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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 19, 2025 has been entered.
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.
Claims 1, 3-4, 6-8, 10, 16-17, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Koelblin (EP 2752855) in view of Declerck (US 20150144191 A1).
Regarding claim 1, Koelblin teaches an electrical cable comprising a polymeric layer (Abstract) comprising a mixture of ethylene-vinyl acetate (EVA) copolymers, comprising:
A first EVA copolymer (abstract), denoted as EVA1 ([0009]), which reads on the claimed component “a)”
A second EVA copolymer (abstract), denoted as EVA2 ([0009]), which reads on the claimed component “c)”
Koelblin teaches that the composition may preferably contain at least 45% by weight of the mixture of EVA copolymers ([0011]), and contains at least 10% by weight of each of the individual EVA copolymers ([0012]).
Koelblin teaches a series of other additives which may optionally be added to the composition (crosslinking agents [0025], anti-caking agents [0027], viscosity agents [0031], acid scavengers [0034], protective agents [0037], and grouping of other additives [0042]), however the only additionally required component (besides the EVA copolymers) within the composition, when the composition is utilized in the manufacture of a semiconductive layer, is an electrically conductive filler ([0051]), which is preferably carbon black ([0054]). Koelblin teaches that the composition may comprise between 4 and 40% by weight of the semiconductive filler ([0053]), which reads on the claimed component “b)” and encompasses the claimed range of “30-50 wt%,” establishing a prima facie case of obviousness. Therefore, the maximum amount of the EVA copolymer mixture may comprise between 60 and 96 percent of the mixture (100% of the composition minus 40% and 4% of the carbon black filler, respectively). Since the formulation further requires at least 10% by weight of each individual EVA copolymer as described above ([0012]), the amount of each of the EVA copolymers within the formulation of Koelblin may range from 10% (the minimum amount explicitly required by Koelblin) up to 86% (the maximum 96% of the composition comprising EVA copolymers, minus the required 10% of the other EVA copolymer which is also required). The range of each of the EVA1 and EVA2 copolymer amounts (10% – 86%) encompasses the claimed ranges of components “a)” and “c),” establishing prima facie cases of obviousness.
Koelblin teaches that the two EVA polymers differ in their melt flow rates (Abstract), which are measured by the same method as claimed ([0007]), and which reads on the claimed “(a) and (c) are different.”
Koelblin teaches that the melt flow rate of EVA2 is higher than that of EVA1 ([0006]), teaches that the melt flow of EVA2 is preferably equal to or greater than 50 g/10 min higher than that of EVA1 ([0006]), and teaches an exemplary embodiment where the melt flow index of EVA2 approaches the claimed range ([0010]), however Koelblin differs from claim 1 because it does not teach a preferred upper limit to the melt flow index of EVA2, and therefore is silent with regard to the melt flow index of EVA2 falling within the claimed range of “100 to 1200 g/10min.”
In the same field of endeavor, Declerck teaches polymer sheet ([0001]) comprising EVA ([0048]), which may be presented in the form of a mixture of two or more EVA polymers ([0052]), which may differ in molecular weight and/or molecular weight distribution ([0052]). Declerck teaches that EVA copolymers exhibiting MFR ranges of between 0.1 and 1000 g/10min are useful for the inventive compositions ([0050]), including the production of a polymer sheet (Abstract). It is prima facie obvious to select a known material based on art-recognizes suitability for an intended use (See MPEP 2144.07). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate EVA copolymers having melt flow rates ranging from 0.1 to 1000 g/10min, as taught by Declerck, into the blended EVA copolymer sheet of Koelblin, as Declerck has recognized EVA copolymers with this range as suitable for the formation of blended EVA copolymer sheets.
Regarding claim 3, Koelblin teaches that EVA1 has a vinyl acetate content of 27% or more ([0014]), which overlaps the claimed range of “1 to 35 wt%,” establishing a prima facie case of obviousness.
Regarding claim 4¸ Koelblin teaches that the melt flow rate of EVA2 is greater than that of EVA1 (Abstract), and teaches that the melt flow of EVA1 is preferably between 1.0 and 10.0 g/10min ([0010]), which falls within the claimed range of “0.01 to 50 g/10min,” establishing a prima facie case of obviousness.
