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 Okazaki et al. (US Pat. 6,458,902).
Considering Claims 1 and 2: Okazaki et al. teaches a hydrogenated petroleum resin made solely from a C9 petroleum fraction/greater than 95% by mass of C9 (Example 2), where 65% of the aromatic rings have been hydrogenated (Table 1), leaving 35% hydrogen atoms attached to an aromatic ring.
Considering Claim 3: Okazaki et al. teaches the polymer as having a softening point of 98 ºC (Table 1).
Considering Claims 5: Okazaki et al. teaches a rubber composition comprising the hydrogenated petroleum resin (Example 3).
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 Okazaki et al. (US Pat. 6,458,902) as applied to claim 1 above, and further in view of Okamoto et al. (US Pat. 5,569,716).
Considering Claim 4: Akiyama et al. teaches the resin of claim 1 as shown above.
Akiyama 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. Akiyama 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 Akiyama 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 Okazaki et al. (US Pat. 6,458,902) 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: Okazaki et al. teaches the composition of claim 5 as shown above.
Okazaki 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). Okazaki 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 Okazaki 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 with respect to claim(s) 1-8 have been 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
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.
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.
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.
/LIAM J HEINCER/Primary Examiner, Art Unit 1767