DETAILED ACTION
This Office Action is responsive to the amendment filed on 7/1/2026.
The objections and rejections not addressed below are deemed withdrawn.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.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim Rejections - 35 USC § 102/103
Claim(s) 1-5 and 12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Soon et al, KR1020140042165.
Soon discloses a petroleum resin (for claim 1) made via polymerization of a monomer mixture in the presence of a chain transfer agent (i.e., a molecular weight regulator) (for claim 1) (abstract, Page 2: lines 28)
Example 2 discloses the production of a petroleum resin from a monomer mixture comprising a C5 fraction and styrene, corresponding to the claimed C9 oil fraction derived unit (for claims 2, 3), in the presence of the chain transfer agent tricyclodecene (Page 5: lines 1-21). The resulting polymer is reported to have a viscosity at 25 °C of 10,100 cps (for claims 1, 5), a Mw of 440 (for claim 5), and a glass transition temperature (Tg) of -28 °C (for claim 5) (Table 2).
Regarding the requirement that the petroleum resin is bonded to the terminus(es) of the petroleum resin: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims; see In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
It is known in the art that chain transfer agents regulate the molecular weight of a polymer sample by adding to the terminus(es) of a polymer chain, thereby stopping polymerization, and forming a new initiator from a which a new polymer chain forms (re-initiation) (for claim 1). Said new polymer can then have its polymerization stopped via reaction with remaining chain transfer agent, resulting in a structure wherein each terminus has a remnant of the chain transfer agent (for claim 4). It is therefore reasonably expected that the prior art process would inherently result in a polymer product in which at least one terminus of the petroleum resin is modified with the chain transfer agent as required (for claim 1).
Regarding the Mn, Mz, and aromaticity of the prior art resin: Soon is silent regarding these properties; however, it is reasonably expected that these properties are met by the prior art.
The prior art petroleum is made by polymerizing the same monomers as disclosed in the instant specification (see specification ¶0018-0020) for the preparation of the petroleum resin of the instant claims, and is reported to have the same properties of viscosity, Mw and Tg as the disclosed invention. Furthermore, the prior art petroleum resin is prepared via polymerization of monomers in the presence of a chain transfer agent using the catalyst AlCl3; it is noted that applicant’s specification discloses the use of the same catalyst to prepare the petroleum resin of the instant disclosure (see specification ¶00051). The prior art petroleum resin therefore has the same monomer composition/structure and is made via the same process of polymerization in the presence of a chain transfer agent using the same catalyst as disclosed by applicant.
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As the prior art resin appears to be the same as the claimed resin, it is reasonably expected that its properties would inherently be the same as those of the claimed composition. The burden is therefore shifted to applicant to provide evidence demonstrating that the prior art polymer would not necessarily have the claimed properties of Mn (for claim 5), Mz (for claim 5), and aromaticity (for claim 1).
Claim Rejections - 35 USC § 103
Claim(s) 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Soon et al, KR1020140042165, in view of Williams, US5410004.
As discussed earlier in this Action, Soon discloses the preparation of a petroleum resin via polymerization in the presence of a chain transfer agent.
Soon is silent regarding the use of a chain transfer agent comprising at least one thiol group.
Williams discloses the production of dicyclopentadiene resins that are used in the production of adhesives (abstract, Column 1: lines 5-11; Column 2: lines 51-56). As taught by Williams, it was known in the art to include 0.1 to 0.5 wt% of an organic sulfur compound such as thiophenol (i.e., phenyl mercaptan) (for claim 7) or phenyldisulfide corresponding to the claimed molecular weight regulator containing at least one thiol group (for claims 1, 6), to the polymerization of such dicyclopentadiene-based resins in order to control the molecular weight of the final resin (abstract; Column 3: lines 44-48).
Soon teaches that the monomer mixture used to prepare the resin of KR20140042165 may comprise dicyclopentadiene ((page 4: lines 21-22). Soon and Williams are both directed therefore to the same field of endeavor-the production of resins from petroleum-based monomers for use in the production of adhesives. As taught by Williams, sulfur-containing compounds such as thiophenol was known in the art as a suitable chain transfer agent for the polymerization of such resins.
