DETAILED ACTION
Response to Amendment
This communication responds to the Amendment filed 6/04/2026. Claims 1-13, 19-23 and 29-34 were withdrawn. Claims 35-37 were added. Claim 1-37 are now pending. Claims 14-18, 24-28 and 35-37 are under examination.
The rejections of the claims under 35 USC 103 set forth in the Office Action dated February 05, 2026 are WITHDRAWN due to Applicant’s amendments/arguments.
A new ground of rejections of claims 14-18 and 24-28 under 103 are made. New claims 35-37 are REJECTED for the reasons set forth below.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/04/2026 has been entered.
Claim Analysis
Summary of Claim 14:
A modified hydrogenated petroleum resin satisfying the following (A1) to (A4):
(A1)
a bromine value of 0.1 to 10.0
(A2)
containing 0.1 to 10% by mass of silicon element in terms of silicon atom
(A3)
a weight average molecular weight of 800 to 5,000
(A4)
a molecular weight distribution (Mw/Mn) of 1.1 to 3.5.
Summary of Claim 24
A modified hydrogenated petroleum resin, which is a modified hydrogenated petroleum resin (B) obtained by subjecting a modified hydrogenated petroleum resin (A) satisfying the following (A1) to (A4) to a condensation reaction,
wherein the modified hydrogenated petroleum resin (B) satisfies the following (B1) to (B3):
(A1)
a bromine value of 0.1 to 10.0
(A2)
containing 0.1 to 10% by mass of silicon element in terms of silicon atom
(A3)
a weight average molecular weight of 800 to 5,000
(A4)
a molecular weight distribution (Mw/Mn) of 1.1 to 3.5.
(B1)
a viscosity V0.1 measured using a rheometer at 190°C with an angular velocity ω= 0.1 rad/s of 1,000 to 50,000 mPa.s
(B2)
a viscosity V100 measured using a rheometer at 190°C with an angular velocity ω= 100 rad/s of 100 to 1,000 mPa.s
(B3)
a ratio of the viscosity V0.1 to the viscosity V100 [V0. 1/V100] of 10 or more.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 14-18, 24-28 and 35-37 are rejected under 35 U.S.C. 103 as being unpatentable over Martin et al. (WO 9108240 A1 as listed on the IDS dated 8/29/2025) in view of Nishimura et al. (US Patent No. 6040388 A).
Regarding claim 14, Martin et al. teach a silane-modified cross-linkable tackifier resin and its use in adhesive compositions and to materials comprising such as resins cross-linked to each other (p.1:5-10, p.2: 16-26). Martin et al. further teach the tackifier resins suitable for silane modification are based on hydrogenated hydrocarbon resins, wherein the polymer backbone contain C5, C9 or C10 resins, styrene, dicyclopentadiene, piperylenes, isoprene, among others (p.3:31-37; p.4:1-7), have softening points between -15 to 88°C and number average molecular weights of 500 to 1100 (p.4:8-19). Furthermore, Martin et al. teach the silane modification is performed by reacting the unmodified resin with an unsaturated silane ( i.e. vinyltriethoxysilane, vinyltrimethoxysilane (p.6: 28-3, p.7: 1-7; 26-28)); in the presence of a catalyst (i.e. peroxide initiator) at a temperature of at least 140°C (p.8:16-19), to produce a silane modified resin according to the formula I (p.5: 36-37; p.6:1-37, p.7: 1-29), thereby reading on the modified hydrogenated petroleum resin .
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wherein R is the residue of the unmodified resin,
n is an integer of at least 2,
A is a bond or a divalent linking group (i.e. alkylene);
Y is a blocking group not displaceable by hydrolysis (i.e. C1-4 alkyl groups);
m is 1, 2 or 3 and X is a leaving group displaceable by hydrolysis (i.e. group ZO where Z is a C1-4 alkyl or alkoxyalkyl group).
Martin et al. teach the silane side chains of the silane-modified tackifier resin is preferably 30-40% and the ratio of unsaturated silane to resin used in the grafting reaction is selected to ensure that an average at least 2, preferably 2-8, especially 3-5, silane groups are introduced per resin (p.7:35-37 and p.8:1-7).
Martin et al. are silent on the bromine value, content of silicon atoms, weight average molecular weight and molecular weight distribution (Mw/Mn) of the modified hydrogenated petroleum resin as recited in the instant claim.
