DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 29, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on June 29, 2026 has been fully considered. The amendment to instant claims 1 and 22 is acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
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.
4. Claims 1-8, 10-11, 18, 20, 22 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al (US 2013/0062096) in view of Yamazaki et al (US 6,284,374) and Reid (US 6,086,792), as evidenced by Hillmer (US 3,179,720) and Wieners et al (US 2003/0124344) only, or alternatively in further view of Hartman (UA 3,639,189).
5. Han et al discloses a strippable semiconductive shield comprising a composition comprising:
A) 20-80%wt (as to instant claim 3) of an interpolymer of an olefin and an α,β-unsaturated carbonyl comonomer, specifically ethylene-vinyl acetate copolymer ([0035]) having a melt index of 5-300 g/10 min [0035]);
C) 20-45%wt of carbon black (as to instant claims 7, 20, 22);
D) 0.1-5%wt of an antioxidant (as to instant claim 2);
E) 0.01-5%wt of an acid scavenger (Abstract, [0011]-[0015], as to instant claims 1 and 22);
F) a polyethylene wax ([0072]);
wherein the ethylene-vinyl acetate copolymer (EVA) is having vinyl acetate content of 10-45% ([0036], as to instant claim 5) and specifically exemplified EVA is a commercial product ELVAX having 33%wt of vinyl acetate and melt index 30 g/10 min (Table 1, as to instant claims 5-6).
6. As to instant claim 8, the carbon black has iodine absorption of 10-200 g/kg and oil absorption of 30-400 cc/100 g ([0047], the specifically exemplified carbon black has an iodine number of 43 mg/g (Table 2).
7. As to instant claim 10, all inventive examples are free from rubber, i.e. acrylonitrile rubber.
8. Though Han et al recites the polyethylene wax used as an additive in known amount ([0072]), Han et al does not specify that amount, and does not specify the claimed properties of said polyethylene wax.
9. However, Yamazaki et al discloses a strippable semiconductive composition comprising:
a) 50-99 pbw of ethylene-vinyl acetate copolymer (col. 3, lines 33-40);
b) 40 pbw of carbon black (col. 4, lines 31-37);
c) 0.1-5 pbw antioxidant (col. 4, lines 5-26) and further
d) 1-20 pbw of a hydrocarbon wax, including polyethylene copolymers with vinyl acetate or with ethyl acrylates (col. 3, lines 50-col. 4, lines 1-5), i.e. polyethylene copolymers, having molecular weight of less than 10,000, specifically exemplified polyethylene wax having molecular weight of 4000 and 2000 (col. 8, lines 5-10, 25-28, as to instant claims 1, 4, 22).
Based on the teachings of Yamazaki et al, it would have been obvious to a one of ordinary skill in the art to choose and use polyethylene copolymers having molecular weight of lower than 10,000, including 4000 and 2000, as the polyethylene wax component d) in the composition of Yamazaki et al, since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
10. Yamazaki et al teaches that the presence of said wax can lower viscosity of the semiconductive composition and improve moldability (col. 3, lines 55-58).
Since addition of 1-20 pbw of the polyethylene wax having molecular weight of 4000 or 2000 into the ethylene-vinyl acetate copolymer-based composition lowers viscosity of said composition, therefore, it would have been reasonably expected that such lowering of the viscosity would lead, at least to a minor extent, to easier and more thorough compounding of the components in shorter period of time, and thus to reducing energy consumption during compounding of the composition as well (as to instant claim 11).
Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Thus, Yamazaki et al explicitly teaches the use of polyethylene wax, including polyethylene copolymers, having molecular weight of less than 10,000 and as low as 2000, which value is well within the claimed range of 600-8000 g/mol as claimed in instant invention.
11. Though Yamazaki et al does not explicitly teach melt flow rate MFR2 of said polyethylene wax, since
i) the molecular weight of the polymer is inversely related to its melt index, as further evidenced by Hillmer (col. 1, lines 37-42);
ii) the claimed molecular weight of the polyethylene wax is as high as 8,000 and the claimed MFR2 is above 1200 g/10 min; i.e. the molecular weight of about 8000 at least corresponds to MFR2 of about 1200 g/10 min;
iii) the polyethylene wax of Yamazaki et al is having molecular weight of 2000, i.e. lower than 8000;
therefore, the polyethylene wax of Yamazaki et al will intrinsically and necessarily have MFR2 higher than that corresponding for the claimed molecular weight of 8000, and thus higher than 1200 g/10 min as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
12. Further, though Yamazaki et al does not explicitly teach the softening or melting point of the polyethylene wax, as evidenced by Wieners et al, the polyethylene waxes are low-molecular weight polymers having a mean molecular weight of 200-5000 and generally melting point of 70-150⁰C, preferably 80-100⁰C ([0023]).
