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
Claims 1-18 of G.L. Yuan, et al., US 18/555,812 (10/17/2023) are pending. Claims 14-18 are withdrawn as drawn to non-elected Groups (II)-(III). Claims 1-13 are under examination on merits. Claims 1-6, 8-13 are rejected. Claims 7 and 10-13 are objected to.
Election/Restrictions
Pursuant to the Restriction/Election Requirement, Applicant elected Group (I) (claims 1-13), with traverse, in the Reply filed on 07/10/2026. Claims 14-18 drawn to non-elected Groups (II)-(III) are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Applicant’s Traversal
Applicant argues on the ground that there is a special technical feature sufficient to confer unity of invention and the special technical feature is the composition of claim 1 that is demonstrated in the as-filed specification to bring about unexpected results. Page 2 of the Remarks filed on 07/10/2026.
These arguments have been fully considered but not persuasive. As mentioned in the previous Office action that even the inventions of Group I-III require a common technical feature that is the composition of claim 1; however, this common technical feature is not a special technical feature as discussed in the 102/103 rejection below. Therefore, Groups (I)-(III) lack unity of inventions. With regards the argued unexpected results, it should be note that the same composition has the same properties; further, Examiner does not find any convinced evidence in the as-filed specification to show the composition claimed by claim 1 has a unexpected results given the claimed composition does not require to contain diisocyanate while all the compared composition disclosed in the specification contain diisocyanate. Thus, the Restriction Requirement is proper and is made as Final.
Claim Objections
Claims 10-13 are objected to on the grounds of improper parenthetical. While Applicant may intend that the parenthetical phrase adds clarification, it is at best superfluous and better practice is to amend so as to remove the parentheticals to avoid confusion as to whether Applicant improperly intends preferences within the claim. See MPEP § 2173.05(d). Correction of all such parenthetical throughout the claims is required.
Claims 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 7 is objected to because the structure of the Formula III (R4 and R5)has overlapping number marks.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record
of what applicant intends to claim. See, MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning
is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look
to how the claim term is used in the prior art, which includes prior art patents, published
applications, trade publications, and dictionaries. MPEP § 2111.01 (III).
Interpretation of Claim Term “sterically hindered phenol”, “thioether” and “phosphite”
Claim 1 recites the limitations as follows:
1. A diisocyanate stabilizer, comprising a sterically hindered phenol other than butylated hydroxytoluene, a thioether, and a phosphite other than triphenyl phosphite.
The specification provides the terms of “sterically hindered phenol” and “thioether” as:
The sterically hindered phenol includes phenols that have one or more phenolic hydroxyl groups on the aromatic ring, and preferably those that have a substituent, preferably an alkyl group, in the ortho positions, most preferably in the ortho and para positions, to the phenolic hydroxyl group(s).
Specification at page 5, line 25-29, emphasis added.
Thioether used according to the present disclosure includes compounds which comprise at least one thioether group, i.e. a sulfur atom which is substituted by two identical or different organic substituents.
Specification at page 8, line 14-17, emphasis added. Therefore, terms of “sterically hindered phenol” and “thioether” are interpreted as defined by the specification.
The specification has an open manner discussion on the claimed “phosphite” as follows:
Suitable phosphites according to the present disclosure include but not limited to mono phosphites and polymeric phosphites.
Specification at page 13, line 13-15. According to the information disclosed in the specification, the term of “phosphite” is broadly and reasonably interpreted as any compound comprising one or more phosphite group.
Claims Rejections 35 U.S.C. 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. — The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 4 and 10-11 rejected under 35 U.S.C. 112(b) as indefinite because claim 4 recites the language of “preferably” and claims 10 -11 recite the language of “e.g.”, each of which is an improper preference because there is a question or doubt as to whether the feature introduced by the language of “preferably” and/or “e.g.” is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 112(d)
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.
Claims 6 and 13 are rejected under 35 U.S.C. 112(d) 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.
