DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/16/2025 has been entered.
Claims 1, 2, 4-11 and 13-25 are pending as amended on 12/16/2025. Claims 21-24 stand withdrawn from consideration.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Objections
Claims 1, 4, 7, 10, 11, 13, 17 and 18 are objected to because of the following informalities:
Claim 1 recites a hydrocarbon polymer modifier (HPM) comprising “a cyclic component…” wherein the cyclic component is subsequently defined in claim 1 as being selected from C4-6 olefins, C5-6 diolefins, dimers, codimers, trimers and mixtures thereof. It is clear from the instant specification and claims that the recited cyclic component is a reactant/monomer, and the claimed HPM is a low molecular weight polymer formed from the recited cyclic components; the HPM does not comprise the cyclic components (e.g., claim 1 encompasses an HPM formed from polymerizing a cyclic component which comprises cyclopentadiene; claim 1 is not drawn to an HPM which comprises cyclopentadiene). Claim 1 should be amended to properly reflect that the recited HPM is formed from the recited cyclic component. (Dependent claims 4, 7, 10, 11, 13, 17 and 18 are objected to for the same wording issue.)
Additionally, in claim 1:
“methylcyclopendiene” should be “methylcyclopentadiene,” and
the word “a” should be inserted before “number average” in the second to last line.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 4-11, 13-20 and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites that “the cyclic component is selected from the group of C4, C5 or C6 olefins, or C5 or C6 diolefins, dimers, codimers, and trimers, and mixtures thereof…”
It is not clear whether “dimers, codimers, and trimers” are dimers, codimers and trimers of the prior recited olefins and/or diolefins, or, whether “dimers, codimers, and trimers” encompass a dimer, codimer or trimer of any monomer compound. Similarly, in the recitation “and mixtures thereof” it is not clear which of the previously recited elements are being referred to by “thereof.” Because it is not clear what compounds or what mixtures are encompassed by the presently recited term “cyclic component,” the scope of claims 1, 4, 7-11, 13 -20 and 25 is unclear.
Additionally:
Claim 1 recites “…the hydrocarbon polymer modifier comprising the cyclic component in an amount between 20 wt% and 99 wt%, about 0.1 wt% to about 15 wt% of methylcyclopentadiene and methylcyclopen[ta]diene derived content, and wherein…”
It is not clear from the wording above whether the methylcyclopentadiene and methylcyclopentadiene derived content (MCPD and MCPD-derived content) must form about 0.1-15 wt% of the HPM, or, whether the MCPD and MCPD-derived content must form about 0.1-15 wt% of the cyclic component. In other words, it is not clear whether or not the recited MCPD and MCPD-derived content is considered to be a component which is separate from the recited cyclic component. Because one would not know whether to include the content of MCPD when calculating the weight percentage of cyclic component which forms the HPM, the scope of claims 1, 2, 4-11, 13-20 and 25 is unclear. For examination purposes, the claim has been interpreted as reciting an HPM formed from monomers, wherein the monomers comprise the cyclic component in an amount between about 20-99 wt% based on total monomer weight, and wherein the cyclic component comprises about 0.1-15 wt% of MCPD based on the total weight of the cyclic component.
Additionally:
Claim 1 newly recites a content of “methylcyclopentadiene derived content.” It is not clear what compounds are encompassed by this term, as it is not defined in either the claims or the specification.
Additionally:
Claim 20 recites the broad recitation “has at least one”, and the claim also recites “and preferably all” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Additionally:
Claim 25 recites the term “combination radicals.” It is not clear what is meant by this term.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 2, 5, 6, 10, 11 and 25 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 2, 5 and 6 depend from claim 1 and further limit “the cyclic component” to particular species. Claim 2 encompasses an embodiment wherein “the cyclic component” is methylcyclopentadiene and an embodiment wherein “the cyclic component” is di(methylcyclopentadiene). Claim 5 encompasses an embodiment wherein “the cyclic component” is methylcyclopentadiene. However, if either methylcyclopentadiene or di(methylcyclopentadiene) is selected from the lists recited in claim 2 or claim 5 as being “the cyclic component,” then the content of methylcyclopentadiene or di(methylcyclopentadiene) would have to be 20-99 wt% (i.e., within the range for the cyclic component recited in claim 1). These embodiments which are encompassed by claim 2 and claim 5 fail to further limit claim 1, because they fail to also satisfy the requirement in claim 1 that MCPD and MCPD-derived content be within a range of 0.1-15 wt%.
Similarly, if the MCPD or MCPD-derived content recited in claim 1 is required to form a part of the overall content of cyclic component recited in claim 1, then it is not possible for “cyclopentadiene” or “dicyclopentadiene” to be selected as “the cyclic component,” as recited in claims 2, 5 or 6 (because, in order to satisfy claim 1, cyclopentadiene or dicyclopentadiene could not form the entire “cyclic component” of claim 1; MCPD or MCPD-derived content must form 0.1-15 wt% of “the cyclic component”).
Claims 10 and 11 depend from claim 1, and further limit the content of MCPD in the HPM to 20-99 wt% (claim 10) or 40-75 wt% (claim 11). Claim 1 permits the MCPD content in the HPM to be, at most, about 15 wt% of the cyclic component. Because claim 1 does not permit the content of MCPD in the HPM to be as high as the ranges recited in claims 10 and 11, claims 10 and 11 fail to properly further limit claim 1.
Claim 25 depends from claim 15 and recites that the compound of formula II has one or more substituents on the aromatic ring. However, the compound of formula II recited in claim 15 permits only a single substituent (R4) on the aromatic ring. Therefore, a compound having more than one substituent on the aromatic ring as recited in claim 25 would not fall within the scope of the claim upon which it depends.
Response to Arguments
Applicant's arguments filed 12/16/2025 have been fully considered.
The rejections set forth under 35 USC 103 in the previous action have been withdrawn because Rodgers (considered to be the closest prior art, as set forth in the rejection mailed on 2/10/25) fails to teach or suggest an HPM derived from cyclic component monomers wherein MCPD forms 0.1-15 wt% of cyclic component monomers, as recited in amended claim 1. As set forth in paragraph 25 of the 2/10/25 action, Rodgers names MCPD as a preferred cyclic component of the HPM [0058]. However, there is no teaching or suggestion in Rodgers to utilize a cyclic component which comprises a combination of different compounds, wherein MCPD forms only 0.1-15 wt% of the cyclic component. The examiner is unaware of prior art which discloses or suggests an HPM which meets the presently recited molecular weight, glass transition temperature, and aromatic proton content requirements, and, which is formed from about 0.1-15 wt% MCPD as a cyclic component.
Claims 1, 2, 4-11, 13-20 and 25 are free of prior art for the reasons set forth above. Claim 25, previously withdrawn as being limited to a non-elected species, has been rejoined and examined for patentability. In view of the objections and rejections under 35 USC 112(b) and (d), none of the claims are in condition for allowance.
Note that non-elected invention claims 21-24 include all the limitations of claim 1, and will therefore be considered for rejoinder if claim 1 is found to be allowable. Applicant is advised that withdrawn claim 24 may be deemed unpatentable due to failure to further limit claim 23; given the recited reaction temperature of 265-290 C, the polymerization recited in claim 23 must be a thermal polymerization.
The terminal disclaimer filed on 12/16/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 12,157,821 has been reviewed and is accepted. The terminal disclaimer has been recorded. The rejection on the ground of nonstatutory double patenting over the claims of ‘821 has been withdrawn.
The provisional rejection on the ground nonstatutory double patenting over 17/629641 has been withdrawn in view of the abandonment of ‘641.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
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