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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 15, 2025 has been entered.
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed June 18, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view of Brigandi and Culligan (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant alleges that the secondary reference Culligan essentially requires the inclusion of talc in addition to carbon black and provides experimental data using a composition without talc as a control. However, Culligan is only relied upon for its teaching with regard to base resins known within the art for semiconductive resin compositions. It is the position of the Office that substitution of the base resin of Brigandi as motivated by Culligan would not require importing all of the recited components (i.e., talc) of Culligan. Furthermore, even if, arguendo, the required talc of Culligan was necessarily imported to the composition of Brigandi, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (see MPEP 2111.03 III). The instant claims recite a carbon black component, which Culligan contemplates as a filler component alongside talc (see [0031] of Culligan). While not recited within the claim, additional filler recognized within the art as suitable for the same purpose as the claimed carbon black would not appear to materially affect the basic and novel characteristics of the claimed invention and is therefore not interpreted to be excluded by the transitional phrase “consisting essentially of.”
Applicant argues that the claimed range of bulk density of the carbon black component results in excellent volume resistivity even at high temperatures. It is noted that “whether the 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” (see MPEP 716.02(d)). In this instant case, it would appear that the claimed composition is not commensurate in scope with the examples provided within the specification. Specifically, Examples 1, 2, 3, and Comparative Example 1 represent a semi-conductive resin composition with a single species for each of a base resin (of a single molecular weight), a phenol-based compound, a thioether-based compound, a metal stearate, and a crosslinking agent, while claim 1 recites broader genera for the same components. Furthermore, “[t]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960)” (see MPEP 716.02(d) III). The examples presented provide data for densities of 306 kg/m3, 325 395 kg/m3, 375 kg/m3, and 395 kg/m3, which does not establish that the results occur over the entire claimed range (i.e., below 306 kg/m3 to 220 kg/m3) and also does not test outside of the lower claimed range.
Applicant’s arguments and amendments are considered fully responded to within the remarks above and the rejections 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 4, and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Brigandi (US20180298205, hereinafter referred to as “Brigandi”) in view of Culligan (US20140079952, hereinafter referred to as “Culligan”).
As to Claim 1: Brigandi teaches a cable comprising a semiconductive shield layer made from a composition comprising ethylene vinyl acetate (EVA) (i.e., a single base resin according to the instant specification para. [0006]) (Abstract and [0005]), a phenolic antioxidant (i.e., a phenol-based compound) ([0005]), 4,4’-thiobis(3-methyl-6-tert butylphenol) ([0052]), which reads on the claimed thioether-based compound, stearic acid and metal salts thereof (i.e., metal stearate) ([0058]-[0059]), and a crosslinking agent ([0054]). Brigandi further teaches that the composition comprises carbon black having a density of 0.3 to 0.6 g/mL (1 kg/m3 = 0.001 g/mL) (Abstract), which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Brigandi suggests, that the overlapping portion is a useable range for the density of a carbon black component for a semiconductive resin composition with properties amenable for application in electrical wires or cables (Abstract and ([0027]). Brigandi further teaches that the composition may comprise processing aids ([0059]).
Brigandi does not teach that the single base resin is ethylene butyl acrylate or ethylene ethyl acetate.
Culligan teaches a related semiconducting composition for electric power cables comprising a base polymer which may be ethylene vinyl acetate copolymers ([0012]) (such as that of Brigandi), and further teaches that the base polymer may be selected from any suitable member of the group consisting of ethylene vinyl acetate copolymers and ethylene alkyl acrylate copolymers wherein the alkyl group is selected from C1 to C6 hydrocarbon ([0020]), thus including the claimed ethylene butyl acrylate. Brigandi and Culligan are considered analogous art because they are directed towards the same field of endeavor, namely semiconductive compositions for electrical cable or wire applications. Based on the disclosure of Culligan, a person having ordinary skill in the art would recognize that ethylene vinyl acetate copolymers and ethylene alkyl acrylate copolymers including the claimed ethylene butyl acrylate copolymer are both known base resins within the art of strippable semiconducting shield compositions. Accordingly, based on this disclosure of Culligan, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the ethylene vinyl acetate of Brigandi with at least the claimed ethylene butyl acrylate (see MPEP 2144.06 II). Substituting said ethylene butyl acrylate resin for the ethylene vinyl acetate of Brigandi in such a manner would therefore read on the claimed single resin as Brigandi only requires a single species of a base resin.
Regarding the recited transitional phrase “consisting essentially of,” the Office recognizes that Brigandi teaches an EVA base resin as a required component. However, based on this substitution of this component as motivated by Culligan (see above), Brigandi as modified by Culligan is found to meet the claimed limitation of the semi-conductive resin composition for a cable consisting essentially of at least a single base resin that is ethylene butyl acrylate. Additionally, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention (see MPEP 2111.03 III). It is noted that the instant specification teaches that the base resin may optionally include one or two or more selected from the group consisting of, inter alia, ethylene vinyl acetate ([0006] of the instant specification).
