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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/13/2026 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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, 18-20, 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 18-20: 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 4/13/2026 have been fully considered but they are not persuasive.
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 alleges that Meverden teaches away from including the catalyst in the composition. This is not persuasive because the two component system of Meverden is mixed together [Examples].
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
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