In the same field of endeavor of hydrogenated petroleum resins, Nishimura et al. teach a hydrogenated product of a copolymer of cyclopentadiene and/or dicyclopentadiene and a vinyl-substituted aromatic compound useful as a tackifier or an adhesive. Nishimura et al. teach the hydrogenated petroleum resin has a softening point of 70 to 140° C, a vinyl-substituted aromatic compound content of 0 to 35% by weight, a bromine number of 0 to 30 g/100 g, a number average molecular weight of 400 to 1,000 and a weight average molecular weight/number average molecular weight ratio of 2.5 or less (abstract, claim 1). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the hydrogenated dicyclopentadiene resin of Nishimura et al. in place of the hydrogenated dicyclopentadiene resin of Martin et al., given that Nishimura et al. teach the hydrogenated petroleum resin is used as a tackifier and the number average molecular weight of 400-1000 g/mol is commensurate with the number average molecular weight of the resin as taught by Martin et al. (500-1100 g/mol) (MPEP 2144.06 and 2144.07).
By examiners calculations, selecting a hydrogenated petroleum resin with a number average molecular weight of 400 to 1,000 and the molecular weight distribution of Mw/Mn of 2.5 (abstract, claim 1 of Nishimura et al. ) and the 1:2 molar ratio of resin to vinyltrimethoxysilane as taught by Martin, thus the silicon content in mass% of the modified hydrogenated petroleum resin of Martin in view of Nishimura et al. is approximately 2.0 % (Mn of the resin of 1000 g/mol) and 4.3% (Mn of the resin of 400 g/mol).
Resin: Mn =1000 g/mol and Mw/Mn = 2.5, then Mw = 2500 g/mol.
Vinyltrimethoxysilane: Mw of 148 g/mol
Si atom: 28 g/mol
2*28 *100 = 2.0%
(2*148.2 + 2500)
Martin et al. in view of Nishimura et al. uses a substantially identical hydrogenated petroleum resin as disclosed by the instant specification (¶0055), similar reaction conditions involving same peroxide initiator and modifying the resin with the same silane compound as the present application. Therefore, one of ordinary skill in the art before the effective filing date of claimed invention would have expected that the modified hydrogenated petroleum of Martin et al. in view of Nishimura et al. would have a bromine value, a silicon element in terms of silicon atom, a weight average molecular weight and a molecular weight distribution that overlaps with the claimed ranges. Further, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Martin et al. in view of Nishimura et al.
Regarding claim 15, 16 and 17, Martin et al. in view of Nishimura et al. are silent on the integral ratio of aromatic hydrogen to the total of aromatic hydrogen and aliphatic hydrogen of instant claim 15. Martin et al. in view of Nishimura et al. are further silent on the softening point as recited by instant claim 16 and the volatile component content of claim 17. It is noted that the above arguments discussed in the rejection of claim 14 (see paragraph 7) establish a rationale tending to demonstrate that the modified hydrogenated petroleum resin of Martin et al. in view of Nishimura et al. is expected to possess the recited properties of the instant claims 15-17.
Regarding claim 18, Martin et al. teach the silane modified resin is obtained by reacting a tackifier resin with an unsaturated silane of formula II in presence of a peroxide catalyst,
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where n, m, X and Y as defined above and A’ is linking group, where the alkoxysilyl group is bonded to the main chain of hydrogenated petroleum resin as taught by the formula below (p.6:35; p.7: 1-11) where R, is the residue of the unmodified resin, as required by the instant claim.
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Regarding claim 24, Martin et al. in view of Nishimura et al. teach a silane modified hydrogenated petroleum resin as discussed in the rejection of claim 14 (see paragraph 7). Martin et al. further teach the silane modified hydrogenated petroleum resin functions as a cross-linking agent, which occurs when the silane groups are hydrolyzed enabling it to engage in a catalyzed silanol condensation (crosslinking reaction) with other silanol groups (p.6:5-10 and p.9 23-30), which implies the alkoxy groups (i.e. methoxy) on the silane is subjected to hydrolysis, converting into free silanol groups (-Si-OH) that can participate in condensation reactions, resulting to cross-linking through Si-O-Si bond formation (see formulas below, p.9-10), thereby reading on the modified hydrogenated petroleum resin B, which is obtained by subjecting a modified hydrogenated petroleum resin (A) to a condensation reaction.