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to modify the teachings of Soon by using an organic sulfur-containing compound such as thiophenol as the chain transfer agent, with the reasonable expectation of obtaining a final product having controlled molecular weight.
Claim(s) 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Soon et al, KR1020140042165, in view of Choi, KR102015979.
A machine translation of Choi was used to prepare this Action.
As discussed earlier in this Action, Soon discloses the preparation of a petroleum resin via polymerization in the presence of a chain transfer agent. Said petroleum resin is used in the production of adhesives (page 2: lines 2-6).
Regarding the amount of molecular weight regulator: Soon teaches that the petroleum resin can comprise 20 to 80 wt% of the chain transfer agent (page 3: lines 41-43). Furthermore, the prior art adhesive is made by combining the petroleum resin with additional components such as a synthetic rubber (page 6: lines 16-25). Given that 1) the petroleum resin can contain as little 20 wt% of the chain transfer agent and 2) the addition of other components such as a rubber will dilute its concentration further, an ordinary artisan will recognize that the final adhesive of Soon can contain less than 20 wt% of the chain transfer agent (for claim 11).
Soon is silent regarding the addition of a viscosity regulator.
Choi discloses that it was known in the art to add 5 to 40 parts (for claim 11) of a tackifying agent to adhesive compositions in order to improve the composition’s workability and adhesion to a substrate (¶0121, 0124). Choi further teaches that said tackifying resin may be a commercial product such as SUKOREZ D300, SUKOREZ D390, SUKOREZ SU100, etc. (¶0126); note that applicant’s specification specifically cites the SUKOREZ line of products as being within the scope of the viscosity regulator having the required properties (for claims 8-11) (see specification ¶0047).
As taught by Choi, it was known in the art to modify the properties of an adhesive by adding a tackifying resin, corresponding to the claimed viscosity regulator, in order to adjust the adhesive’s workability and its adhesion to the substrate surface. It therefore would have been obvious to one of ordinary skill in the art to modify the adhesive of Soon by adding a tackifying agent such as the commercially available SUKOREZ line, with the reasonable expectation of obtaining a final adhesive having improved workability.
Claim(s) 1-7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al, WO2020/116788, in view of Williams, US5410004.
Th examiner notes that Kang et al, US2022/0025094, has been used as an equivalent English translation of WO2020/116788 for the preparation of this Action.
Kang discloses a dicyclopentadiene-based resin which is prepared via copolymerization of a monomer mixture comprising dicyclopentadiene, corresponding to the claimed C9 mixed oil fraction-derived unit structure (for claims 2, 3) which is used in the production of adhesives (abstract). Said dicyclopentadiene-based resin is characterized by a Mn of 200 to 1200 g/mol, overlapping the claimed range (for claim 5); Mw of 250 to 4000 g/mol, overlapping the claimed range (for claim 5);and a Mz of 300 to 5000 g/mol, overlapping the claimed range (for claim 5).
Regarding the claimed viscosity at 25 °C (for claims 1, 5, 12), glass transition temperature (Tg) (for claim 5), and aromaticity (for claim 1): It is known in the art that viscosity and Tg/aromaticity are related to a polymer’s molecular weight and monomer composition, respectively. As discussed in the previous paragraph, Kang discloses the production of a dicyclopentadiene-based resin which (1) has the same molecular weight properties as the claimed invention and (2) comprises the same monomers as disclosed by applicant for the claimed invention. As the prior art dicyclopentadiene-based resin appears to be the same as the claimed resin, it is reasonably expected that its properties would not be materially different from those recited in the instant claims. The burden is therefore shifted to the applicant to provide evidence the prior art dicyclopentadiene-based resin would not have the required properties; see In re Fitzgerald cited earlier in this Action.
Kang is silent regarding the modification of the dicyclopentadiene-based resin with a molecular weight regulator.
