DETAILED ACTION
Summary
Applicant’s amendment dated 13 April 2026 is acknowledged. Claims 1, 4-14 and 16-18 are pending.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
New grounds of rejection are necessitated by applicant’s amendment dated 13 April 2026. For this reason, this action is properly made final.
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
Claims 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.
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. Examiner recommends either reciting “an additional phenolic antioxidant” or “a phenolic antioxidant different from the compound of formula (1)” to make it clear that this is a new component.
Claim Rejections - 35 USC § 103
Claims 1, 4, 8-14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over CLIFF (US-20220282064-A1).
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]) and exemplifies polypropylene homopolymer (Table 1) which satisfies the requirement of an organic material which is a thermoplastic polyolefin. 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])
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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.
CLIFF teaches that its composition may contain a hindered amine light stabilizer (HALS) ([0057]). CLIFF generally teaches that additional many suitable HALS without limitation ([0063]) including 1-(2-hydroxy-2-methylpropoxy)-4-octadecanoyloxy-2,2,6,6-tetramethylpiperidine ([0077]) and N,N'-bis-formyl-N,N'-bis(2,2,6,6-tetramethyl-4-piperidyl)hexamethylenediamine ([0096]) which are the recited two HALS. CLIFF exemplifies a different HALS ([0151]) 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 one of the two recited HALS based on the teachings of the specification.
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 Claim 8, modified CLIFF teaches the example of Claim 1. 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 Claims 9-10, modified 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, modified 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, modified 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.
Alternatively, 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 13, modified 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 and 16, modified CLIFF teaches the invention of Claim 1. CLIFF teaches that its composition may contain an ultraviolet light absorber ([0120]) and that suitable light absorbers may be selected from a group which includes an oxamide, hydroxyphenylbenzotriazole, triazines, hydroxybenzoate and 2-hydroxyphenone ([0121]) and teaches several specific hydroxyphenyltriazoles which are 2(2’-hydroxyphenyl)benzotriazoles ([0123]). The teaching of a UV light absorber satisfies Claim 14, the specific light absorbers which match those recited in Claim 16 satisfy that claim. CLIFF does not exemplify a UV light absorber, 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 a UV light absorber based on the teachings of the specification.
Regarding Claim 17, modified 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, modified 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 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).
Response to Arguments
Applicant's arguments filed 7 June 2023 have been fully considered but they are not persuasive.
The amendment to Claim 1 has overcome the rejection under obviousness double patenting that were set forth in the previous office action. This rejection has been withdrawn.
The amendment to Claim 1 reciting that the organic material is a thermoplastic polyolefin has resolved antecedency issues with recitations of the organic material and the thermoplastic polyolefin in the dependent claims. The rejections under 35 USC 112(b) for the dependent claims have been withdrawn.
Applicant argues that reciting a phenolic antioxidant recited in Claim 11 is not indefinite because it is a different compound than the phenolic antioxidant represented by formula (1) in Claim 1 such as those recited in Claim 12. In response, Examiner agrees that Claim 12 remedies the indefiniteness by reciting specific compounds that are different than the one represented by formula (1) in Claim 1 and Claim 12 is not rejected for this reason. However, neither Claim 11 nor Claim 13 include the structures recited by Claim 12, nor do they recited that the phenolic antioxidant is a different compound than the one represented by formula (1) in Claim 1. The rejection under 35 USC 112(b) is maintained.
Applicant argues that one would not be motivated to combine the recited hindered amine light stabilizers with the thioester additive in the invention of CLIFF because thioesters are known for negatively impacting the performance of hindered amine light stabilizers. In response, CLIFF teaches and exemplifies thioesters and hindered amine light stabilizers together (Tables 2, 3 and 5) and concludes that it is possible to include thioesters in combination with hindered amine light stabilzers and certain antioxidants (such as AO1, the recited formula 1 compound of Claim 1) and still achieve excellent weathering results ([0179]).
Applicant argues unexpected results, that its examples using “ADDITIVE 3” and “ADDITIVE 4” which combine the formula (1) compound with each of the two recited hindered amine light stabilizers provide improvements in grey scale, delta E and stickiness relative to those compositions which contain only the formula (1) compound. In response, the evidence in the instant examples shows improvement when hindered amine light stabilizers (HALS) are used in combination with hindered phenol antoxidants such as the formula (1) compound, but CLIFF also teaches improvement when hindered amine light stabilizers (HALS) are used in combination with phenolic antioxidants such as the formula (1) compound. CLIFF generally teaches the two recited HALS, but exemplifies a different HALS. It would be obvious to modify the examples of CLIFF and use the recited HALS based on the teachings of the specification. Note that the formula (1) compound and the recited hindered amine light stabilizers are common, well-known and commercially available compounds (e.g. Irganox 3114 and Uvinul 4050H) which are frequently disclosed as suitable antioxidants and light stabilizers in similar applications. The evidence provided in the instant examples does not show why the specific combination of the recited formula (1) antioxidant and the one of the recited HALS compounds provide unexpected results over the combinations of antioxidants and HALS compounds which are exemplified in other applications, such as the invention taught by CLIFF.
Conclusion
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.
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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