Regarding claim 6, Koelblin teaches that the conductive filler (which may be carbon black) is included in amounts ranging from 4 to 40% by mass of the composition ([0053]), which overlaps the claimed range of “25 to 60 wt%,” establishing a prima facie case of obviousness.
Regarding claim 7, Koelblin teaches that the formulation may further comprise 3 to 20 weight percent of an acid scavenger ([0036]), which overlaps the claimed range of “at least 0.1 wt%,” establishing a prima facie case of obviousness. Koelblin further teaches that an antioxidant ([0037]) and a crosslinking agent ([0024]) may be added to the composition.
Regarding claim 8, Koelblin teaches that EVA2 may contain at least 27% vinyl acetate groups by weight ([0015]), which overlaps the claimed range of “1 to 45 wt%,” establishing a prima facie case of obviousness.
Regarding claim 10, Koelblin teaches a polymer composition (Abstract), which may be formed into a semiconductive polymer layer ([0053]), which is used to form an electric cable (Abstract). The electrical cable of Koelblin reads on the claimed “article” because the instant specification states that the article may be a power cord (see instant Specification at p. 3, lines 14-16).
Regarding claims 16-17, Koelblin teaches that the acid scavenger may be zinc stearate ([0035])
Regarding claim 20, Koelblin teaches that the inventive composition is used to form an electric cable (Abstract), which reads on the claimed “power cable.”
Regarding claim 21, as described above, Koelblin teaches the maximum amount of the EVA copolymer mixture may comprise between 60 and 96 percent of the mixture (100% of the composition minus 40% and 4% of the carbon black filler, respectively). Since the formulation further requires at least 10% by weight of each individual EVA copolymer as described above ([0012]), the amount of each of the EVA copolymers within the formulation of Koelblin may range from 10% (the minimum amount explicitly required by Koelblin) up to 86% (the maximum 96% of the composition comprising EVA copolymers, minus the required 10% of the other EVA copolymer which is also required). The range of each of the EVA2 copolymer amounts (10% – 86%) overlaps the claimed range of component “c),” establishing a prima facie case of obviousness.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Koelblin (EP 2752855) in view of Declerck (US 20150144191 A1) and further in view of Fagrell (US 20130220666 A1).
Regarding claim 2, Koelblin as modified teaches all of the limitations of claim 1 as described above. Koelblin as modified differs from claim 2 because it is silent with regard to the claimed ranges of iodine and/or oil absorption number(s) of the carbon black conductive filler.
In the same field of endeavor, Fagrell teaches a semiconductive composition ([0018) including EVA copolymers ([0172]-[0173] and [0177]), which can be formed into a semiconductive layer ([0231]) and which includes carbon black as a conductive filler ([0245]). Fagrell teaches that the carbon black preferably exhibits an iodine absorption number ranging from 10 to 200 mg/g according to ASTM D1510 ([0195]) and/or an oil absorption number of 60 to 300 cm3/100g according to ASTM D-2414 ([0195]). In both cases, the ranges taught by Fagrell overlap the claimed ranges, establishing prima facie cases of obviousness. Further, it is prima facie obvious to select a known material based on art-recognizes suitability for an intended use (See MPEP 2144.07). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate a carbon black having the absorption characteristics as taught by Fagrell into the composition of Koelblin, as Fagrell has recognizes that carbon black fillers with the aforementioned absorption characteristics are suitable for use in the formation of semiconductive EVA compositions.
Response to Arguments
Applicant's arguments filed December 19, 2025 have been fully considered but they are not persuasive.
