DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 1-2, 5-6, 8-9, 11-16, 19-24 are currently pending. Claims 1-20 had been elected with traverse in the response filed on 01/20/2025 and the species of the aromatic component of an olefinic aromatic compound of formula I (claim 14). Claims 1-2, 5-6, 8-9, 11-14, 16, 19-20, and 23-24 are currently under examination. The remaining claims are withdrawn, but may be rejoined if the double patenting rejection is overcome.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
7. Claims 1-2, 5-6, 8-9, 11-14, 16, 19-20, and 23-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 13, 15, 16,18 20 of copending Application No. 18/261,021 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Concerning claims 1-2, 4-6, 10-11, 20 the reference application teaches a hydrocarbon polymer modifier having a glass transition temperature which has the claimed relationships, an aromatic proton content of from 12 to 19 mol% a Mn of from 300 g/mol to 450 g/mol and the claimed cyclic component (claim 1 and 13) which is present in an amount of from 25 to 80 wt% (claim 13).
Concerning claim 7-9 and 14 the reference application further teaches that the hydrocarbon polymer modifier includes an aromatic component which can have the structure of formula I which is an olefin aromatic compound (claim 16).
Concerning claim 12 and 13 the reference application further teaches that the polymer modifier comprises methyl cyclopentadiene in an amount between 0.1 wt% to about 5 wt% (claim 15).
Concerning claim 16 the reference application further teaches that the aromatic component is the claimed aromatic distillation cut (claim 18).
Claims 17-18 the reference application teaches that the aromatic component is present in an amount of from 25 to 70 wt% (claim 20).
Concerning claim 24 the reference application further teaches that the hydrocarbon polymer modifier includes an aromatic component which can have the structure of formula I which is an olefin aromatic compound where R1 and R2 can be hydrogen or alkyl groups (claim 16). When these two groups are hydrogen or alkyl than the compound would be one of 1H-indene or alkyl indene which are amoung the claimed groups.
It would have been obvious to one of ordinary skill in the art at the time of filling to use the claimed indene compounds because the reference application teaches a general formula of the indene compound which includes structures of the claimed group.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments and amendments have been fully considered and are persuasive. The remaining claims are expected to be held allowable if a proper TD is filed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph S Del Sole whose telephone number is (571)272-1130. The examiner can normally be reached Generally Monday - Friday, 9-5.
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, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOSEPH S. DEL SOLE
Supervisory Patent Examiner
Art Unit 1700
Prosecution Insights