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 Objections
Claim 4 objected to because of the following informalities.
Claim 4 recites “1,3-cycylohexadiene” in which the second “y” appears to be a typographical error.
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 17 and 21 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 17 refers to the modifier of base claim 9 and subsequently recites that “substituted alpha-methylstyrenes having one or more substituents on the aromatic ring are suitable, particularly where the substituents are selected from alkyl, cycloalkyl, aryl, or combination radicals”.
The claim does not explain the conditions for which the ‘suitability’ of the recited substituted alpha-methylstyrenes is determined. The claim does not set forth any particular characteristics of the modifier by which one of ordinary skill in the art may distinguish a suitable material from an unsuitable material. The claim does not set forth the scope of the recited ‘suitable’ aromatic components with reasonable clarity.
The reference to suitability “particularly” for certain substituents does not set forth an objective standard (such as particular characteristics of the modifier) by which one of ordinary skill in the art would determine the ‘particularity’ of the claimed suitability of the aromatic components. The claim does not set forth the meaning of the recited suitable aromatic components “particularly” for the recited substituents with reasonable clarity.
The claim does not set forth the meaning of the phrase “combination radicals”. To the examiner’s knowledge, this phrase is not a term of art. The claim does not set forth the scope of substituents that are “combination radicals” with reasonable clarity.
Claim 21 refers to the modifier of base claim 1 and recites that the modifier has “at least one and preferably all” of certain features.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present case, claim 21 recites the broad recitation of “at least one” of certain features, and the claim also recites the narrower limitation of “preferably all” of the features. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such ‘preferable’ language is merely exemplary of the remainder of the claim, and therefore not required, or else is a required feature of the claim.
Claim Rejections – 35 U.S.C. § 112(d)
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4, 7-9, and 12-15 are rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of a previous claim.
Claims 4, 7-8, and 12-15 are ultimately dependent upon independent claim 1. Independent claim 1 recites a modifier comprising a cyclic component and having a specified aromatic proton content.
Claims 4 and 7-8 recite limitations regarding what “the cyclic component is”. In particular, claims 4 and 7-8 limit the cyclic component to certain cyclic olefin compounds including cyclopentene, cyclopentadiene, dicyclopentadiene, cyclohexene, 1,3-cycylohexadiene, 1,4-cyclohexadiene, methylcyclopentadiene, and di(methylcyclopentadiene).
The aromatic proton content that is recited in base claim 1 necessarily requires the presence of cyclic (aromatic) moieties. However, each of the compounds recited in claims 4 and 7-8 is not aromatic. The limitations in claims 4 and 7-8 limit the cyclic component to the recited (aliphatic) cyclic olefin compounds and thereby exclude the aromatic moieties that would be required in base claim 1. Claim 4 therefore does not specify a further limitation of the subject matter claimed in base claim 1.
Claims 12-15 are dependent upon claim 7 and fail to comply with 35 U.S.C. § 112(d) for the same reason.
Claim 9 is dependent upon independent claim 1. Independent claim 1 recites a modifier comprising a cyclic component and having a specified aromatic proton content. Claim 9 refers to the modifier of base claim 1 and recites that the modifier comprises an aromatic component.
Because base claim 1 already requires an aromatic component (via the specified aromatic proton content), the recitation of an aromatic component in claim 9 does not specify a further limitation of the subject matter claimed in base claim 1.
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 1-5, 9-11, 14, 16-17, and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-30 of copending application serial no. 18/274,122. Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 1: US ‘122 claims a composition comprising a hydrocarbon resin that has each of the presently recited properties directed to number average molecular weight, glass transition temperature, aromatic proton content, and cyclic components (see claim 16 of US ‘122).
Claim 16 of US ‘122 reads on present claim 1 in an anticipatory manner.
The further limitations of present claims 2-5, 9-11, 14, 16-17, and 21 are adequately set forth in claims 17-23 and 25-26 of US ‘122.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
The following reference is noted.
US Patent No. 5,171,793 to Johnson describes hydrogenated hydrocarbon resins that are useful in polymer adhesive systems (see the abstract). Johnson discloses that the resins have 1 to 20% of aromatic hydrogens (see col. 4, ll. 48-50) and a number average molecular weight of 100 to 500 (see col. 4, ll. 65-68). Johnson further discloses an example (see Example 2 at col. 8, ll. 1-12 and in Table II) having a glass transition temperature of 52 °C, a number average molecular weight of 252 (479/1.9), and an aromatic proton content of 12% (see the values in Table II). The resin includes units from a vinyl aromatic stream (see Table I) which is obtained by steam cracking petroleum refinery streams (see col. 3, ll. 65-68).
These values of glass transition temperature and aromatic proton content do not satisfy the first of the presently recited inequalities. Johnson does not specifically disclose an embodiment of a resin having a number average molecular weight within the presently recited range of 300 to 450 and an aromatic proton content of 12 to 19 mol% and which satisfies the presently recited inequalities.
Claims 6, 18-20, and 22-23 are objected to as being dependent upon a rejected base claim, but they would be allowable if written in independent form.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764