CTNF 18/285,228 CTNF 83908 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Objections 07-29-01 AIA Claim s 1-12 are objected to because of the following informalities: Regarding claim 1 , a comma should be inserted at the end of line 13 after the phrase “a cyclopentylmethyl group;” and at the end of line 15, the word “of” should be deleted in the phrase “from of 1-hexanol.” Regarding claims 2-12 , these claims depend from an objected to claim and include all of the limitations thereof. Therefore, they are also subject to the objection . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 07-36-01 AIA Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 depends from claim 8 which requires that the isomer mixture of hexyl alcohol comprises 1-hexanol, 2-methylpentanol, 3-methylpentanol, and cyclopentylmethanol. Each of the four recited alcohols must be present as recited by claim 8. However, claim 9 requires that isomer mixture comprises cyclopentylmethanol in an amount of of 20 parts by weight or less. The recitation of “or less” includes zero and the amount of cyclopentylmethanol in the isomer mixture is not allowed to be zero based on the recitation of claim 8. Therefore, claim 9 is slightly broader than claim 8 and it fails to further limit the claim from which it depends. For the purpose of further examination, claim 9 will be interpreted to comprise the cyclopentylmethanol in the isomer mixture in an amount of above zero to 20 parts by weight . Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Magne et al. (Plasticizers from Aconitic and Tricarballylic Acids, Ind. Eng. Chem. 1953, 45, 7, 1546-1547) in view of Kim et al. (KR 20210014597). The citations below for Kim et al. are taken from English language equivalent US 2022/0195143 . Regarding claim 1 , Magne et al. teaches a hexyl aconitate plasticizer (Table 1). This corresponds to Formula I wherein R 1 to R 3 are each an alkyl group of six carbon atoms, which means by definition they would either be an n-hexyl group, a branches hexyl group, or a cyclopentylmethyl group. Magne et al. does not teach that the alkyl group of the aconitate is derived from an isomer mixture of hexyl alcohol, and the isomer mixture of hexyl alcohol comprises two or more chosen from 1-hexanol, 1-methylpentanol, 2-methylpentanol, 3-methylpentanol, 4-methylpentanol, 1,1-dimethylbutanol, 1,2-dimethylbutanol, 1,3-dimethylbutanol, 2,2-dimethylbutanol, 2,3-dimethylbutanol, 3,3-dimethylbutanol, 1-ethylbutanol, 2-ethylbutanol, 3-ethylbutanol, and cyclopentylmethanol. However, Kim et al. teaches a citrate-based plasticizer, which is also a triester plastsicizer, wherein each of the similarly situated R groups are each independently an n-hexyl group, a branched hexyl group or a cyclopentylmethyl group, and these groups are derived from an isomer mixture of hexyl alcohol comprising two or more selected from the group consisting of 1-hexanol, 1-methylpentanol, 2-methylpentanol, 3-methylpentanol, 4-methylpentanol, 1,1-dimethylbutanol, 1,2-dimethylbutanol, 1,3-dimethylbutanol, 2,2-dimethylbutanol, 2,3-dimethylbutanol, 3,3-dimethylbutanol, 1-ethylbutanol, 2-ethylbutanol, 3-ethylbutanol, and cyclopentylmethanol (¶31-33). Magne et al. and Kim et al. are analogous art because they are both from the same field of endeavor as that of the instant invention, namely that of triester plasticizers and their compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use the isomer mixture of hexyl alcohols, as taught by Kim et al., to add the hexyl groups to the plasticizer, as taught by Magne et al., and would have been motivated to do so in order to produce a plasticizer with improved mechanical properties and stress resistance (¶11). Regarding claims 2, 3, and 12 , Kim et al. further teaches that the isomer mixture of hexyl alcohol has a degree of branching of 2.0 or less, preferably 1.5 or less, and 0.1 or more (¶36). Regarding claim 4 , Kim et al. teaches an isomer mixture comprising 1-hexanol, 2-methylpentanol and 3-methylpentanol (¶38). Regarding claims 5 and 6 , Kim et al. teaches that the isomer mixture of hexyl alcohol comprises from 50 parts by weight to 95 parts by weight of branched alcohol with respect to 100 parts by weight of the isomer mixture (¶39). Regarding claim 7 , Kim et al. teaches that the isomer mixture of hexyl alcohol comprises 1-hexanol in 40 parts by weight or less with respect to 100 parts by weight of the isomer mixture (¶40). Regarding claims 8 and 9 , Kim et al. teaches that the isomer mixture of hexyl alcohol can comprise 1-hexanol, 2-methylpentanol, 3-methylpentanol and cyclopentylmethanol with the cyclopentylmethanol present in an amount of 20 parts by weight or less with respect to 100 parts by weight of the isomer mixture (¶41, 42). Regarding claims 10 and 11 , Kim et al. teaches a resin composition comprising a resin in 100 parts by weight and from 5 to 150 parts by weight of the plasticizer (¶69, 71), wherein the resin is one or more of a straight vinyl chloride polymer, a paste vinyl chloride polymer, an ethylene vinyl acetate copolymer, an ethylene polymer, a propylene polymer, polyketone, polystyrene, polyurethane, natural rubber, and synthetic rubber (¶70). Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST. 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, Mark Eashoo can be reached at 571-272-1197. 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. /ANGELA C SCOTT/Primary Examiner, Art Unit 1767 Application/Control Number: 18/285,228 Page 2 Art Unit: 1767 Application/Control Number: 18/285,228 Page 3 Art Unit: 1767 Application/Control Number: 18/285,228 Page 4 Art Unit: 1767 Application/Control Number: 18/285,228 Page 5 Art Unit: 1767