Regarding the recited transitional phrase “consisting essentially of,” the Office recognizes that Brigandi teaches an acrylonitrile butadiene rubber (NBR) as a required component. However, Culligan notes that, while strippable shield formations formed from blends of EVA and nitrile rubbers are well known within the art, said blends exhibit the problem of necessitating high vinyl acetate content to achieve sufficient adhesion properties ([0005] of Culligan). Furthermore, Culligan also utilizes a single base polymer which may be, inter alia, ethylene acrylate copolymers wherein the alkyl group is selected from C1 to C6, which includes the claimed ethylene butyl acrylate ([0020]). Culligan teaches that elimination of nitrile rubber/EVA blends in favor of a single base resin (e.g., an ethylene acrylate copolymer) is suitable for forming strippable semiconducting shield compositions despite noting that nitrile/EVA blends are commonly used within the art. Therefore, it is the position of the Office that Culligan would motivate a person having ordinary skill in the art to eliminate NBR from a strippable semiconducting shield composition based on the teaching that said blends of nitrile/EVA exhibit the problem of necessitating high vinyl acetate content to achieve sufficient adhesion properties ([0005] of Culligan) and also because Culligan teaches that the use of only a single resin (e.g., EVA and alternatively any single resin chosen from those recited in [0020] of Culligan) without NBR does not render the composition unsatisfactory for its intended purpose of forming semiconductive shield compositions (see exemplary compositions of Culligan, [0054]).
As to Claim 3: Brigandi and Culligan teach the composition of claim 1 (supra).
Brigandi is silent towards the molecular weight of the single base resin.
Culligan teaches a related semiconducting composition for electric power cables comprising a base polymer which may be ethylene vinyl acetate copolymers ([0012]) (such as that of Brigandi), and further teaches that the base polymer may be selected from any suitable member of the group consisting of ethylene vinyl acetate copolymers and ethylene alkyl acrylate copolymers wherein the alkyl group is selected from C1 to C6 hydrocarbon ([0020]), thus including the claimed ethylene butyl acrylate. Culligan further teaches that it is known within the art of semiconductive compositions for electrical wire applications to use a main polymer component (i.e., a base resin) having a weight average molecular weight of not less than 300,000 g/mol ([0007]), which overlaps with the claimed range. Brigandi and Culligan are considered analogous art because they are directed towards the same field of endeavor, namely semiconductive compositions for electrical cable or wire applications. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to choose a molecular weight within the claimed range, at least not less than 300,000 g/mol, such as that taught by Culligan, for the base resin copolymer of Brigandi, and the motivation would have been that Culligan teaches that this range is known within the art as a useable molecular weight for base polymer/resin systems for having properties amenable to semiconductive compositions for cables/wires. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I).
As to Claim 4: Brigandi and Culligan teach the composition of claim 1 (supra).
Brigandi further teaches that the composition may comprise a phenolic antioxidant (i.e., a phenol-based compound) ([0005]), wherein said phenolic antioxidant may be, inter alia, 4,4′-thiobis(2-tert-butyl-5-methylphenol) ([0052]).
As to Claim 6: Brigandi and Culligan teach the composition of claim 1 (supra).
Brigandi further teaches that the crosslinking agent may be, inter alia, α,α-di[(t-butylperoxy)-isopropyl]-benzene, 1,1-di(t-butylperoxy)-3,3,5-trimethylcyclohexane, and dicumyl peroxide ([0055]-[0056]).
As to Claim 7: Brigandi and Culligan teach the composition of claim 1 (supra).
Brigandi teaches that the composition may comprise stearic acid and metal salts thereof (i.e., metal stearate) ([0058]-[0059]), but is silent towards the identity of said stearic acid and metal salts thereof.
Culligan teaches a related semiconducting composition for electric power cables comprising a base polymer which may be ethylene vinyl acetate copolymers ([0012]) further comprising stearic acids which may be zinc stearate or calcium stearate ([0032]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize a metal stearate, such as zinc stearate or calcium stearate, as the metal salt of a stearic acid as taught by Brigandi because Culligan teaches that zinc stearate and calcium stearate are known within the art as useful metal stearic acids within semiconducting compositions for electrical cables/wires as processing aids ([0032]).
As to Claim 8: Brigandi and Culligan teach the composition of claim 1 (supra).
Brigandi does not teach a value for the volume resistance at 135 ˚C.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (see para. [0016] of the instant specification). Therefore, the claimed effects and physical properties, i.e. volume resistance, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Brigandi (US20180298205, hereinafter referred to as “Brigandi”) in view of Culligan (US20140079952, hereinafter referred to as “Culligan”) and further in view of Lee et al. (KR100786140, English translation provided for citations, hereinafter referred to as “Lee”).
As to Claim 5: Brigandi and Culligan teach the composition of claim 1 (see above).
Brigandi teaches that the composition may comprise 4,4’-thiobis(3-methyl-6-tert butylphenol) ([0052]), (i.e., a thioether-based compound), but is silent towards a thio-ether based compound within the claimed group.
Lee teaches a related semiconductive resin composition for high-voltage cables (pg. 1, lines 17-20) comprising an antioxidant which may be dilauryl thiodipropionate (pg. 4, lines 1-10). Brigandi and Lee are considered analogous art because they are directed towards the same field of endeavor, namely semiconductive resin composition for electrical wire/cable applications. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the claimed dilauryl thiodipropionate in addition to or as an alternative to the thioether-based antioxidants taught by Brigandi and the motivation would have been that dilauryl thiodipropionate is a known antioxidant additive for semiconductive resin compositions for electrical cable/wire applications (pg. 4, lines 1-10 of Lee) useful for the same purpose of preventing oxidation as thioether-based components included in the composition of Brigandi (see [0052] of Brigandi).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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