Per claim interpretation above that the sterically hindered phenol in claim 1 must comprises one or more phenolic hydroxyl groups on an aromatic ring. Claims 6 and 13 all depend on claim 1, and each of these claims limit sterically hindered phenol can be “branched C7-C9 ester” and “branched C13-C15 ester”, which does not have to comprise a phenol group, therefore, claims 6 and 13 cannot further limit claim 1, rather extending the scope of claim 1.
Claims 6 and 13 are further rejected under 112(d) because each of these claims further limits the sterically hindered phenol in claim 1 can be 3,5-bis(1,1-dimethylethyl)-4-benzenepropanoic acid, which does not have to comprise a phenol group, therefore, they cannot further limit claim 1, rather extending the scope of claim 1.
Claim Rejections - 35 USC § 102
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.
35 U.S.C. 102(a)(1)(a)(2) Rejection over Zhou
Claims 1-2, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Y.Q. Zhou, et al, WO2018041649A1(2018)(“Zhou”) evidenced by JP2009114160A. Zhou teaches one liquid antioxidant composition comprising:
5% of N-phenyl-N'-(1 ,3-dimethylbutyl)-p-phenylenediamine,
30% of 2,4-bis[(octylthio)methyl]-o-cresol (irganox 15201),
5% of 3,5-bis(1,1 -dimethylethyl)-4-hydroxybenzenepropanoic acid octadecyl ester,
30% of tetra-C12-15-alkyl(propane-2,2-diylbis(4,1-phenylene))bis(phosphite) and
30% of paraffin oil.
Zhou at page 48-49, Example 8, emphasis added.
3,5-bis(1,1-dimethylethyl)-4-hydroxybenzenepropanoic acid octadecyl ester is a sterically hindered phenol other than butylated hydroxytoluene; 2,4-bis[(octylthio)methyl]-o-cresol is a thioether and also is a sterically hindered phenol other than butylated hydroxytoluene; tetra-C12-15-alkyl(propane-2,2-diylbis(4,1-phenylene))bis(phosphite) is a phosphite other than triphenyl phosphite. Thus, the Zhou Example 8 composition meets each and every limitation of claim 1, therefore, claim 1 is anticipated. With regards the preamble language of “A diisocyanate stabilizer”, it is interpreted as an intended use of the claimed composition rather claim limitation.
Claim 2 is anticipated because the in the Zhou composition:
the concentration of 2,4-bis[(octylthio)methyl]-o-cresol is 30% that anticipates the claimed 10-90% for a sterically hindered phenol other than butylated hydroxytoluene and also anticipates the claimed 5-80% for a thioether;
the concentration tetra-C12-15-alkyl(propane-2,2-diylbis(4,1-phenylene))bis(phosphite) is 30% that anticipates the claimed 5-80% for a phosphite other than triphenyl phosphite.
Claim 4 is anticipated because Zhou teaches his composition is a liquid at 25ºC under 101.325PKa. Zhou at page 2, line 26-27.
Claim 6 is anticipated because 2,4-bis[(octylthio)methyl]-o-cresol (Irganox 1520) also is 4,6-bis[(octylthio)methyl]-o-cresol recited by claim 6.
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 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.
35 U.S.C. 103 Rejection over Zhou
Claims 9 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Y.Q. Zhou, et al, WO2018041649A1(2018)(“Zhou”) alone as applied above for the rejection claim 1, or further in view of the information disclosed by AKrochem (2018)(“AK”).
Y.Q. Zhou, et al, WO2018041649A1(2018)(“Zhou”)
Zhou teaches a liquid antioxidant composition used for raw rubbers comprising 5% to 30% by weight of at least one aromatic amine-based antioxidant agent, 20% to 70% by weight of at least one hindered phenol-based antioxidant agent, 0% to 40% by weight of at least one phosphite-based antioxidant agent; and 20% to 40% by weight of at least one solvent. Zhou at Abstract, emphasis added.