Williams discloses the production of dicyclopentadiene-based resins that are used in the production of adhesives (abstract, Column 1: lines 5-11; Column 2: lines 51-56). As taught by Williams, it was known in the art to include 0.1 to 0.5 wt% of an organic sulfur compound such as thiophenol (i.e., phenyl mercaptan) (for claim 7) or phenyldisulfide corresponding to the claimed molecular weight regulator containing at least one thiol group (for claims 1, 6), to the polymerization of such dicyclopentadiene-based resins in order to control the molecular weight of the final resin (abstract; Column 3: lines 44-48). Note that it is known in the art that such compounds act as chain transfer agents by adding to at least one terminus of a growing polymer chain (for claims 1, 4), stopping the growth of that chain and forming a new radical that can initiate formation of a second chain through the process of re-initiation.
Kang and Williams are directed towards the same field of endeavor-i.e., the production of adhesives comprising low molecular weight dicyclopentadiene-based resins. Barring a showing of evidence demonstrating unexpected results, it would have been obvious to one of ordinary skill in the art to modify the process of Kang by adding an organic sulfur compound such as thiophenol to the polymerization reaction, in order to control the molecular weight properties of the final resin as taught by Williams (for claim 1).
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al, WO2020/116788, in view of Williams, US5410004, as applied to claims 1-7 and 12 above, and further in view of Choi, KR102015979.
As discussed earlier in this Action, the combination of Kang and Williams renders obvious the production of an adhesive comprising a dicyclopentadiene resin having the claimed viscosity and one or both of its terminuses modified via the inclusion of 0.1 to 0.5 wt% (for claim 11) of a chain transfer agent.
Kang is silent regarding the addition of a viscosity regulator.
Choi discloses that it was known in the art to add 5 to 40 parts (for claim 11) of a tackifying agent to adhesive compositions in order to improve the composition’s workability and adhesion to a substrate (¶0121, 0124). Choi further teaches that said tackifying resin may be a commercial product such as SUKOREZ D300, SUKOREZ D390, SUKOREZ SU100, etc. (¶0126); note that applicant’s specification specifically cites the SUKOREZ line of products as being within the scope of the viscosity regulator having the required properties (for claims 8-11) (see specification ¶0047).
As taught by Choi, it was known in the art to modify the properties of an adhesive by adding a tackifying resin, corresponding to the claimed viscosity regulator, in order to adjust the adhesive’s workability and its adhesion to the substrate surface. It therefore would have been obvious to one of ordinary skill in the art to modify the adhesive of Kang by adding a tackifying agent such as the commercially available SUKOREZ line, with the reasonable expectation of obtaining a final adhesive having improved workability.
Response to Arguments
Applicant’s arguments, see page 7, filed 7/1/2026, with respect to obviousness-type double patenting rejection over copending Application No. 17/997,538 have been fully considered and are persuasive. The rejection has been withdrawn in view of the amendment to the claims.
Regarding the claimed aromaticity and the rejection over Soon: As discussed in paragraphs 6 to 13 of this Action, Soon’ Example 2 discloses the production of a modified petroleum resin which appears to be identical to the claimed invention; it is therefore reasonably expected that its properties would necessarily be the same as claimed and inherently be not different from those of the claimed invention. The burden is therefore shifted to applicant to provide evidence demonstrating that Soon’s modified petroleum resin would not inherently have the required aromaticity. As applicant has not submitted such evidence, the argument that Soon does not disclose the aromaticity of its modified resin is not persuasive.
Furthermore, to the extent that applicant alleges that it is not possible to have the required viscosity if aromaticity is not in the claimed range, it is noted that, as discussed earlier in this Action, the resin of Soon’s Example 2 has a viscosity of 10,100 cps. This value is within the claimed range. Applicant’s argument would therefore supports the expectation that the prior art resin would have the required aromaticity.
