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 .
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.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-12, in the reply filed on 12/5/2025 is acknowledged.
Claims 13-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 1 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 17/997,538 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Copending claim 6 recites an invention which is a resin composition (for claim 1) comprising a modified petroleum resin having a structure in which a molecular weight regulator is bonded to at least one terminus of an at least partially hydrogenated or non-hydrogenated petroleum resin (for claim 1), wherein the resin composition has a viscosity measured at 25 C in a range of 5000 to 50000 cps (for claims 1, 5); a number average molecular weight (Mn) of 200 to 400 (for claim 5), a weight average molecular weight (Mw) of 400 to 700 (for claim 5), a Z average molecular weight (Mz) of 650 to 4000 (for claim 5), and a glass transition temperature of -40 to -25 °C (for claim 5).
It is clear that all the elements of the instant claim are to be found in the copending claim. The difference between the instant claim and the copending claim lies in the fact that the copending claim includes an additional limitation regarding the Gardner color value and is thus much more specific. Thus the invention of the copending claim is in effect a “species” of the “generic” invention of the instant claim. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the instant claim is anticipated by the copending claim, they are not patentably distinct from one another.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Soon et al, KR1020140042165.
A machine translation of Soon was used to prepare this Action.
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 claim 1) (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).
Claim Rejections - 35 USC § 102/103
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.
Claim(s) 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.
As discussed earlier in this Action, Soon’s Example 2 discloses the production of a petroleum resin having its terminus(es) modified with a chain transfer agent, wherein the petroleum resin has a viscosity at 25 °C of 10100 cps (for claim 5). Soon further reports that the polymer of Example 1 has a Mw of 440 (for claim 5) and a glass transition temperature (Tg) of -28 °C (for claim 5) (Table 2).
Soon is silent regarding the Mn, Mz, and aromaticity of the prior art resin; 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 12).
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 12): 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.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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