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 .
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.
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Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/270,303 in view of Tan et al. (RSC Advances, 2017, vol. 7, p. 18178-18188).
Instant claim 1 and claim 1 of ‘303 are both drawn to ester-based plasticizers. The plasticizer of Instant claim 1 has the structure shown here:
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Claim 1 of ‘303 recites a plasticizer having the following structure:
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It is evident from Chemical Formula 1 of ‘303 that this is an ester plasticizer based on phthalic, isophthalic, or terephthalic acid (i.e. a phthalate ester plasticizer), whereas instant claim 1 requires a hydrogenated version of the same plasticizer (i.e. cyclohexanedicarboxylic acid plasticizer).
Tan teaches that phthalate plasticizers have been widely used in the plastics industry to enhance flexibility and durability of plastics products, especially polyvinyl chloride (PVC). However, phthalates are one of the main chemical agents causing cancer, obesity, and reproductive problems by disrupting the endocrine system. Cyclohexanedicarboxylic acid (CHDA) ester plasticizers obtained by hydrogenating the benzyl ring of phthalate plasticizers have gained interest due to their advanced physical properties and low toxicity (p. 18718, Introduction). Tan’s study illustrates a high-yield synthesis of phthalate-free plasticizers by hydrogenation in water (Abstract).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Chemical Formula 1 of ‘303 by hydrogenation according to Tan in order to avoid issues of toxicity known to arise from phthalate-based plasticizers. Hydrogenation of the benzene rings in Chemical Formula 1 of ‘303 will result in a structure identical to Chemical Formula 1 of instant claim 1. All other limitations of the two claims are identical. Therefore, modification of ‘303 in view of Tan reads on instant claim 1.
Instant claims 2-10 are identical to claims 2-10 of ‘303.
Instant claims 11-14 amount to a combination of claim 6 of ‘303 with each of claims 2, 3, 4, and 5 of ‘303, respectively.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 1-14 are distinguished from the prior art and will be in condition for allowance in the event that the nonstatutory double patenting rejection presented above is overcome. The following is a statement of reasons for the indication of allowable subject matter:
Claim 1 is drawn to a plasticizer according to Chemical Formula 1 shown above. Claim 1 further requires that Relation 1 is satisfied: 0.05 < |A0-A1-3/An| < 0.45.
Kim et al. (US 2018/0163019) teaches a mixed composition of cyclohexane 1,3-diester plasticizers prepared by transesterification and hydrogenation (Abstract). The plasticizer has the following formula:
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where R1 and R2 may be alkyl groups having 3-10 carbon atoms (p. 1, [0009]-[0010]). The plasticizer is prepared by hydrogenating diesters of Formula 4 at p. 1, [0014]. Kim’s plasticizer reads on the claimed Chemical Formula 1 where n=0. However, because no species are present where n=1-10, Relation 1 will be 1.0 which falls outside the claimed range.
Angyal et al. (DE 4201941 A1; machine translation) teaches a polymer coating system comprising a plasticizer (C) (Abstract). The plasticizer may be an oligomer having the following formula:
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wherein R1 may include 6 to 18 carbon atoms; R2 is an aliphatic diol; and R3 may be a cycloaliphatic dicarboxylic acid residue (p. 6, [0026]). This structure is similar to the claimed Chemical Formula 1 where n=1. However, no species where n=0 or n=2-10 are present. As with Kim, The calculated value for Relation 1 will be 1.0, falling outside the claimed range.
A thorough search of the remaining prior art revealed no other reference or combination of references which would fairly teach, suggest, or otherwise motivate one of ordinary skill in the art to arrive at the claimed invention. Therefore, Claims 1-14 are distinguished from the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S JONES JR whose telephone number is (571)270-7733. The examiner can normally be reached 9 AM - 5 PM Pacific.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert 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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/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762