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 .
DETAILED ACTION
Election/Restrictions
Applicant's election without traverse of Group I, species IA, claims 1-2 and 5-10 in the reply filed on 04/06/2026 is acknowledged. Since species IA has been found allowable, species IB and IC have been pulled back to be considered in this office action. Accordingly, claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claims. Claims 1-12 are currently under examination on the merits.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 5-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Mod (US 3,803,186, ‘186 hereafter).
Regarding claims 1 and 6, ‘186 discloses a compound being N-methyl tetrahydrofurfurylamine (Example 49) which has a chemical formula reading upon the formula as recited in the present claims 1 and 6, wherein R1 is hydrogen and R2 is methyl being an alkyl group. ‘186 does not expressly set forth that the compound is a plasticizer; however, since the prior art compound is identical to the compound as presently claimed, it is reasonable to expect that the prior art compound is capable of functioning as a plasticizer in a polymer composition. It is also noted that an alkyl moiety derived from any ketone and a crop-based ketone as recited in the claims is in product by process format and that the process limitation does not further limit the product structurally unless it imparts structure by the recited process steps. The product being formed as claimed would not differentiate over a product formed in another conventional way structurally. Therefore, if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process (see MPEP 2113 for PBP). Regarding claim 9, the compound as disclosed also reading upon an additional plasticizer without setting forth that the additional plasticizer has a different chemical structure.
Claims 1, 5-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Decampo et al (US 2015/0344453, ‘453 hereafter).
Regarding claims 1, 5-6 and 9, ‘453 discloses a compound being tetrahydrofuran-2,5- diyl) bis(N-heptaneaminomethane which has a chemical formula reading upon the formula as recited in the present claims 1 and 6, wherein R1 is C-NH-R2, and R2 is heptyl being an alkyl group. ‘453 does not expressly set forth that the compound is a plasticizer; however, since the prior art compound is identical to the compound as presently claimed, it is reasonable to expect that the prior art compound is capable of functioning as a plasticizer. It is also noted that an alkyl moiety derived from any ketone and a crop-based ketone as recited in the claims is in product by process format and that the process limitation does not further limit the product structurally unless it imparts structure by the recited process steps. The product being formed as claimed would not differentiate over a product formed in another conventional way structurally. Therefore, if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process (see MPEP 2113 for PBP). Regarding claim 9, the compound as disclosed also reading upon an additional plasticizer without setting forth that the additional plasticizer has a different chemical structure.
Allowable Subject Matter
Claims 2-4, 7-8 and 10-12 are objected to as being dependent upon a rejected base claim 1, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The reason for the allowance is that the prior art of record does not specifically disclose or fairly suggest a plasticizer or a composition containing a plasticizer having chemical formulae as recited in the present claims 2-4 and 10-12. The prior art of record also fails to disclose or fairly suggest a composition comprising a compound as recited in claim 6 and a polymer as recited in the present claims 7-8.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
Prosecution Insights