Applicant’s first arguments are directed towards allegations of unexpected results. Applicant indicates that unexpected improvements in thermal degradation, smoothness (and, relatedly, the homogeneous distribution of carbon black), and kneading power reduction are all wrought when compositions are formed within the claimed parameters, as opposed to those falling outside of the claimed parameters.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
As described in the Applicant’s remarks, the scope of the claims has been amended to limit the compositional ranges of EVA copolymer “a)” and carbon black “b).” However, the experimental data comprises results for compositions comprising a single EVA copolymer “a)” which has a melt flow rate of 8 g/10 min and a vinyl acetate content of 15 wt%. By contrast, component “a)” is open to virtually any ethylene vinyl acetate copolymer with a melt flow rate of 0.1-50 g/10 min (c.f. claim 4) and a vinyl acetate content of 1 to 35 wt% (c.f. claim 3). Furthermore, the experimental compositions comprise a single carbon black “b),” which has an iodine absorption number of 112-124 mg/g, an oil absorption number of 92-104 ml/100g, and a mean particle size of 11-20 nm. By contrast, the claims are open to virtually any carbon black with an iodine absorption number of at least 10 mg/g, an oil absorption number of at least 30 ml/100g (c.f. claim 2), and with virtually any particle size. These scope discrepancies also apply to claimed component “c)” (e.g., experimental EVA c) has an MFR of 500 g/10 min, whereas claim 1 is open to any MFR within 100-1200 g/10 min).
The applicant need not provide data for every possible composition as claimed, however despite the amended compositional ranges, the data provided is not reasonably commensurate in scope with the claimed composition to properly rebut a prima facie determination of obviousness. The rejection of the claimed composition is therefore maintained.
Applicant next argues that neither Koelblin alone nor Koelblin in combination with Declerk teaches or suggests the presently claimed composition nor provides a reasoned basis to expect the particular advantages recognized by the present application.
Firstly, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, 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 the Applicant. See MPEP 2144(IV).
Koelblin as modified by Declerk may not directly suggest the claimed composition, however the prior art does make obvious the claimed combination, as described in the rejections above. Applicant states that Koelblin discloses very broad, open-ended ranges for EVA, carbon black, and other formulation parameters. However, as described above, the amounts of EVA within the composition are bounded, whether implicitly or explicitly, and the range for carbon black is specifically stated as an incorporation of between 4 and 40% by weight ([0053]). Applicant states that the ranges within the claimed composition are “much narrower” by comparison; however, the claimed range for carbon black (37 to 61 wt%, as defined by the amended claim 1) overlaps the range of Koelblin by 4 points (37, 38, 39, and 40 wt% are common to both ranges). Four of the 24 points within the claimed range are therefore found within the prior art, constituting an overlap of about 17%. Regarding the claimed range of EVA copolymers (37 to 61 wt% and 2 to 20 wt% for each of claimed components “a)” and “c)”), as described above, Koelblin teaches a range of from about 10 wt% to about 86 wt%, which encompasses the claimed range for component “a)” and overlaps the claimed range for component “c)” by 11 points (10-20 wt% are common to both the range taught by Koelblin ant the range for component “c)” within claim 1). Eleven of the 19 points within the claimed range are therefore found within the prior art, constituting an overlap of about 58%. The ranges taught by Koelblin therefore substantially overlap the claimed ranges. Assuming arguendo that the ranges taught by Koelblin do not substantially overlap the claimed ranges, the narrowness of the claimed ranges would not rebut the fact that compositions with components falling within the claimed ranges would be obvious to one having ordinary skill in the art, as reasoned in the rejections of the current claim set, applied above.
Applicant asserts that the 35 US 103 rejections, supplied in the previous office action, fail to include specific findings of fact and a reasoned explanation, supported by evidence, that a person of ordinary skill in the art would have been motivated to modify the prior art to reach the claimed composition. However, the previously applied rejections (and the rejections applied above) do provide specific findings of fact and a reasoned explanation supported by evidence. In these rejections, Koelblin provides a composition which contains significant similarities to the claimed composition (e.g., Koelblin teaches a composition containing carbon black and a mixture of EVA copolymers in amounts which overlap the claimed ranges). Koeblin is explained above as differing from the claimed composition in varying ways (e.g., Koelblin fails to contemplate the specific melt flow rate as claimed). In the same field of endeavor, Declerk teaches relevant compositions containing mixtures of EVA copolymers, and teaches ranges of melt flow rates which satisfy the claimed ranges.
The prior art teachings are relevant facts germane to the applicant’s claims. The Examiner has therefore included specific findings of fact with respect to this case.
