DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 13, and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Okazaki et al (US 6458902 B1), as evidenced by Srinivas (Chain Transfer in Polymerization - Molecular Weight Control and More, 2005, Arkema Inc., p.1-11).
Regarding Claims 1 and 5: Okazaki teaches a resin composition containing a hydrogenated petroleum resin (col. 1, lines 7-9) containing a styrene unit (col. 3, lines 38-45) and a molecular weight modifier (col. 3, lines 21-37), wherein the molecular weight modifier is present at 0.1-3wt% (col. 4, lines 31-33). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the molecular weight modifier and would have been motivated to do so in order to control the molecular weight and softening point of the resin. Okazaki further teaches that low Gardner colors are desirable (col. 11, lines 1-10); all disclosed examples have a Gardner color of less than 10 (Table 2).
Okazaki does not explicitly teach that the molecular weight regulator is bonded to the terminuses of the petroleum resin. However, Srinivas teaches that chain transfer agents/molecular weight regulators may bond to one or both terminuses of a polymer chain (p.3, Chain Transfer and Reinitiation reaction schemes).
Regarding Claims 2-4: Okazaki teaches a C9 mixed oil fraction unit structure containing styrene, α-methylstyrene, β-methylstyrene, vinyltoluene, indene, alkylindene, and dicyclopentadiene (col. 3, lines 38-45), wherein the C9 fraction contains at least 50% of vinyltoluene and up to 20% of indene (col. 3, lines 46-60). This indicates that the styrene would be present at greater than 0% and less than 100%.
Regarding Claim 13: Not disclosed is the aromaticity and viscosity of the composition. However, Okazaki teaches the structure of claim 1 made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claims 25-26: Okazaki teaches a paint/coating containing the resin (col. 6, lines 14-17).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Okazaki et al (US 6458902 B1) in view of Kang et al (US 2022/0025094 A1), as evidenced by Srinivas (Chain Transfer in Polymerization - Molecular Weight Control and More, 2005, Arkema Inc., p.1-11).
Okazaki teaches the limitations of claim 1, as set forth above. Okazaki further teaches a number-average molecular weight of 250-4000 (col. 5, lines 30-34). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to synthesize a modified petroleum resin with an overlapping Mn and would have been motivated to do so to achieve a low softening temperature.
Okazaki is silent to Mw and M-z of the resin.
Kang teaches a petroleum resin composition (para. 0002) with a number-average molecular weight of 200-800 g/mol, a weight average molecular weight of 300-3000 g/mol, and a Z average molecular weight of 400-4000 g/mol (para. 0045), which overlap the claimed ranges. Kang teaches that these ranges of Mn, Mw, and Mz prevent surface contamination of a coating as well as improving the surface adhesion (para. 0045). Kang and Okazaki are analogous art because they are directed toward the same field of endeavor, namely petroleum-based resins for use in coatings and paints.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the Mn, Mw, and Mz of the polymer taught by Okazaki to the ranges taught by Kang in order to obtain a coating composition with low contamination and excellent adhesion.
Not disclosed is the viscosity and glass transition temperature of the resin. However, the references teach the claimed chemical structure with the claimed molecular weight ranges.. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed structure. Therefore, the claimed effects and physical properties, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Okazaki et al (US 6458902 B1) in view of Satou (JPS53129285A, using the machine translation for the citations below), as evidenced by Srinivas (Chain Transfer in Polymerization - Molecular Weight Control and More, 2005, Arkema Inc., p.1-11).
Okazaki teaches the limitations of claim 1, as set forth above. However, Okazaki is silent to the molecular weight regulator comprising a mercaptan compound.
Satou teaches a resin composition comprising a modified petroleum resin containing a styrene-derived unit structure (p.1, last paragraph – styrene, α-methylstyrene, naphtha cracked oil fractions containing styrene and its derivatives) and a molecular weight regulator containing a thiol group, such as butyl mercaptan, octyl mercaptan, and dodecyl mercaptan (p.2, second paragraph). Satou further teaches alcohols as a suitable molecular weight regulator (p.2, second paragraph). Alcohols are a type of molecular weight regulator taught by Okazaki (col. 3, lines 21-37). Satou and Okazaki are analogous art because they are directed toward the same field of endeavor, namely modified petroleum resins.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the alcohol molecular weight regular of Okazaki with the mercaptan molecular weight regulator of Satou because Satou teaches that both compounds are known for the same purpose and can be considered as equivalents. See MPEP 2144.06.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Okazaki et al (US 6458902 B1) in view of Choi (KR 102015979 B1, using the machine translation for the citations below), as evidenced by Srinivas (Chain Transfer in Polymerization - Molecular Weight Control and More, 2005, Arkema Inc., p.1-11).
Regarding Claims 9-11: Okazaki teaches the limitations of claim 1, as set forth above. However, Okazaki is silent to the viscosity regulator.
Choi teaches an adhesive composition comprising a thermoplastic resin and an adhesive resin (para. 0121), wherein the adhesive resin is a low molecular weight resin that regulates viscosity (para. 0124). Choi teaches that examples of the adhesive resin are hydrogenated dicyclopentadiene resins, such as those from the Sukorez product line (para. 0128), which para. 00049 the instant specification sets forth as an example of a viscosity regulator meeting the limitations of the claimed invention. Choi and Okazaki are analogous art because they are directed toward the same field of endeavor, namely coating compositions.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a viscosity regulator/adhesive resin such as a hydrogenated DCPD resin to the composition taught by Okazaki because Choi teaches that its inclusion lowers the viscosity in order to control workability, as well as improving wettability and adhesive strength (para. 0124).
Regarding Claim 12: Choi teaches 5-40 parts of the viscosity regulator/adhesive resin (para. 0121).
Response to Arguments
Applicant’s arguments filed April 15, 2026 with respect to the rejection of claim 1 been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Okazaki, as set forth above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
Prosecution Insights