DETAILED ACTION
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The grounds of rejection set forth below for claims 1-5, 7-17, and 21 are the same as those set forth in the previous Office action mailed on Feb. 17, 2026. For this reason, the present action is properly made final.
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 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
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.
Response to Arguments
Applicant’s arguments filed Apr. 8, 2026 (herein “Remarks”) have been fully considered and they are persuasive in part.
The rejections of claims 17 and 21 under 35 U.S.C. § 112(b) have been withdrawn in light of the amendments of the claims.
Regarding the rejection of claims 4, 7-8, and 12-15 under 35 U.S.C. § 112(d): Applicant argues that the aromatic proton content can be satisfied by either an aromatic cyclic component or by another component of the claimed modifier; and that the claims permit the presence of an aromatic component other than the cyclic component.
As set forth in the rejection, aromatic moieties are necessarily cyclic. Therefore, any aromatic content necessarily falls within the scope of a cyclic component. Limitations regarding what “the cyclic component is” thus necessarily encompass any component that includes aromatic (cyclic) moieties.
Regarding the rejection of claim 9 under 35 U.S.C. § 112(d): Applicant argues that the claim recites that the modifier “does have an aromatic component”. This argument is unpersuasive because independent claim 1 already recites that the modifier has an aromatic proton content, and thus it already has an aromatic component.
Regarding the double patenting rejection: The terminal disclaimer submitted on Apr. 8, 2026 has been disapproved by the Patent Legal Research Center for the following reasons:
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Conclusion
This action is properly final because the claims are rejected on the same grounds as set forth in the previous Office Action mailed on Feb. 17, 2026. Accordingly, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). See MPEP § 706.07(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 extension fee 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.
This action is a final rejection and is intended to close the prosecution of this application. Applicant's reply under 37 CFR § 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee.
If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR § 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b), the application will become abandoned.
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.
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, Arrie (Lanee) Reuther can be reached at (571) 270-7026. 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.
/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
Prosecution Insights