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 .
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sae-Ma et al. (Journal of Applied Polymer Science, Vol.117, 2862–2869 (2010)).
Considering Claims 1 and 2: Sae-Ma et al. teaches a hydrogenated C9 petroleum resin comprising a ratio of aromatic hydrogen atoms to total hydrogen atoms of 0.335 or 0.2 (Table III). Sae-Ma et al. teaches the resin as being prepared entirely from C9 fraction (Materials).
Considering Claim 3: Sae-Ma et al. teaches the softening temperature as being ~90 ºC (Figure 8).
Considering Claim 5: Sae-Ma et al. teaches the hydrogenated resin as being a rubber modifier (Introduction).
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.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sae-Ma et al. (Journal of Applied Polymer Science, Vol.117, 2862–2869 (2010)) as applied to claim 1 above, and further in view of Okamoto et al. (US Pat. 5,569,716).
Considering Claim 4: Sae-Ma et al. teaches the resin of claim 1 as shown above.
Sae-Ma et al. is silent towards the iodine value. However, Okamoto et al. teaches a hydrogenated petroleum resin for use in a rubber composition having a bromine number of not greater than 10 (4:4-17). Bromine number and iodine number of both means of measuring the same property, namely unsaturated bonds. Sae-Ma et al. and Okamoto et al. are analogous art as they are concerned with the same field of endeavor, namely rubber compositions comprising hydrogenated petroleum resins. It would have been obvious to a person of ordinary skill in the art to have controlled the iodine number of Sae-Ma et al. to a low value as in Okamoto et al., and the motivation to do so would have been, as Okamoto et al. suggests, to provide high heat resistance to the rubber composition (4:18-26).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sae-Ma et al. (Journal of Applied Polymer Science, Vol.117, 2862–2869 (2010)) as applied to claim 5 above, and further in view of Akiyama et al. (WO 2019/207925). Note: A machine translation is being used for WO 2019/207925
Considering Claims 6-8: Sae-Ma et al. teaches the composition of claim 5 as shown above.
Sae-Ma et al. does not teach the composition of the rubber composition. However, Akiyama et al. teaches a composition comprising a rubber component, the hydrogenated petroleum resin, and a crosslinking agent (pg. 6). Akiyama et al. teaches crosslinking the rubber composition (pg. 6). Akiyama et al. teaches a tire comprising the crosslinked rubber (pg. 6). Sae-Ma et al. and Akiyama et al. are analogous art as they are concerned with the same field of endeavor, namely petroleum resins for rubber compositions. It would have been obvious to a person of ordinary skill in the art to have used the rubber composition of Sae-Ma et al. to prepare a tire, as Akiyama et al. suggests, it is a suitable use for the rubber compositions.
Response to Arguments
Applicant’s arguments, see pages 2-6, filed June 2, 2026, with respect to the rejection(s) of claim(s) 1-8 under 35 U.S.C. 102 and 103 have 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 Sae-Ma et al. (Journal of Applied Polymer Science, Vol.117, 2862–2869 (2010)).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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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.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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