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 .
Response to Amendment
The Amendment filed 06/22/2026 has been entered. Claims 1 and 4-17 remain pending in the application and Claims 4-17 were withdrawn from further consideration. Claims 2-3 are canceled. Claim 1 was amended and support for amendments are found in the original claims and Specification. Applicant’s amendments to Claim 1 has have overcome the objection previously set forth in the Non-Final Office Action mailed 05/19/2026.
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-3 in the telephone interview on 05/12/2026 is acknowledged.
The traversal is on the ground(s) that the Examiner has not met the burden of proof in that the permanent press clothing rationale and the “oxidation reaction” rationale are unsupported. This is not found persuasive because Examiners must provide reasons to support their conclusions, but need not cite documents (MPEP 803(II)). In particular, there are a number of ways to arrive at an ester besides reacting esterification or transesterification with butanetetracarboxylic acid. For example, the carboxylic acid could be reacted to form the salt form, and then reacted with the alcohol. Furthermore, it is necessary to search for the inventions in a manner that is not likely to result in finding art pertinent to the other inventions because different search queries would be required. For example, a search for the invention of Group III would involve utilizing the search query "plasticizer" which would not result in finding prior art pertinent the invention of Group I and II, which do not require the plasticizer of Group III. Additionally, the different groups have a separate classification as shown in the Non-Final office action mailed on 05/19/2026.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims.
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 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Greenwald et al. (US 2843466 A; hereafter as “Greenwald”).
Greenwald teaches tetraesters [Column 2, Lines 11-12, 45-48], corresponding to the compound of Claim 1, comprising:
tetra alkyl esters of 1,2,3,4-butanetetracarboxylic acid (compound shown below) [Column 1, Lines 41-56; Column 3, Lines 1-6], corresponding to the tetraester of 1,2,3,4-butanetetracarboxylic acid of Claim 1; and
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153
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[Col. 1, Line 50]
Wherein R, R’, R’’, and R’’’ represent branched amyl radicals [Col. 1, Lines 51-56] thereby corresponding to the isopentyl radical are 3-methylbutyl radicals as required by Claim 1. Greenwald further teach the R, ‘, R’’, R’’’ can be of like configuration [Col. 1 Line 5] thereby reading on the claimed 100 mol% as required by Claim 1.
Furthermore, Greenwald teaches a genus containing 7 species, which includes amyl-groups, which is itself three isomers. This totals a genus of about 10 species, which is finite and one of ordinary skill in the art would instantly envisage each of them. The genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. See MPEP 2131.02(III).
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Greenwald et al. (US 2843466 A; hereafter as “Greenwald”).
Greenwald teaches the compound of Claim 1 as set forth above and incorporated herein by reference.
Greenwald further teaches a tetraester of n-amyl [Example C; Table 1].
However, Greenwald does not explicitly teach the 3-methylbutyl isomer of Claim 1.
Nevertheless, isomers of n-amyl, including the claimed 3-methybutyl isomer, are obvious variants of one another. It is the examiner' s position that it would have been obvious to one of ordinary skill in the art to expect similar beneficial results with compounds having only isomeric differences. Case laws holds that isomers are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09, In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Furthermore, Greenwald specifically teaches an embodiment including a 2-ethyl-butyl group, a homolog of the claimed 3-methybutyl group. In this case, the two chemical groups only differ by a single CH2- group. If such a prior art species or subgenus is structurally similar to that claimed, its disclosure may provide a reason for one of ordinary skill in the art to choose the claimed species or subgenus from the genus, based on the reasonable expectation that structurally similar species usually have similar properties. See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Deuel, 51 F.3d 1552, 1558, 34 USPQ2d 1210, 1214 (Fed. Cir. 1995) (“Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.”). See MPEP 2144 .08.
Response to Arguments
The previous grounds of rejection are modified in view of the amendments to the claims. To the extent that the Applicant’s argument arguments filed 06/22/2026 are still relevant, they are addressed below.
Applicant argues (1) Greenwald fails to disclose the claimed compound. However, attention is directed to the disclosure above, wherein Greenwald disclose the claimed compound. More specifically, Greenwald teaches tetraesters [Column 2, Lines 11-12, 45-48], comprising: tetra alkyl esters of 1,2,3,4-butanetetracarboxylic acid [Column 1, Lines 41-56; Column 3, Lines 1-6], wherein R, R’, R’’, and R’’’ represent branched amyl radicals [Col. 1, Lines 51-56] that can be of like configuration [Col. 1 Line 5] thereby reading on the claimed compound and rendering it anticipated. Thus, the Applicant’s argument is not persuasive.
Applicant argues (2) Greenwald fails to disclose or suggest any advantageous plasticizing properties realized therefrom. However, evidence of secondary results are not relevant to an anticipation rejection and an improved compound does not mean the compound is unexpected. See MPEP 2131.04 and MPEP 716.02(a). Furthermore, the claimed invention is drawn to a compound, not a plasticizing compound, thus, it is unclear how the plasticizing composition data is relevant to the claimed compound. It is also noted that the features upon which applicant relies (i.e., the plasticizing properties) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In addition, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, the Applicant’s argument is not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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 LANEE REUTHER can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DORIS LING/Examiner, Art Unit 1764
/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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