Regarding a “reasoned explanation” as to why one having ordinary skill in the art would have modified the prior art in a manner to reach the claimed composition, the 103 rejection(s) specifically state the motivations provided to one having ordinary skill in the art, as previously adjudicated by supreme court precedent (see MPEP 2144.07, as referenced above: “It is prima facie obvious to select a known material based on art-recognizes suitability for an intended use (See MPEP 2144.07). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate EVA copolymers having melt flow rates ranging from 0.1 to 1000 g/10min, as taught by Declerck, into the blended EVA copolymer sheet of Koelblin, as Declerck has recognized EVA copolymers with this range as suitable for the formation of blended EVA copolymer sheets.”). Furthermore, with specific regard to the Applicant’s assertion that the Examiner has simply pointed to “overlapping broad ranges,” prima facie cases of obviousness in cases where ranges overlap is not merely an assertion on the part of the Examiner, but is instead a judicially supported method of recognizing patentably indistinct subject matter (c.f. MPEP 2144.05 and 2131.03, where pertinent supreme court precedent describing prima facie cases of obviousness are described with respect to patent examination).
Applicant next argues that Declerk only teaches very broad ranges of EVA copolymer melt flow ranges, and argues that Declerk fails to address semiconductive cable compositions or improvements in kneader power during processing of highly filled EVA/CB systems. Firstly, as described above, the motivation or reason to combine the prior art references need not be the same as that of the Applicant’s. The reason to or motivation to modify the reference may often suggest what is claimed, 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 the Applicant. See MPEP 2144(IV). The prior art is therefore not required to contemplate the improved kneader power recognized by the instant application. Furthermore, as described in the 103 rejections of the instant claim set, above, Koelblin teaches an electrical cable comprising a polymeric layer (Abstract), and Declerck teaches polymer sheet ([0001]) comprising EVA ([0048]). Koelblin additionally contemplates the formation of a sheet from the inventive composition (e.g., [00754] and [0075]). Thus, while Declerk doesn’t specifically focus on the formation of an electrical cable, the two prior art documents are within the same field of endeavor and are plainly relevant to one another. Koelblin contemplates a power cable composition, and thus the teachings of Declerk are transitively related thereto.
Regarding the applicant’s argument that Declerk teaches very broad ranges of melt flow rates, the claimed range is actually broader than the range taught by Declerk (c.f. Declerk’s range of 0.1 – 1000 g/10 min comprises a range of about 1000 g/10 min, whereas the claimed range of 100 – 1200 g/10 min comprises a range of about 1100 g/10 min). It is therefore unclear how the breadth of melt flow ranges taught by Declerk are ”too broad” to read on the claimed range – furthermore, about 82% of the claimed range is taught by the prior art.
Applicant reiterates the argument that the prior art does not provide “the missing link between that general knowledge and the specific problem of kneader power reduction,” however as described above, the prior art is not required to contemplate the same reasons as the applicant. As described above, one having ordinary skill in the art would be duly motivated to include the melt flow ranges of Delcerk into the formulation of Koelblin because it is prima facie obvious to select a known material based on art-recognizes suitability for an intended use, in this case, as melt flow rates of EVA copolymers within mixed EVA polymer extrudates (See MPEP 2144.07).
Applicant states that the prior art Declerk fails to qualify as analogous art under the “reasonably pertinent” standard discussed in MPEP 2141.01(a). However, assuming arguendo that Declerk is not “reasonably pertinent,” the prior art may also be designated as prior art if it is from the same field of endeavor as the claimed invention (see MPEP 2141.01(a).I.). This is the determination applied in the 35 USC 103 rejections above (e.g., Declerk is indicated as “in the same field of endeavor” in the rejection of claim 1, above). Declerk relates to extruded polymer sheets containing EVA copolymers (Abstract), which is plainly relevant to the broader category of invention contemplated by the instant application. While the two inventions address a different problem, they nevertheless deal with related subject matter, at least in terms of polymeric structure. Furthermore, as described within MPEP 2141.01(a).I., “the field of endeavor is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field,” and “circumstances are to be weighed ‘from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.’” It is the office’s perspective that one having ordinary skill in the art would recognize extrusions of EVA copolymers to be generalizable to one another, especially regarding melt flow rates which would impact the viscosity of the polymer melt and therefore would directly implicate the extrudability thereof.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762