-4-hydroxybenzyl)-2,4,6-trimethylbenzene and/or octadecyl 3-(3,5-di-tert-butyl-4-hydroxyphenyl) propionate based on the teachings of the specification.
Regarding Claim 16, Claim 16 is rejected above under the argument that Claim 16 modifies an optional limitation of Claim 14 and CLIFF satisfies the invention of Claim 14 by teaching the other component.
Additionally, CLIFF teaches the invention of Claim 14 above. CLIFF further teaches that its composition may contain a UV light absorber which may be selected from a group which contains oxamide ([0121]), 2-hydroxybenzophenone ([0121]), many hydroxyphenyl triazoles ([0123]) and hydroxybenzoates that are esters of substituted and unsubstituted benzoic acids ([0125]). CLIFF does not exemplify a UV light absorber, but it would be obvious to one of ordinary skill of the art at the time of the effective filing date of the current invention to modify the examples of CLIFF and use one of the UV light absorbers taught by CLIFF, that is also recited by the claim, based on the teachings of the specification.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over CLIFF (US-20220282064-A1) in view of HUBER (US-20190359790-A1).
Regarding Claims 5-7, CLIFF teaches the invention of Claim 1 above. CLIFF teaches that its antiscratch additive is a primary amide additive ([0136], Table 1) but does not teach the structure of these primary amides. HUBER, in an invention of an additive mixture for automotive thermoplastic polyolefins ([0004]) which includes anti-scratch additives ([0020]) and antioxidants which contain phenol groups ([0053]), teaches that examples of its anti-scratch additives are saturated or unsaturated fatty acid amides, e.g. erucamide, oleamide, and stearamide and that a particularly preferred additive mixture contains the anti-scratch additive erucamide or oleamide ([0028]). Note that these three compounds are all primary amides. The teaching of unsaturated or unsaturated fatty acid amides satisfies Claim 5, the teaching of oleamide satisfies Claim 6 and the teaching of erucamide and stearamide satisfies Claim 6 and Claim 7. It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of CLIFF with the teachings of HUBER and use a saturated or unsaturated fatty acid amide such as erucamide, oleamide or stearamide as its primary amide anti-scratch agent. One would have been motivated to do so because it would be nothing more than using a known compound in a typical manner to achieve predictable results. KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007).
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 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-15 of copending Application No. 18/265,864 in view of HUBER (US-20190359790-A1). Although the claims are not identical, they are not patentably distinct from each other because the copending claims include all limitations of the instant claims in view of HUBER. The mappings of the instant claims to the copending claims are as follows:
Regarding Claim 1, copending Claim 14 depends upon, and therefore includes, Claim 9 and Claim 1. Copending Claim 1 recites the compound recited by formula (1) of instant Claim 1 as part of an additive mixture. Copending Claim 9 recites the additive mixture as part of a composition comprising an organic material. Copending Claim 14 recites that the composition may further comprise an anti-scratch agent. The copending claims do not recite a shaped article of the organic material. HUBER, in an invention of an additive mixture (Abstract) which contains an anti-scratch additive (Abstract) and phenolic antioxidants including 1,3,5-tris[3,5-di-tert-butyl-4-hydroxybenzyl]isocyanurate which satisfies formula (1) of instant Claim 1, in an organic material ([0001]), teaches that its compositions can be advantageously used for the preparation of shaped articles ([0049]). A shaped article is an obvious modification of the copending claims based on the teachings of HUBER.
Regarding Claim 5, copending Claim 15 adds the same limitations that the ant-scratch agent is a unsaturated or saturated fatty acid amide or poly(organo)siloxane to copending Claim 14 that Instant Claim 5 adds to Instant Claim 1.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R FOSS whose telephone number is (571)272-4821. The examiner can normally be reached Monday - Friday 8:00 - 5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE L REUTHER can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764