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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/9/2026 has been entered.
Response to Amendment
The claims filed on 1/9/2026 has been entered. Claim 1 is currently amended. Claims 4-12 are new. Claim(s) 1-12 is/are pending and is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 1/9/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that None of the cited references teaches or suggests achieving ASTM-verified >94% bio- based carbon in a chloro-functional plasticizer while maintaining mechanical integrity in a PVC surface covering. Frenkel's disclosure of epoxidized vegetable oils as auxiliary stabilizers neither anticipates nor renders obvious the claimed plasticizer, phr ranges, or ASTM-defined bio-content thresholds.
In response, the recited >94% bio- based carbon in a chloro-functional plasticizer is a statement of the source of the product, and therefore is a product-by-process limitation. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through this process is chloro-methoxy fat diethylene glycol dinitrate. The prior art teaches the exact product. Therefore, the recited “having a bio-based carbon content of at least 95%” does not gain patentable weight. In addition, Frenkel expressively teaches that the plasticizer is bio-based [title]. It would have been obvious to one of ordinary skill in the art at the time of filing to select the chloro-functional plasticizer from a bio source having a bio-based carbon content of at least 95%.
Applicant argued that Frenkel is entirely silent with respect to flame resistance, migration resistance, or performance parity relative to phthalate-plasticized systems. The Examiner's assertion that epoxidized triglyceride oils are "recognized in the art" as epoxidized polyglycerides is unsupported by the cited disclosure and overlooks the structural and functional distinctions now expressly recited in claim 1.
In response, the motivation of substituting Frenkel’s plasticizer with Tootoo.com’s chloro-methoxy fat diethylene glycol dinitrate is providing fire resistant, nontoxic and environmentally friendly properties to the composition [Tootoo, Product Description]. This would have been recognized as beneficial in making a floor covering.
Frenkel teaches epoxidized triglyceride oils which is the same as the claimed co-stabilizer consists of an epoxidized polyglyceride”. It doesn’t matter if Frenkel called it a co-stabilizer or not.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries 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 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Frenkel (US 20120214920) in view of Harkins et al (US 4,698,258) and Tootoo.com (the chloro methoxy fat diethylene glycol dinitrate sheet, 17 January 2010) supplied in the IDS of 11/10/2023.
Regarding claims 1 and 4, Frenkel teaches a composition comprising:
(a) a halogen-containing polymer, e.g. polyvinyl chloride (PVC) [0150];
(b) a non-phthalate bio-based plasticizer [0116]. These compounds have been interpreted to be bio-based because they are derived from vegetable oils;
(c) a stabilizer, e.g. calcium and zinc carboxylates as organocalcium and organozinc stabilizers since carboxylates are organic, a barium/fatty acid soap as organobarium since fatty acids are organic [0166]-[0167].
(d) epoxidized soybean oil, epoxidized linseed oil and epoxidized rapeseed oil [0179]. These compounds are recognized in the art as epoxidized polyglycerides and thus read on the claimed co-stabilizer.
Frenkel is silent concerning the composition being formed into a vinyl composition surface covering. Harkins teaches surface coverings such as floor tiles [Abstract, 1:53-25] made from polyvinyl chloride (PVC) resins that contain plasticizer and stabilizers [5:54-62]. Frenkel and Harkins are analogous art in that they are concerned with the same field of endeavor, namely sheet materials formed from plasticized and stabilized PVC. At the time of the invention, it would have been obvious for a person having ordinary skill in the art to shape the invention of Frenkel into a unit such as a vinyl composition floor tile (a type of surface covering), with the motivation of selling it to make money, since PVC tiles are profitable (Harkins [1:53-65]).
Frenkel only defines two components in the composition: (1) a halogen-containing polymer and (2) a plasticizer composition comprising the vicinally diacylated fatty acid ester [Abstract and claim 1]. Any other components are optional.
Tootoo.com indicates that chloro methoxy fat diethylene glycol dinitrate is a plasticizer for PVC. At the time of the invention, it would have been obvious for a person having ordinary skill in the art to substitute the plasticizer of Frenkel for the plasticizer of Tootoo.com. The motivation in doing so would have been providing fire resistant, nontoxic and environmentally friendly properties to the composition [Tootoo, Product Description]. By replacing Frenkel’s vicinally diacylated fatty acid ester with chloro methoxy fat diethylene glycol dinitrate, there is only one plasticizer in Frenkel’s composition, meeting the claimed limitation of “consisting of chloro methoxy fat diethylene glycol dinitrate”.
The recited “having a bio-based carbon content of at least 95% as determined in accordance with ASTM-D6866” is a statement of the source of the material, and therefore is a product-by-process limitation. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through this process is chloro-methoxy fat diethylene glycol dinitrate. The prior art teaches the exact product. Therefore, the recited “having a bio-based carbon content of at least 95%” does not gain patentable weight. In addition, Frenkel expressively teaches that the plasticizer is bio-based [title]. It would have been obvious to one of ordinary skill in the art at the time of filing to select the chloro-functional plasticizer from a bio source having a bio-based carbon content of at least 95%.