Regarding the liquid phosphite-based antioxidant agent, Zhou also teaches that:
Preferably, the liquid phosphite-based antioxidant agent is one or more selected from group "C-L" consisted of diphenyl-mono(2-ethylhexyl)phosphite, diphenyl-monotridecyl-phosphite, diphenyl-isodecylphosphite, diphenyl-isooctyl-phosphite, diphenyl-nonylphenyl-phosphite, triphenyl phosphite, triisodecyl phosphite, tris(2-ethylhexyl)phosphite, tetraphenyltetra(tridecyl)pentaerythritol tetraphosphite, 1,1,3-tris(2-methyl-4-di-tridecylphosphite-5-tert-butylphenyl)butane, 4,4'-butylidene bis(3-methyl-6-tert-butyl- di-tridecyl phosphite), 2,2'-ethylidene bis(4,6-di-tert-butyl-phenol)fluorophosphite, 4,4'-isopropylidene-diphenyl alkyl (C12 to C15) phosphites,
bis(nonylphenyl)pentaerythritol diphosphite, hydrogenated bisphenol A- pentaerythritol phosphite polymers, tetra-C12-15-alkyl(propane-2,2-diylbis(4,1- phenylene))bis(phosphite), 2-entylhexyldiphenyl phosphite, tris(nonyl-phenyl)phosphite, tris((mono and di)-nonylphenyl)phosphite,. And preferably, the solid phosphite-based antioxidant agent is one or more selected from group "C-S" consisted of tri-(2,4-di-tert-butylphenyl)phosphite, tetraphenyl dipropylene glycol diphosphite, distearylpentaerythritoldiphosphite, 3,9-bis(octadecyloxy)-2,4,8,10- tetraoxa-3,9-diphosphaspiro[5.5]undecane.
Zhou at page 12, line 6-20.
As mentioned above for the 102 rejection that Zhou teaches a composition in the Example 8, which meets each and every limitation of claim 1. Per Tables 1-2 Zhou teaches that the Example 8 composition has better kinematic viscosity at all the tested temperature, less change in Mooney viscosity and Yellowing Index after two days and 3 days respectively. See Zhou Tables 1-2 at page 55-56. Therefore, one ordinary skill seeking antioxidant stabilizer for a raw rubber has a motivation to elect the Zhou Example 8 for modification.
Difference between Zhou Example 8 and Claims 9 and 12-13
The Zhou Example 8 composition differs claims 9 and 12-13 in that the phosphite included in the Zhou composition is not the claimed phosphite. The Zhou Example 8 composition further differs claim 13 in that it does not comprises the claimed thioether.
The Information disclosed by AKrochem (2018) (“AK”)
AK teaches that
antioxidant DLTDP2 is a thioether antioxidant synergist heat stabilizer. DLTDP find application where improved long-term, heat aging properties are required. Typically, DLTDP is used in conjunction with hindered phenolic antioxidants as well other antioxidant chemistries, to enhance their performance. It is a nonvolatile stabilizer and offers low oral and dermal toxicity. DLTDP is non-staining, with good color retention, good compatibility and low extractability.
AK at description, emphasis added. AK also teaches that antioxidant DLTDP can be applied for rubber. AK at application, line 1.
Obviousness Rationale of Claims 9 and 12-13
It would have been prima facie obvious for one skilled artisan to arrive at the instantly claimed invention based on the teachings from Zhou with a reasonable expectation of success before the effective filing date of the claimed invention.
Claim 9 is obvious because one ordinary skill in the art seeking an antioxidant for raw rubber is motivated to modify the Zhou Example 8 composition by replacing the tetra-C12-15-alkyl(propane-2,2-diylbis(4,1-phenylene))bis(phosphite) with other phosphite such as diphenyl-mono(2-ethylhexyl)phosphite that maps the claimed formula (IV) in claim 9 as both R6 and R7 are phenyl, R8 is 2-ethylhexyl; thus arrive at a composition meeting each and every limitation of claim 9, therefore, claim 9 is obvious. One ordinary skill in the art has a motivation to do so with a reasonable expectation of success because Zhou teaches that tetra-C12-15-alkyl(propane-2,2-diylbis(4,1-phenylene))bis(phosphite) and diphenyl-mono(2-ethylhexyl)phosphite are alternative. Zhou at page 12, line 6-20.