Since the polyethylene waxes are having melting point in the range of 80-100⁰C, as shown by Wieners et al, therefore, the polyethylene wax of Yamazaki et al would be reasonably expected to have the melting point in the range of 70-150⁰C, or 80-100⁰C as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
13. Further, in the alternative, Hartman teaches the polyethylene wax that comprises a melt index of over 10,000, molecular weight of 1,900 and melting point of 92-94⁰C, comprising ester groups, i.e. being a polyethylene copolymer (col. 6, lines 40-45). That is, Hartman explicitly shows that the polyethylene wax having molecular weight of 1,900 is also having melt flow rate of as high as 10,000, and further melting point within the claimed range of 90-130⁰C.
14. Since both Yamazaki et al and Han et al are related to strippable semiconductive compositions, based on ethylene-vinyl acetate copolymers, carbon black and antioxidant, and thus belong to the same field of endeavor, wherein Yamazaki et al explicitly teaches said composition comprising polyethylene wax to reduce viscosity and improve moldability of the composition, and further Hartman explicitly teaches the polyethylene wax that comprises a melt index of over 10,000, molecular weight of 1,900 and melting point of 92-94⁰C, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Han et al and Yamazaki et al or further with Hartman, and to include, or obvious to try to include polyethylene copolymer wax having molecular weight of 4000 or 2000 of Yamazaki et al only, or in further combination with the polyethylene copolymer wax Hartman in amount as taught by Yamazaki et al into the composition of Han et al, so to further reduce the viscosity of the composition of Han et al and thus ensure thorough mixing of the components (especially since the composition of Han et al comprises as high as 45%wt of carbon black) in a shorter period of time, and improve moldability of said composition as well, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141.
15. All ranges in the composition of Han et al in view of Yamazaki et al only, or in further view of Hartman are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
16. Further, with respect to instant claims 1 and 22, since the ethylene-vinyl acetate copolymer of the composition of Han et al in view of Yamazaki et al only, or in further view of Hartman is having a melt index of 5-300 g/10 min [0035] of Han et al), specifically exemplified as 30 g/10 min (Table 1 of Han et al), and the MFR2 of the polyethylene wax is more than 1200 g/10min, specifically 10,000 g/10 min as taught by Hartman, therefore, the MFR2 of the ethylene-vinyl acetate copolymer will intrinsically and necessarily be less than MFR2 of the polyethylene wax. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
17. Though Han et al in view of Yamazaki et al only or in further view of Hartman do not recite the EVA polymer as being a high -pressure polymerized and of low density,
Reid et al discloses a semiconducting composition comprising an olefinic polymer and 25-40%wt of carbon black (Abstract), 0.01-10%wt of acid scavengers (col. 7, lines 29-33) and 0.1-5%wt of antioxidant (col. 7, lines 50-53) and polyethylene wax (col. 8, lines 5-10),
wherein Reid et al specifies the olefinic polymers being preferably ethylene-vinyl acetate copolymers (col. 4, lines 22-47) and wherein said polymers are produced by a high pressure process (col. 5, lines 10-15).
18. It is noted that instant specification defines the claimed “low density ethylene-vinyl acetate copolymer” as being produced by a high pressure process (p. 5, lines 12-15 and p.5, line 31-p. 6, line 7 of instant specification).
Therefore, the ethylene-vinyl acetate copolymer of Reid et al, produced by a high pressure process, appears to correspond to the “low density ethylene-vinyl acetate copolymer” of instant claim 22.
19. Since Reid et al and Han et al in view of Yamazaki et al only or in further view of Hartman are related to semiconductive compositions comprising EVA, carbon black, antioxidants, acid scavenger, polyethylene wax, and thus belong to the same field of endeavor, wherein Reid et al recites the used ethylene-vinyl acetate copolymer being produced by a high pressure process, i.e. being a low density polyolefin, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Han et al in view of Yamazaki et al only or in further view of Hartman and Reid et al and to include, or obvious to try to include, at least in a minor amount the high pressure/low density ethylene-vinyl acetate copolymer of Reid et al as the component A) in the composition of Han et al in view of Yamazaki et al only or in further view of Hartman, since it would have been obvious top choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141.
