DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment of claims 1 are supported by the specification. The new claims 9-13 are supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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 new grounds of rejection set forth below are necessitated by applicant's amendment filed on 8/19/2026. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 102/103
Claim(s) 1-2, 4-6, 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nozawa et al (JP2018002861).
Nozawa teaches a composition comprising 100 parts of styrene-butadiene rubber, 90 parts of silica, 10 parts of a hydrocarbon resin, 2 parts of sulfur [0094-0096]. The hydrocarbon resin comprises 46 wt% of 1,3-pentadiene, 15.5wt% of C4-C6 alicyclic monoolefin, 21.4 wt% of C4-C8 acyclic monoolefins, 1.1 wt% of alicyclodiolefin and 16wt% of aromatic monoolefin of indene and styrene (example 2). The hydrocarbon resin has a number average molecular weight (Mn) of 1300, a weight average molecular weight (Mw) of 2100, a Z average molecular weight (Mz) of 3500, a ratio Mw/Mn of 1.6, a ratio Mz/Mw of 1.7, and a softening point 105°C.
Nozawa does not teach a ratio of Mp/Mw.
However, the hydrocarbon resin of Nozawa is prepared from a similar monomer composition using the same catalyst and under comparable polymerization conditions, and further exhibit similar molecular weight averages Mw, Mn and Mz, and similar molecular weight distribution of Mw/Mn, Mz/Mw. Since the peak top molecular weight reflects the most abundant molecular weight species within the distribution, the hydrocarbon resin of Nozawa would be expected or inherent to exhibit a similar Mp/Mw ratio as the claimed range, indicating comparable distribution shape and breath.
Claim(s) 1-2, 4-6, 9, 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kameyama et al (WO2018/101365).
In setting forth this rejection a machine translation of WO2018/101365 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Kameyama teaches a composition comprising 100 parts of diene rubber, 100 parts of silica, 20 parts of carbon black, 10 parts of a modified hydrocarbon resin, 1.7 parts of sulfur [0180-0182]. The hydrocarbon resin comprises 48.2 wt% of 1,3-pentadiene, 26wt% of C4-C6 alicyclic monoolefin, 6.5 wt% of C4-C8 acyclic monoolefins, 2.1 wt% of alicyclodiolefin and 16wt% of styrene (example 2). The hydrocarbon resin has a number average molecular weight (Mn) of 1200, a weight average molecular weight (Mw) of 2800, a Z average molecular weight (Mz) of 6100, a ratio Mw/Mn of 2.3, a ratio Mz/Mw of 2.2, and a softening point 101°C.
Kameyama does not teach a ratio of Mp/Mw.
However, the hydrocarbon resin of Kameyama is prepared from a similar monomer composition using the same catalyst and under comparable polymerization conditions, and further exhibit similar molecular weight averages Mw, Mn and Mz, and similar molecular weight distribution of Mw/Mn, Mz/Mw. Since the peak top molecular weight reflects the most abundant molecular weight species within the distribution, the hydrocarbon resin of Nozawa would be expected or inherent to exhibit a similar Mp/Mw ratio as the claimed range, indicating comparable distribution shape and breath.
Claim Rejections - 35 USC § 103
Claim 10, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable Nozawa et al (JP2018002861).
Claim 10: Nozawa teaches the content of the hydrocarbon resin is in the range of 1-30 parts [0073]. Case law holds that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim 13: Nozawa teaches fillers can be carbon black or silica, although it is preferable that the filler is silica [0076].
Claim 10 is/are rejected under 35 U.S.C. 103 as being unpatentable Kameyama et al (WO2018/101365).
Kameyama teaches the content of the modified hydrocarbon resin is in the range of 1-30 parts [0014]. Case law holds that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 8/19/2026 have been fully considered but they are not persuasive.
In response to applicant's argument regarding Mp/Mw ratio, it is noted that 1) the comparative examples 1-3 and 5 of the present application all use mixing and polymerization temperatures below 65°C, and comparative example 4 use 70°C and has the claimed Mp/Mw; 2) Both Nozawa and Kameyama teach the mixing and polymerization temperatures are 70°C. Additionally, both teach the polymerization temperature would affect the molecular weight. 3) applicants should provide other evidence to show that the hydrocarbon of Kameyama does not have the claimed Mp/Mw.
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 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 date of this final action.
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Primary Examiner, Art Unit 1763