Claim 12 is obvious because one ordinary skill in the art seeking an antioxidant for raw rubber is motivated to modify the Zhou Example 8 composition by replacing the tetra-C12-15-alkyl(propane-2,2-diylbis(4,1-phenylene))bis(phosphite) with 3,9-bis(octadecyloxy)-2,4,8,10- tetraoxa-3,9-diphosphaspiro[5.5]undecane that is a claimed species in claim 12; thus arrive at a composition meeting each and every limitation of claim 12, therefore, claim is 12 are obvious. One ordinary skill has a motivation to do so with a reasonable expectation of success because Zhou teaches that tetra-C12-15-alkyl(propane-2,2-diylbis(4,1-phenylene))bis(phosphite) and 3,9-bis(octadecyloxy)-2,4,8,10-tetraoxa-3,9-diphosphaspiro[5.5]undecane are alternative. Zhou at page 12, line 6-20.
Claim 13 is obvious because one ordinary skill in the art seeking an antioxidant for raw rubber is motivated to further modify the above proposed composition by including DLTDP into the composition comprising2,4-bis[(octylthio)methyl]-o-cresol (Irganox 1520) and 3,9-bis(octadecyloxy)-2,4,8,10-tetraoxa-3,9-diphosphaspiro[5.5]undecane, thus arrive at a composition meeting each and every limitation of claim 13. One ordinary skill has a motivation to do so with a reasonable expectation of success because AK teaches that DLTDP can increase heat stability of an antioxidant composition, it can be used in conjunction with hindered phenolic antioxidants as well other antioxidant chemistries; and can be applied for rubber. The rationales supporting the modification is “applying a known technique to a known product ready for improvement to yield predictable results”. MPEP2143.I. (D).
35 U.S.C. 103 Rejection over Burns
Claim 1-3, 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over by L. D. Burns, US4,443,572(1984)(“Burns”).
L. D. Burns, US4,443,572(1984)(“Burns”)
Burns teaches a stabilizer system for C2 to C8 olefin polymer. Burns at Abstract. Per claim 1, Burns emphasizes that the stabilizer system comprises:
(i). from 0.1 to 5.0 weight percent of at least one pentaerythritol phosphite,
(ii). a hindered phenol and
(iii). at least one thioester
Burns at Claim 1.
Burns teaches examples of hindered phenol that can be used in his stabilizer, such as 2,6-di-t-butyl-4-methylphenol and 1,3,5-trimethyl-2,4,6-tris(3,5-di-t-butyl-4-hydroxybenzyl) benzene. Burns at col.2, line 30-37. Per claim 6 and claim 17, Burns emphasizes that both 2,6-di-t-butyl-4-methylphenol and 1,3,5-trimethyl-2,4,6-tris(3,5-di-t-butyl-4-hydroxybenzyl) benzene all can be used as a hindered phenol in the stabilizer system. Burns at claims 6 and 17.
Burns teaches working examples such as Example Run 13 in Table II, which comprises:
0.05% of BHT,
0.03% of DLTDP and
0.05% Dweston 618.
Burns at col. 5-6, Table II, Run 13. Burns teaches that DLTDP is dilauryl thiodipropionate that is a thioether; and Dweston 618 is distearyl pentaerythritol diphosphite that is a phosphite per claim interpretation above. Burns footnotes of Table I at col. 5-6.
Per Table II, Burns teaches that the Run 13 composition is effective in retaining a low positive b value and high color number (indicating little yellow color). Burns at col. 5, 39-42 and Table II. Per Example 1, Bruns also teaches that the composition Run 13 is prepared by dry-blending of the stabilizers with HHM 4903 polyethylene (PE). Burns at col. 4, line 6-12.
