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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/24/2025 has been entered.
Response to Amendment
The amendment of claims 5-6, 10 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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-7, 9-10, 16-17, 21, 23 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 21 recites “as measured on an extruded composition in an oven on a talcum bed at 100°C for 24 hours after being conditioned in a constant environment room for 24 hours”. However, the specification discloses the shrinkage is measured on an article with a specific dimension and the constant environment room has specific parameters.
Claim Rejections - 35 USC § 103
Claims 1-3, 5-7, 9-10, 16-17, 21, 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (EP0710570) in view of Rogestedt et al (US 6,329,054) and Englund et al (EP 2521137).
Claims 1-3, 5-7, 9-11, 16-17, 21: Lee teaches a composition for optical fiber sheath comprises an olefin polymer, 0.05-1 wt% of carbon black and 0.01-5 wt% of an UV stabilizer (abstract, table 3). The UV stabilizer can be benzoate etc. (6:38-45). The composition further comprises an antioxidant (6:52-55). 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).
Lee does not teach the olefin polymer is a multimodal olefin copolymer like claimed.
However, Rogestedt discloses an optical cable sheath composition and teaches using a multimodal polyolefin can improve properties of the cable such as tracking resistance, shrinkage (1:20-45, 3:1-10). The bimodal ethylene polymer has a density of 0.941 g/cm3 and an MFR of 0.4g/10 min, the low molecular weight is an ethylene homopolymer (example 1). Additionally, the multimodal polyolefin has higher melt flow properties and better processability (1:20-25). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize multimodal polyolefin for improved tracking resistance, better melt flow properties and better processability.
Lee does not teach the amount of antioxidant nor the UV agent like claimed.
However, Englund discloses a composition for optical fiber sheath and teaches the composition comprises antioxidant Irganox B225FF in an amount of 0.22 wt% and 0.3 wt% of a UV stabilizer Tinuvin 783 (table 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize Tinuvin 783 and Irganox B225FF in an amount like claimed for a composition for optical cable sheath because it is recognized in the art these stabilizers are suitable for a composition for optical cable sheath. Tinuvin 783 reads on the mixture of claim 3. Irganox B225FF reads on the mixture of claim 6. The total amounts of carbon black, UV stabilizer and antioxidants would result in the amount of the multimodal olefin copolymer overlaps the claimed range.
Lee is silent with respect to the claimed shrinkage of the composition. However, the combination of teachings from Rogestedt, Lee and Englund have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claim 23: Rogestedt teaches the final olefin polymer mixture has a density of 0.920-0.950 g/cm3, and a melt flow rate of 0.2-2 g/10min. The first olefin polymer has a density of 0.955-0.975 g/cm3 and a melt flow rate of 200-600 g/10min (4:10-20, example 1). Instant application discloses the identical features, see PGPub [0024-0025].
The Office realizes that the claimed molecular weight and molecular weight distribution are not positively stated by the reference. However, the reference teaches identical polymer mixture with identical melt flow rate of the mixture and the first olefin polymer. Melt flow rate is heavily dependent on molecular weight. And for bimodal mixture, the molecular weight distribution is heavily dependent on the molecular weight of each component. Therefore, the claimed molecular weight and molecular weight distribution would be expected to overlap by a mixture with identical melt flow rate. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case, evidence would need to be provided to support the applicant’s position.
Response to Arguments
Applicant's arguments filed 9/24/2025 have been fully considered but they are not persuasive.
In response to applicant's argument, it is noted that 1) the office does not state that shrinkage differences are attributable to the polymer, instead the office states the shrinkage depends more on the polymer rather than on the amount of carbon black; 2) the office did not compare PE3/CE1 vs PE2, instead the office compared PE3 vs CE1, and actually it is not a fair comparison between PE2 and PE3 because one contains carbon black and the other one does not; 3) the data in Declaration filed on 4/11/2025 shows shrinkage varies with the amount of carbon black, but the data does not show shrinkage is irreverent to the type of polymer; 4) the data in Declaration filed on 4/11/2025 shows shrinkage varies from 0.43-0.66 when the amount of carbon black varies from 0-1 wt%, Lee discloses the amount of carbon black is 0.05-1 wt% and therefore in view of Rogestedt the claimed shrinkage is expected.
Applicant should provide experimental data to demonstrate unimodal HDPE offers better contrast for carbon black based laser marking, so that the modification would render the invention of primary being modified unsatisfactory for its intended purpose.
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that multimodal polyolefin providing better laser marks is unexpected, it is noted that 1) the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). 2) Case law has held that basic property or utility must be disclosed in application as originally filed in order for affidavit evidence of unexpected properties to be offered. In re Davies et al. 177 USPQ 381 (CCPA 1973).
In response to applicant's argument that there is no suggestion in the art that multimodal polyolefins are suitable for laser marking, it is noted that Lee discloses polyolefin is suitable for laser marking, and multimodal polyolefins are a mixture of multiple polyolefins with different molecular weights, therefore, one skilled in the art would expect multimodal polyolefin would be suitable for laser marking.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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