Regarding the claimed aromaticity and the rejection over Kang: As discussed in paragraphs 27 to 30 of this Action, Kang renders obvious a dicyclopentadiene-based resin which is prepared via copolymerization of a monomer mixture comprising dicyclopentadiene, corresponding to the claimed C9 mixed oil fraction-derived unit structure, which is characterized by the same properties of Mn, Mw, and Mz of 300 to 5000 g/mol, overlapping the claimed range. The prior art resin therefore has the same molecular weight properties as the claimed invention and comprises the same monomers as disclosed by applicant for the claimed invention. As the prior art dicyclopentadiene-based resin appears to be the same as the claimed resin, it is reasonably expected that its properties would not be materially different from those recited in the instant claims. The burden has therefore been shifted to the applicant to provide evidence that the resin of Kang would not have the claimed aromaticity; see In re Fitzgerald cited earlier in this Action. As such evidence has not been provided, applicant’s argument is not persuasive.
Applicant argues that the data in the Table in the remarks demonstrates that the desired viscosity cannot be obtained unless the aromaticity is in the claimed range. In response, it is noted that resins used in the comparative examples do not differ from those of the inventive examples only with regards to their reported aromaticity. As disclosed in the instant specification (see ¶0001333: Table 2), the resins of the comparative examples differ from the resins of Examples 1 and 2 with regards to their number average molecular weight (Mn), weight average molecular weight (Mw), and z average molecular weight (Mz). It therefore is not clear whether the allegedly unexpected differences between the inventive examples and the comparative examples are the result of the aromaticity, or if they are dependent on molecular weight properties which are not required by the claimed invention. The evidence in the record therefore does not support applicant’s argument that the claimed viscosity can only be obtained when the aromaticity is in the required range.
Applicant argues that the claimed invention allegedly yields unexpected results, citing the Table provided in the submitted remarks (see page 10).
In response, it is first noted that the claims are rejected under 35 U.S.C. 102 (a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Soon. Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based; see In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973) (MPEP § 2131.04). Arguments that the claimed invention allegedly yields unexpected results therefore are not relevant to the rejection of claims under 35 U.S.C. 102(a)(1) over Soon.
Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results (MPEP § 716.01(c)(I)). The Table provided in the submitted remarks includes samples labeled “Further Example” and “Further Comparative Example”; note that these samples do not correspond to the examples included in applicant’s original disclosure. Applicant therefore cannot rely on data obtained from these two samples to support an argument that the claimed invention yields unexpected results as the data has not been submitted in the form of an affidavit or declaration as required.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range; see In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (MPEP § 716.02(d)).
As currently written, the claimed invention is a composition which is only required to comprise a modified petroleum resin. In contrast, both Example 1 and Example 2 of the specification disclose compositions comprising the commercially available viscosity regulator LP-A180. It is therefore unclear whether the allegedly unexpected results may be obtained by a composition that only comprises a modified petroleum resin as allowed by the claimed invention, or if the allegedly unexpected results are dependent on the inclusion of the viscosity regulator used in the Examples.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range; see In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) (MPEP § 716.02(d)).As written, the claimed invention reads on a composition wherein a petroleum resin having any composition is terminally modified with any molecular weight regulator at one or both terminus, wherein the composition has an aromaticity in the range of 24 to 47% and viscosity of 5000 to less than 50000 cps at 25 °C. In contrast, the provided examples are reported to have aromaticity of either 36.3 or 39.3 and viscosity of 7380 or 8600. The limited number of values represented in the cited examples are not commensurate in scope with the claimed ranges for aromaticity and viscosity.
Furthermore, the nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof; see In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (MPEP § 716.02(d)(I)). Both inventive examples in the specification are reported to have been prepared using a purified C9 oil fraction and the molecular weight regulator n-dodecyl mercaptan. The cited examples therefore are not commensurate in scope with the broad range of structures that fall within the scope of the claimed modified petroleum resin. The allegedly unexpected results therefore are not commensurate in scope with the claimed invention. Applicant’s arguments therefore are not persuasive, and the rejections are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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