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.
Claims 1, 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) and Fagrell (US 20130220666 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).” Koelblin further 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 “1 to 15 g/10min,” establishing a prima facie case of obviousness. Regarding the newly added limitation requiring that component “a)” has a vinyl acetate content ranging from 10 to 18 wt%, Koelblin teaches that EVA-1 and EVA-2 may have different vinyl acetate contents ([0013]), and teaches that the minimum limit of 27 wt% vinyl acetate content of EVA-1 OR EVA-2 is advantageous for optimizing peelability of the polymeric layer ([0016]). Therefore, while Koelblin does contemplate an embodiment wherein EVA-1 has a minimum of 27 wt% EVA ([0016]), Koelblin also includes compositions where EVA-2 is the copolymer having said minimum vinyl acetate content. Koelblin additionally teaches that it is advantageous for EVA-1 and/or EVA-2 to have at most 45 wt% of vinyl acetate ([0017]). Therefore, Koelblin contemplates an embodiment wherein EVA-1 is not constrained by the minimum of 27 wt% of vinyl acetate (i.e., EVA-1 can contain less than 27 wt% of vinyl acetate), and simultaneously contemplates that EVA-1 can have up to 45 wt% of vinyl acetate. Koelblin therefore contemplates embodiments wherein EVA-1 may contain greater than zero and up to about 45 wt% of vinyl acetate, which encompasses the claimed range of “10 to 18 wt%,” establishing a prima facie case of obviousness.
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 “200 to 600 g/10min.”
In the same field of endeavor, Declerck teaches a 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. This range encompasses the claimed range of “200 to 600 g/10 min,” establishing a prima facie case of obviousness.
Koelblin as modified further differs from claim 1 because it is silent with regard to the claimed ranges of diameter and 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 has an average diameter of 5 nm or more ([0195]) and 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 all cases, the ranges taught by Fagrell encompass 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.
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.
Response to Arguments
Applicant's arguments filed April 7, 2026 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 MFR2 ranges of both EVA copolymers, the vinyl acetate content of the first EVA copolymer, the particle size of the carbon black, and the IAN/OAN values of the carbon black. 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%. 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. Applicant has broadly stated that “A skilled person would expect EVA and CB grades whose properties lie within these tight windows to exhibit similar melt viscosity and dispersion behavior, thereby rendering the presented data reasonably representative of the entire claimed scope;” however, the Applicant has not provided evidence to support said claims. In contrast, it is submitted that the claimed MFR2 range of 200 to 600 g/10 min is quite broad and does not represent a “tight window” as suggested. 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.
Furthermore, regarding the expectations of one having ordinary skill in the art, the Applicant has asserted that “the kneader power requirement unexpectedly decreases as the amount of EVA(c) increases.” This would suggest that one having ordinary skill in the art would not expect the incorporation of increasing amounts of a polymer having a high melt flow rate would result in an extrusion process requiring less power. However, it is well-known in the art that polymers having higher melt flow rates require less power to extrude (e.g. Aiya, I&EC Research 2024, 63, 9823-9832, p. 9830, left column, first full paragraph, teaches that viscosity, which directly correlates to MFR, is important for extrusion because higher viscosity polymers resist flow more and therefore require more rotational stress to travel the length of the extruder barrel. Aiya states that viscosity can affect the torque supplied by the extruder). Therefore, the results asserted by the Applicant would not have been unexpected to one having ordinary skill in the art because higher viscosity polymers (i.e., those with lower MFR values) are known to resist flow more than low viscosity polymers.
Applicant argues that a person having ordinary skill in the art would not be motivated to combine the prior art documents on the basis of reducing power consumption. However, 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). In this case, a person having ordinary skill in the art would be motivated to combine the prior art documents because it would have been obvious to do so, as described above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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