The plasticizer in Frenkel is used at 10-60 phr (Frenkel [0188]) which overlaps the claimed range of 25-40 parts with sufficient specificity. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Frenkel teaches the stabilizer at 0.05 to 5 parts by weight (Frenkel [0168]) which overlaps the claimed range of 1-2 parts with sufficient specificity.
Frenkel’s stabilizers and co-stabilizers are optional as stated above. Frenkel teaches epoxidized soybean oil, epoxidized linseed oil and epoxidized rapeseed oil [0179]. Even though Frenkel does not call them co-stabilizers, these compounds are recognized in the art as epoxidized polyglycerides and thus read on the claimed co-stabilizer. It would have been obvious to one of ordinary skill in the art at the time of filing to select any one of these species in Frenkel’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07. When one of the species is selected, the claimed limitation of “the co-stabilizer consists of an epoxidized polyglyceride” is met.
Frenkel teaches that the amount of epoxidized soybean oil, epoxidized linseed oil and epoxidized rapeseed oil (corresponding to the claimed co-stabilizer as stated above) is in amounts of 5-40 parts by weight per 100 parts PVC [0180], overlapping the claimed 1.5-7 parts. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
The recited “the surface covering has a total bio-based carbon content of 1-35% by total weight of the surface covering” is a statement of product-by-process limitation because it indicates the source of the material or how the product is made. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through this process is the surface covering. Since the prior art teaches the exact surface covering product, the recited limitation does not gain patentable weight. In addition, Frenkel expressively teaches that the plasticizer is bio-based [title] and is at 10-60 phr level. It would have been obvious to one of ordinary skill in the art at the time of filing to select a bio-based plasticizer at that level in the surface covering product and obtain the recited 1-35% bio content in claim 1 and 15-35% in claim 4.
Regarding claim 5, the recited “the chloro-methoxy fat diethylene glycol dinitrate imparts inherent flame resistance relative to a surface covering plasticized with diisononyl phthalate at an equivalent plasticizer loading” is a property of the chloro-methoxy fat diethylene glycol dinitrate. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present. Besides, Tootoo.com expressively teaches that the chloro-methoxy fat diethylene glycol dinitrate provides flame resistance as stated above.
Regarding claim 6, the recited “the surface covering exhibits tensile strength and dimensional stability comparable to or greater than a diisononyl phthalate- plasticized surface covering at an equivalent plasticizer loading” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 7, Harkins teaches that the surface covering comprises a bases multilevel layer; and a clear wear layer is adhered to the base layer [claim 8].
Regarding claim 8, Harkins teaches that the wear layer comprises a plastisol containing polyvinyl chloride resin, plasticizer, stabilizer and viscosity controlling materials [col.11 lines 33-36]. It would have been obvious to one of ordinary skill in the art at the time of filing to select the polyvinyl chloride, the bio-based plasticizer, the stabilizer, and the co-stabilizer from Frenkel’s teaching to make the wear layer because Frenkel teaches sheet materials formed from plasticized and stabilized PVC as stated above.
Regarding claim 9, Frenkel 10-60 phr of the plasticizer and 5-40 phr of epoxidized soybean oil, epoxidized linseed oil and epoxidized rapeseed oil (corresponding to the claimed co-stabilizer) as stated above. Thus, the ratio of the plasticizer to the co-stabilizer is between 1:4 and 12:1, as calculated by the examiner, which overlaps the claimed range of between 3.5:1 and 16:1 with sufficient specificity.
Regarding claim 10, Frenkel teaches 0.05 to 5 phr of stabilizer, and 5-40 phr of the co-stabilizer as stated above. Thus, the stabilizer and the co-stabilizer together are present in an amount of 5.05-45 phr, overlapping the claimed 3-9 parts per 100 parts of the polymer with sufficient specificity.
Regarding claims 11 and 12, the recited “the surface covering is produced by extrusion followed by calendaring” and “the surface covering is laminated under heat and pressure to form a textured luxury vinyl tile” are product-by-process limitations and do not gain patentable weight as stated above.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over the references applied to claim 1, further in view of Ruland (US 20100319282 A1).
Regarding claims 2-3, Frenkel in view of Harkins, and Tootoo.com teaches the surface covering in claim 1 as stated above.
The PVC polymer in the surface coverings such as floor tiles is in a form of a layer having the bio-based plasticizer.
The above prior arts do not teach the claimed cork in the layer. However, Frenkel teaches the use of organic filler material like wood flour (Frenkel [0181]).
In the same field of endeavor, Ruland teaches a floor panel containing polymer PVC and cork granules evenly distributed in the layer (Ruland [abstract]), for the benefit of “improved resiliency, impermeability, as well as inherent low thermal conductivity, low density and good energy absorption” (Ruland [0006]).
It would have been obvious for one of ordinary skill in the art to select cork as the filler in Frenkel’s surface covering, for the benefit of “improved resiliency, impermeability, as well as inherent low thermal conductivity, low density and good energy absorption”.
The amount of cork is 15-150 parts based on 100 parts of polymer (Ruland [0040]), overlapping the claimed 35-70 parts cork.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (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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/JIANGTIAN XU/Examiner, Art Unit 1762
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