Difference Between Burns and Claims 1-3, 5 and 8
The Burns composition Run 13 differs from claim 1 in that the sterically hindered phenol in the composition is BHT that is butylated hydroxytoluene.
Obviousness Rationales of Claims 1-3,5 and 8
It would have been prima facie obvious for one skilled artisan to arrive at the instantly claimed invention based on the teachings from Burns with a reasonable expectation of success before the effective filing date of the claimed invention.
Claim 1 is obvious because one ordinary skill in the art seeking a stabilizer system for C2 to C8 olefin polymer is motivated to modify the Burns composition Run 13 by replacing BHT (2,6-di-t-butyl-4-methylphenol) with 1,3,5-trimethyl-2,4,6-tris(3,5-di-t-butyl-4-hydroxybenzyl) benzene, thus arrive at a composition meeting each and every limitation of claim 1, therefore, claim 1 is obvious. One ordinary skill has a motivation to do so with a reasonable expectation of success because Burns teaches that both 2,6-di-t-butyl-4-methylphenol and 1,3,5-trimethyl-2,4,6-tris(3,5-di-t-butyl-4-hydroxybenzyl) benzene all can be used as a hindered phenol in the stabilizer system.
Claim 5 is obvious because the instant specification teaches that 1,3,5-trimethyl-2,4,6-tris(3,5-di-t-butyl-4-hydroxybenzyl) benzene is an alkylphenol. See specification at page 6, line 11-12.
Claim 8 is obvious because the proposed composition comprises DLTDP that is didodecyl 3, 3'-thiopropionate
One ordinary skill in the art is motivated to prepare the proposed composition by first mixing of 1,3,5-trimethyl-2,4,6-tris(3,5-di-t-butyl-4-hydroxybenzyl) benzene, DLTDP and Dweston 618 with each of the amount as required by the Burns composition Run 13 (and then blending the mixed stabilizers with HHM 4903 polyethylene), thus arrive to a composition consisted of 38% of 1,3,5-trimethyl-2,4,6-tris(3,5-di-t-butyl-4-hydroxybenzyl) benzene, 23% DLTDP and 38% of Dweston 618; which anticipates the claimed 10-90%, 5-80% and 5-80% respectively, therefore, claims 2-3 are obvious. One ordinary skill has a motivation to do so with a reasonable expectation of success because selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. MPEP 2144.04. IV.C.
Related Prior Arts
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP2014031510A discloses a stabilizer composition comprising (A) at least one semi-hindered phenol-based compound selected from the group consisting of a semi-hindered phenol and its dimer, and (B) at least one stabilizer selected from the group consisting of a (thio) phosphite, a phosphine and a thioether. See JP2014031510A at [0012] at page 38/69.
Subject Matter Free of the Art
Subject to the above 112 rejections, claims 7 and 10-11 are free of the art recorded. The closest prior art of record is L. D. Burns, US4,443,572(1984)(“Burns”)
L. D. Burns, US4,443,572(1984)(“Burns”)
As detail mentioned in the 102 rejection above that Burns teaches a composition meeting each and every limitation of claim 1.
Different between Burns and the instant claim 7 and 10-11
Burns differs from the instant claims 7 and 10-11 in that the Burns composition does not comprise the claimed thioether nor the claimed phosphite.
Claims 7 and 10-11 are not Obvious
Claims 7 and 10-11 are not obvious because neither Burns or Burns in view a second art to motivate one ordinary skill to modify the Burns prior art compound by replacing the Burns thioether or the Burns phosphite with claimed thioether and/or phosphite to arrive at the claimed compositions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 4,6-Bis(octylthiomethyl)-o-cresol see the attached MSDS-Irgsnox 1520
2 didodecyl 3, 3'-thiopropionate
Prosecution Insights