20. As to instant claims 1, 18, 22, since the composition of Han et al in view of Yamazaki et al and Reid et al only or in further view of Hartman is substantially the same as that claimed in instant invention, i.e. comprises the same components in the substantially the same amounts as claimed in instant invention, therefore, the composition of Han et al in view of Yamazaki et al and Reid et al only or in further view of Hartman will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including a strip force, having the values that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, including the strip force of 8 kN/m or more, or 10 kN/m. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
21. It is further noted that Han et al discloses the composition having the strip force of less than 24 pounds (10.9 kg) per half inch (1.3 cm) ([0021]).
Given i) the strip force is 10.8 kg per 1.3 cm, i.e. 8.3 kg/cm and
ii) 1kN/m equal to 1.02 kg/cm, as shown below,
therefore, the 8.3 kg/cm will be equal to 8.14 kN/m.
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22. Thus, even the exemplified compositions of Han et al are having a strip force of more than 8 kN/m; and since the compositions of Han et al in view of Yamazaki et al and Reid et al only or in further view of Hartman are substantially the same as that claimed in instant invention, i.re. comprise the same components in the same amounts as claimed in instant invention, therefore, the composition of Han et al in view of Yamazaki et al and Reid et al only or in further view of Hartman will intrinsically and necessarily comprise, or would be reasonably expected to comprise a strip force of 8 kN/m or more, or 10 kN/m. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
23. It is further noted that instant specification does not provide any examples showing strip force values of the compositions; neither more than 8 kN/m nor less than 8 kN/m.
24. Claims 1-8, 10-11, 18, 20, 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sarma (US 6,299,978) in view of Yamazaki et al (US 6,284,374) and Reid (US 6,086,792), as evidenced by Hillmer (US 3,179,720) and Wieners et al (US 2003/0124344) only, or alternatively in further view of Hartman (UA 3,639,189).
25. Sarma discloses a semiconductive composition comprising:
a) a polymeric component of a blend of 0-99%wt of a polyolefin comprising ethylene-vinyl acetate copolymer and 1-100%wt of ethylene/vinyl acetate (vinyl alcohol) terpolymer;
b) carbon black;
c) an antioxidant (Abstract).
26. Specifically exemplified compositions comprise (Table 1):
a) 56.8-62.6%wt (as to instant claim 3) of ethylene-vinyl acetate copolymer having 18-20%wt of vinyl acetate (col. 4, lines 23-25, as to instant claim 5) and MFR of 25 (col. 4, lines 25-26, as to instant claim 6);
b) 32%wt of carbon black (as to instant claims 1, 7, 20);
c) 0.5%wt of an antioxidant (as to instant claim 2) and
d) 3%wt of polyethylene wax (Table 1).
Since Sarma discloses addition of the polyethylene wax to the ethylene-vinyl acetate copolymer-based composition as disclosed and claimed in instant invention, therefore, said polyethylene wax would have been reasonably expected at least to a minor extent, to lead to easier and more thorough compounding of the components in shorter period of time, and thus to reducing energy consumption during compounding of the composition as well (as to instant claim 11). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
27. As to instant claim 10, the compositions of Sarma are silent with respect to presence of rubber.
28. Though Sarma exemplifies the presence of 3%wt of polyethylene wax, Sarma does not disclose the composition comprising 5%wt or 7%wt or more of polyethylene wax including a low density polyethylene wax, having the claimed properties.
29. However, Yamazaki et al discloses a strippable semiconductive composition comprising:
a) 50-99 pbw of ethylene-vinyl acetate copolymer (col. 3, lines 33-40);
b) 40 pbw of carbon black (col. 4, lines 31-37);
c) 0.1-5 pbw antioxidant (col. 4, lines 5-26) and further
d) 1-20 pbw of a hydrocarbon wax, including polyethylene copolymers with vinyl acetate or with ethyl acrylates (col. 3, lines 50-col. 4, lines 1-5), i.e. polyethylene copolymers, having molecular weight of less than 10,000, specifically exemplified polyethylene wax having molecular weight of 4000 and 2000 (col. 8, lines 5-10, 25-28, as to instant claims 1, 4, 22).
Based on the teachings of Yamazaki et al, it would have been obvious to a one of ordinary skill in the art to choose and use polyethylene copolymers having molecular weight of lower than 10,000, including 4000 and 2000, as the polyethylene wax component d) in the composition of Yamazaki et al, since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
30. Yamazaki et al teaches that the presence of said wax can lower viscosity of the semiconductive composition and improve moldability (col. 3, lines 55-58).
Since addition of 1-20 pbw of the polyethylene wax having molecular weight of 4000 or 2000 into the ethylene-vinyl acetate copolymer-based composition lowers viscosity of said composition, therefore, it would have been reasonably expected that such lowering of the viscosity will lead, at least to a minor extent, to easier and more thorough compounding of the components in shorter period of time, and thus to reducing energy consumption during compounding of the composition as well (as to instant claim 11).
Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Thus, Yamazaki et al explicitly teaches the use of polyethylene wax, including polyethylene copolymers, having molecular weight of less than 10,000 and as low as 2000, which value is well within the claimed range of 600-8000 g/mol as claimed in instant invention.
31. Though Yamazaki et al does not explicitly teach melt flow rate MFR2 of said polyethylene wax, since
i) the molecular weight of the polymer is inversely related to its melt index, as further evidenced by Hillmer (col. 1, lines 37-42);
ii) the claimed molecular weight of the polyethylene wax is as high as 8,000 and the claimed MFR2 is above 1200 g/10 min; i.e. the molecular weight of about 8000 at least corresponds to MFR2 of about 1200 g/10 min;
iii) the polyethylene wax of Yamazaki et al is having molecular weight of 2000, i.e. lower than 8000;
therefore, the polyethylene wax of Yamazaki et al will intrinsically and necessarily have MFR2 higher than that corresponding for the claimed molecular weight of 8000, and thus higher than 1200 g/10 min as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
32. Further, though Yamazaki et al does not explicitly teach the softening or melting point of the polyethylene wax, as evidenced by Wieners et al, the polyethylene waxes are low-molecular weight polymers having a mean molecular weight of 200-5000 and generally melting point of 70-150⁰C, preferably 80-100⁰C ([0023]).
Since the polyethylene waves are having melting point in the range of 80-100⁰C, as shown by Wieners et al, therefore, the polyethylene wax of Yamazaki et al would be reasonably expected to have the melting point in the range of 70-150⁰C, or 80-100⁰C as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
33. Further, in the alternative, Hartman teaches the polyethylene wax that comprises a melt index of over 10,000, molecular weight of 1,900 and melting point of 92-94⁰C, comprising ester groups, i.e. being a polyethylene copolymer (col. 6, lines 40-45). That is, Hartman explicitly shows that the polyethylene wax having molecular weight of 1,900 is also having melt flow rate of as high as 10,000, and further melting point within the claimed range of 90-130⁰C.
34. Since both Yamazaki et al and Sarma are related to semiconductive compositions, based on ethylene-vinyl acetate copolymers, carbon black, polyethylene wax and antioxidant, and thus belong to the same field of endeavor, wherein Yamazaki et al explicitly teaches said composition comprising polyethylene wax to reduce viscosity and improve moldability of the composition, and further Hartman explicitly teaches the polyethylene wax that comprises a melt index of over 10,000, molecular weight of 1,900 and melting point of 92-94⁰C, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sarma and Yamazaki et al or further with Hartman, and to include, or obvious to try to include polyethylene copolymer wax having molecular weight of 4000 or 2000 of Yamazaki et al only, or in further combination with the polyethylene copolymer wax of Hartman in amount as taught by Yamazaki et al into the composition of Sarma, so to further reduce the viscosity of the composition of Sarma and thus ensure thorough mixing of the components (especially since the composition of Sarma comprises as high as 32%wt of carbon black) in a shorter period of time, and improve moldability of said composition as well, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141.
35. All ranges in the composition of Han et al in view of Yamazaki et al only, or in further view of Hartman are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
36. Further, with respect to instant claims 1 and 22, since the ethylene-vinyl acetate copolymer of the composition of Sarma in view of Yamazaki et al only, or in further view of Hartman is having a melt index of 25 g/10 min (col. 4, lines 25-26 of Sarma), and the MFR2 of the polyethylene wax is more than 1200 g/10min, specifically 10,000 g/10 min as taught by Hartman, therefore, the MFR2 of the ethylene-vinyl acetate copolymer will intrinsically and necessarily be less than MFR2 of the polyethylene wax. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
37. Sarma in view of Yamazaki et al only or in further view of Hartman do not recite the EVA polymer as being a high -pressure polymerized and of low density, the composition comprising 0.1-5%wt of an acid scavenger, and do not recite iodine number of carbon black.
38. However, Reid et al discloses a semiconducting composition comprising an olefinic polymer and 25-40%wt of carbon black (Abstract), 0.01-10%wt of acid scavengers (col. 7, lines 29-33) and 0.1-5%wt of antioxidant (col. 7, lines 50-53) and polyethylene wax (col. 8, lines 5-10), the carbon black having iodine absorption number of 30-300 mg/g (col. 6, lines 44-47, as to instant claim 8),
wherein Reid et al specifies the olefinic polymers being preferably ethylene-vinyl acetate copolymers (col. 4, lines 22-47) and wherein said polymers are produced by a high pressure process (col. 5, lines 10-15).