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Martin et al. in view of Nishimura et al. are silent on the conditions (A1) to (A4) and the conditions (B1) to (B3).
Martin et al. are subjecting similar petroleum resins as disclosed by the instant specification (¶0055), similar reaction conditions involving same peroxide initiator and modifying the resin with the same silane compound as the present application. Furthermore, Martin et al. are subjecting the silane modified resins to a condensation reaction in presence of water as disclosed by the instant specification (¶0118). Therefore, one of ordinary skill in the art at the time of invention was made, would have expected that the properties of the modified hydrogenated petroleum resin A and the modified hydrogenated petroleum resin B of Martin et al. would overlap the claimed properties (A1)-(A4) and (B1)-(B3) (see rejection of claim 14), thereby a prima facie case of obviousness being established. MPEP 2144.05.
Regarding claims 25-27, Martin et al. in view of Nishimura et al. are silent on the integral ratio of aromatic hydrogen to the total of aromatic hydrogen and aliphatic hydrogen of instant claim 25. Martin et al. in view of Nishimura et al. are further silent on the softening point as recited by instant claim 26 and the volatile component content of claim 27. It is noted that the above arguments discussed in the rejection of claim 24 establish a rationale tending to show that the modified hydrogenated petroleum resin of Martin et al. in view of Nishimura et al. is expected to overlap the recited properties required by the instant claims 25-27, thereby a prima facie case of obviousness being established. MPEP 2144.05.
Regarding claim 28, The limitation of the modified hydrogenated petroleum resin (A) has an alkoxysilyl group that is bonded to a main chain of a hydrogenated petroleum resin via a bonding portion is discussed in the rejection of claim 18 (see paragraph 9).
Regarding claim 35, Martin et al. in view of Nishimura et al. are silent on the content by mass of silicon element of the modified hydrogenated petroleum resin.
By examiner’s calculations (see paragraph 7), the silicon element in terms of silicon atom of the modified hydrogenated petroleum resin is between 2 to 2.5, assuming a number average molecular weight of the hydrogenated resin of 400-1000 g/mol and a weight/number average molecular weight ratio of 2.5 (claim 1 of Nishimura et al.). Given that Martin et al. in view of Nishimura et al. teach a Mw/Mn of 2.5 or less (claim 1), the silicon element of the modified hydrogenated petroleum resin overlaps with the claimed range (0.1-5 wt.%). Further, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Martin et al. in view of Nishimura et al.
Regarding claim 36, Martin et al. in view of Nishimura et al. are silent on the molecular weight distribution Mw/Mn of the modified hydrogenated petroleum resin.
As previously discussed in the rejection of claim 14, Martin et al. in view of Nishimura et al. uses a substantially identical hydrogenated petroleum resin as disclosed by the instant specification (¶0055), similar reaction conditions involving same peroxide initiator in amounts of about 0.01 to 3 % relative to the weight of the resin (p.8:14) that overlap with the organic peroxide content disclosed in the instant specification [0031] and modifying the resin with the same silane compound as the present application. Martin et al. in view of Nishimura et al. further teach a hydrogenated petroleum resin before modification having a wight distribution Mw/Mn of 2.5 or less (claim 1 of Nishimura). Therefore, one of ordinary skill in the art before the effective filing date of claimed invention would have expected that the modified hydrogenated petroleum of Martin et al. in view of Nishimura et al. would have a molecular weight distribution overlapping with the claimed range of 1.8 to 3.5, thereby a prima facie case of obviousness being established. MPEP 2144.05.
Regarding claim 37, Martin et al. in view of Nishimura et al. teach the modified hydrogenated petroleum resin as previously discussed in the rejection of claim 14, wherein the modified hydrogenated petroleum resin is produced by a method comprising reacting the unmodified resin with an unsaturated silane ( i.e. vinyltriethoxysilane, vinyltrimethoxysilane (p.6: 28-3, p.7: 1-7; 26-28)); in the presence of a catalyst (i.e. peroxide initiator) at a temperature of at least 140°C, between 150-250 °C (p.7:1-2, p.8:8-19), to produce a silane modified resin according to the formula I (p.5: 36-37; p.6:1-37, p.7: 1-29), as required by the instant claim.
Response to Arguments
Applicant' s arguments, see p. 10-13, filed 6/04/2026, with respect to the rejection of instant claims under 103 over Martin et al. in view of Son et al. have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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