DETAILED ACTION
This office action follows a response filed on November 25, 2025. Claim 1 was amended and claim 6 was canceled. New claims 10-14 were added. Claims 1-5 and 7-14 are pending.
Claim Objections
Claim 2 is objected to because of the following informalities: In line 1, please replace “the proportion” with “a proportion”.
Claim 3 is objected to because of the following informalities: In line 1, please replace “the proportion” with “a proportion”.
Claim 4 is objected to because of the following informalities: In line 1, please replace “the cis/trans” with “a cis/trans”.
Claim 13 is objected to because of the following informalities: In line 1, please replace “the weight” with “a weight”.
Claim 14 is objected to because of the following informalities: In line 1, please replace “the content” with “a content”.
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.
Claims 1-5 and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Okuno et al. (JP 2019-142994).
Okuno et al. teaches an adhesive composition containing a cyclopentene ring-opened polymer and tackifier. The tackifier is a C5/C9 petroleum resin that is commercially available as Quintone DX390N or Quintone DX399N (paragraph [0073]; Examples 1-8). In one embodiment, the cyclopentene ring-opened polymer contains repeating units derived from other copolymerizable monomers in an amount of up to 20 mole % (paragraph [0016]). Examples of other copolymerizable monomer include monocyclic 1,5-cyclooctadiene, 1,5,9-cyclododecatriene, and polycyclic 2-norbornene, dicyclopentadiene, 1,4-methano-1,4,4a,9a-tetrahydro-9H-fluorene, and tetracyclododeca-4-ene (paragraph [0018]). Although working examples disclose adhesive compositions comprising cyclopentene ring-opened homopolymer, one of ordinary skill in the art would have found it obvious to make adhesive compositions comprising a polymer comprising cyclopentene and polycyclic monomer ring-opened copolymer with C5/C9 petroleum resin, and one would reasonably expect such adhesive to work with a reasonable expectation of success. In summary, it would have been obvious to make the adhesive composition of instant claims 1-3 and 10-12 based on the teaching in Okuno et al.
Subject of remaining claims is also obvious over prior art. The cyclopentene ring-opened polymer has a cis/trans ratio of 10/90 to 50/50 of double bonds present in the cyclopentene ring-opening polymer (paragraph [0021]). Since the cis/trans ratio reflects that of all double bonds present in cyclopentene ring-opening polymer, one of ordinary skill in the art would reasonably expect a cis/trans ratio of structural units derived from a polycyclic monomer to lie substantially within the same range. The glass transition temperature of the cyclopentene ring-opened polymer is -120 ºC or higher and -70 ºC or lower (paragraph [0040]). Commercially available Quintone DX390N has a softening point of 91 ºC. The adhesive composition may contain conventional additives such as softeners and antioxidants (paragraph [0081]). It is preferable that the weight average molecular weight of the cyclopentene ring-opened polymer is 50,000 or more and 285,000 or less (paragraph [0039]). Finally, the tackifier content is preferably 10 to 500 parts by weight based on 100 parts by weight of the cyclopentene ring-opened polymer (paragraph [0080]).
Response to Arguments
The rejection of claims under 35 U.S.C. 103 as being unpatentable over Nitadori et al. (US 2018/0244837), set forth in paragraph 3 of the previous office action dated August 25, 2025, has been overcome by amendment.
The rejection of claims under 35 U.S.C. 103 as being unpatentable over Nitadori et al. (US 2018/0244837) in view of Sugimoto (US 2013/0199687), set forth in paragraph 4 of the previous office action, has been withdrawn.
The rejection of claims under 35 U.S.C. 103 as being unpatentable over Pawlow et al. (US 2018/0244837), set forth in paragraph 5 of the previous office action, has been overcome by amendment.
The rejection of claims under 35 U.S.C. 103 as being unpatentable over Pawlow et al. (US 2018/0244837) in view of Sugimoto (US 2013/0199687), set forth in paragraph 6 of the previous office action, has been withdrawn.
The rejection of claims under 35 U.S.C. 103 as being unpatentable over Michaud et al. (US 2017/0369637), set forth in paragraph 7 of the previous office action, has been withdrawn.
The rejection of claims under 35 U.S.C. 103 as being unpatentable over Michaud et al. (US 2018/0244837) in view of Donker et al. (US 6,106,939), set forth in paragraph 8 of the previous office action, has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RIP A LEE/Primary Examiner, Art Unit 1762 September 2, 2026
Prosecution Insights