It is noted that instant specification defines the claimed “low density ethylene-vinyl acetate copolymer” as being produced by a high pressure process (p. 5, lines 12-15 and p.5, line 31-p. 6, line 7 of instant specification).
Therefore, the ethylene-vinyl acetate copolymer of Reid et al, produced by the high pressure process, appears to correspond to the “low density ethylene-vinyl acetate copolymer” of instant claim 22.
39. Since Reid et al and Sarma in view of Yamazaki et al only or in further view of Hartman are related to semiconductive compositions comprising EVA, carbon black, antioxidants, polyethylene wax, and thus belong to the same field of endeavor, wherein Reid et al recites the used ethylene-vinyl acetate copolymer being produced by a high pressure process, i.e. being a low density polyolefin, and further the composition comprising an acid scavenger and carbon black having an iodine absorption number of 30-300 mg/g, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Sarma in view of Yamazaki et al only or in further view of Hartman and Reid et al and to include, or obvious to try to include, at least in a minor amount the high pressure/low density ethylene-vinyl acetate copolymer of Reid et al as the component a) in the composition of Sarma in view of Yamazaki et al only or in further view of Hartman, and to further include at least in a minor amount an acid scavenger and carbon black having an iodine absorption number of 30-300 mg/g in the composition of Sarma, since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141.
40. As to instant claims 1, 18, 22, since the composition of Sarma in view of Yamazaki et al and Reid et al only or in further view of Hartman is substantially the same as that claimed in instant invention, i.e. comprises the same components in substantially the same amounts as claimed in instant invention, therefore, the composition of Sarma in view of Yamazaki et al and Reid et al only or in further view of Hartman will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including a strip force, having the values that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, including the strip force of 8 kN/m or more, or 10 kN/m. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
41. It is further noted that instant specification does not provide any examples showing strip force values of the compositions; neither more than 8 kN/m nor less than 8 kN/m.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
42. Claims 1-8, 10-11, 18, 20, 22 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,234,349 in view of Yamazaki et al (US 6,284,374) and Reid et al (US 6,086,792), as evidenced by Wieners et al (US 2003/0124344).
43. The rejection is adequately set forth on pages 10-15 of an Office action mailed on November 3, 2025 and is incorporated here by reference.
44. With respect to the amended claims 1, 22, U.S. Patent No. 12,234,349 discloses the use of 3-8%wt of ethylene-vinyl acetate copolymer wax, i.e. polyethylene wax, having molecular weight of 800-12000 g/mol. As evidenced by Wieners et al, the polyethylene waxes are low-molecular weight polymers having a mean molecular weight of 200-5000 and generally melting point of 70-150⁰C, preferably 80-100⁰C ([0023]). Further, since molecular weight of the polymer is inversely related to its melt flow rate, therefore, the polyethylene wax having molecular weight of as low as 800 (which is value is very close to the lower limit for molecular weight of the claimed polyethylene wax), therefore, the polyethylene wax of US 12,234,349 will intrinsically and necessarily have a melt flow rate of more than 1200 g/10 min as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Further, since the composition of U.S. Patent No. 12,234,349 in view of Yamazaki et al and Reid et al is substantially the same as that claimed in instant invention, i.e. comprises the same components in the same amounts as claimed in instant invention, therefore, the composition of U.S. Patent No. 12,234,349 in view of Yamazaki et al and Reid et al will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including a strip force, having the values that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, including the strip force of 8 kN/m or more, or 10 kN/m. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
45. Since no Terminal Disclaimer has been filed, the rejection is maintained.
In response to Applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Response to Arguments
46. Applicant's arguments filed on June 29, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
47. It is further noted that,
1) since the composition of Han et al in view of Yamazaki et al and Reid et al only or in further view of Hartman is substantially the same as that claimed in instant invention, i.e. comprises the same components in the same amounts as claimed in instant invention, therefore, the composition of Han et al in view of Yamazaki et al and Reid et al only or in further view of Hartman will intrinsically and necessarily comprise, or would be reasonably expected to comprise the properties, including a strip force, having the values that are either the same as those claimed in instant invention, or having values in the ranges overlapping with those as claimed in instant invention as well, including the strip force of 8 kN/m or more, or 10 kN/m. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01. There is no evidence that addition of polyethylene wax to the composition of Han et al will reduce the strip force of the composition, especially since both Han et al and Yamazaki et al are related to strippable semiconductive compositions and both Han et al and Yamazaki et al explicitly teach that the polyethylene wax can be present in these compositions.
2) It is further noted that rationale to combine references different from applicant is permissible. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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