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
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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.
Claims 1 and 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
by Boeck et al. (US 2018/0208541 A1).
Boeck et al. teach a plastisol formulation comprising PVC, 50 parts by weight of dipentyl terephthalates having isomeric branched and unbranched pentyl radical taught in examples 1-5 of Table 2 and 3 parts by weight of epoxidized soybean oil and thermal stabilizer in Table 6.
The instantly recited “comprising” of “a plasticizer composition comprising” of claim 1 permits presence of other components such as the PVC and thermal stabilizer taught in the Table 6. The transitional term “comprising” is an “open” term, in the sense that it leaves the claim open for the inclusion of unspecified ingredients, “even in major amounts.” Ex parte Davis and Tuukkanen, 80 USPQ 448, 450 (BPAI 1948). MPEP 2111.03. See also North Am. Vaccine, Inc. v. American Cyanamide Co., 7 F.3d 1571, 1585 (Fed. Cir. 1993). Because the term “comprising” is one of enlargement, it can cause a claim to be broader than the invention. See In re Fenton, 451 F.2d 640, 642 (CCPA 1971).
The epoxidized soya bean oil which is also recited in instant claim 8 has CAS No.: 8013-07-8 (see attached 1 page brochure) and thus the epoxidized soya bean oil taught by Boeck et al. would be expected to have the recited oxirane content of about 4-10% of claims 1 and 7 inherently.
Thus, claims 1 and 7-10 lack novelty.
RESPONSE TO ARGUMENTS
Applicant asserts that Boeck et al. teach a controlled n-pentyl isomer distribution (less than 60 mol% n-pentyl) and do not disclose a binary composition of terephthalates diesters consisting only of terephthalates diesters of C3-C5 alcohol with an epoxidized oil having the recited oxirane content.
The instant claim 1 recites “one or more terephthalates diesters of C3-C5 linear or branched alcohol” and thus the dipentyl terephthalates having isomeric branched and unbranched pentyl radical taught by Boeck et al. would meet the “one or more terephthalates diesters of C3-C5 linear or branched alcohol” contrary to the assertion. Also, the instantly recited “a plasticizer composition comprising” of claim 1 is not limited to the asserted binary composition since the recited “comprising” would permit presence of other components.
Claims 1-5 and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Boeck et al. (US 2018/0208541 A1).
Regarding claims 2-5 and 11-14, Boeck et al. teach a plasticizer comprising dipentyl terephthalates (DPT) having isomeric branched and unbranched pentyl radical in claim 1.
Boeck et al. teach employing additional plasticizers in claim 5 and epoxidized vegetable oils are taught as the additional plasticizers in lines 4-5 of [0043] and utilization of an epoxidized soybean oil in Table 6. Boeck et al. teach a ratio of DPT to the additional plasticizer is 80:20, 60:40 or 40:60 in [0044].
The epoxidized soya bean oil which is also recited in instant claim 8 has CAS No.: 8013-07-8 (see attached 1 page brochure) and thus the epoxidized soya bean oil taught by Boeck et al. would be expected to have the recited oxirane content of about 4-10% of claims 1 and 7 inherently.
Thus, it would have been obvious to one skilled in art before the effective filing date of invention to obtain a plasticizer comprising the recited ratio of the DPT and epoxidized soybean oil in Boeck et al. since Boeck et al. employing additional plasticizers and the recited ratio thereof and since Boeck et al. utilization of an epoxidized soybean oil absent showing otherwise.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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, Robert Jones can be reached at (571)270-7733. 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.
/TAE H YOON/ Primary Examiner, Art Unit 1762
Prosecution Insights