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 § 103
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(s) 14-16, 18-19, 22, 24 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meverden et al. (5,266,627).
Regarding claims 14-16 and 18-19: Meverden et al. teach an ethylene-vinyltriethoxysilane, EVTEOS (claimed A1) (Examples), carboxylates of lead, cobalt, iron, lead or cobalt (claim 7 and 11), with particular examples of 0.2 wt% of dibutyltin dilaurate (Examples; Table 1); and 1 to 70 wt% of magnesium hydroxide (column 5, lines 37-55). Meverden et al. teach copolymerizing the ethylene with an unsaturated silane compound in the presence of a comonomer, with methyl acrylate being an illustrative comonomer (column 4, lines 56-68). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select methyl acrylate as the comonomer in Meverden et al.
The range of magnesium hydroxide overlaps the claimed range.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 22: Meverden et al. teach 2.6 wt% carbon black, which is a filler (Examples; Table 1).
Regarding claim 24: Meverden et al. teach a crosslinked polymer obtained by crosslinking the composition as described in claim 14 above [Examples].
Regarding claim 27: Merveden et al. teach aluminum trihydrate as one of the most commonly used fillers in the composition (column 5, lines 49-55).
Response to Arguments
Applicant's arguments filed 9/4/2026 have been fully considered but they are not persuasive.
The applicant has made the argument that the examples of Meverden do not disclose methyl acrylate. This is not persuasive because patents are relevant prior art for all that they contain and not just the preferred embodiments. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). See MPEP 2123. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
The applicant cites column 7 of Mervden and states that the passage does not disclose the cross-linkable, nongrafted copolymer. This is not persuasive because the Office has never cited that section. Instead column 4, lines 56-68 was cited for support, which deals with the cross-linkable, nongrafted copolymer.
The applicant again makes the argument that the examples of Meverden do not disclose the claimed combination. This has been addressed above.
The applicant has alleged that Meverden has to make too many selections to arrive at the instant claims. This is not persuasive for the following reasons:
Aluminum hydroxide or magnesium hydroxide are selected from a short, finite list, and magnesium hydroxide is one of only three fillers listed as the most commonly used in the invention.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See MPEP 2144.
The Applicant has alleged unexpected results due to 60 to 75 wt% of the claimed metal hydroxides. This is not persuasive because the applicant does not have any data over 60 wt%, and the instant specification discloses that the most preferred range is 10 wt% to 60 wt% [0056].
The applicant states that the amended claims also require a selection from a list of comonomers. This is not persuasive because it is a very short, finite list in Meverden.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
