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 .
This communication responds to the amended claim set and the response to non-final rejection filed 09/10/2024. Claims 1-2, 5-7, 9-11 are current pending. Claims 3-4, 8 and 12-15 are canceled.
The 35 USC 103 rejections dated 08/12/2025 are MAINTAINED. Thus, the following action is properly made final.
Specification
The amendment of the specification in response to the objection to drawings dated 08/12/2025 is accepted.
Claim Interpretation
The newly inserted “for a sheath layer of a high-voltage outdoor power cable” of the preamble recites the purpose or intended use of the claimed polyolefin resin composition which is not considered a limitation of and is of no significance to claim construction. ( see MPEP 2111.02(II)).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the ethylene content in the resin component (A-1). Applicant’s Remarks filed 09/10/2025 page 9, 2nd paragraph states that “ethylene content in the
resin component (A-1 ), as claimed, is required for excellent thermal resistance, along with enhanced tracking resistance and power transmission capacity.” However, instant Claim 1 claims the ethylene content in component (A-1) is 0 to 2.5%. The ethylene content being 0% conflicts with Applicant’s statement that the ethylene content is required.
Claims 2, 5-7 and 9-11 are rejected under 35 U.S.C. 112(b) for being depended from Claim 1.
Claim Rejections - 35 USC§ 103
Claims 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN109796674A; machine English translation provided herewith) in view of Machl (EP2202271Al).
Regarding claim 1, Zhang teaches a composition for electrical sheath having, by weight, 80-100
parts of polypropylene, 15-25 parts of thermoplastic ethylene propylene rubber, 10-20 parts of polyimide,
8-15 parts of polypropylene fiber, 10-15 parts of aluminum hydroxide, 3-5 parts of modified magnesium
hydrate, 5-8 parts of modified silica powder, 1-3 parts of carbon black, 0.5-1 part of a stabilizer and 0.1-
0.5 part of an antioxygen (ab). Zhang further teaches that polypropylene and ethylene propylene rubber
are mixed to obtain a mixed base (lns120-123), therefore, the mixed polypropylene and ethylene propylene rubber read on a base resin, and polypropylene is from 76 wt.% to 87 wt.% of the total weight of the base resin (80/(80+25)*100 to 100/(100+15)*100); ethylene propylene rubber is 13 wt.% to 24 wt.% of the total weight of the base resin. The amount of hydrated metal compounds is from 10 parts to 21 parts relative to 100 parts of the base resin (13/(100+25)*100 to 20/95*100). The amount of carbon black is from 0.8 parts to 3 parts relative to 100 parts of the base resin (1/125*100 to 3/95*100). Zhang further teaches that the hydrated metal compounds are aluminum hydroxide and hydrated magnesium. Additionally, Zhang does not disclose the composition is crosslinked.
The difference between Zhang and instant Claim 1 is that Zhang is silent on the Tm and melt index of the base resin.
However, Machl teaches an electric cable made from a composite of a propylene copolymer and
an ethylene-propylene rubber ([0001]. claim 1, Sample CE1, Sample CE2 and Sample IE1). Machl further teaches the composite has MFR (2.16 kg/230°C) in the range of 0.005 to 4.5 g/1 0min ( claim 11)
and exemplifies the composite has a Tm of 148°C (CE2 and IE1). Machl furthermore teaches the composite has excellent mechanical properties, such as flexural modulus, tensile modulus, tensile strength, notched impact strength RT and notched impact strength at -20°C.
One ordinary skilled artisan would have been motivated, before the effective filing date of instant
application, to make the base resin of Zhang having the Tm and the MI taught by Machl because Machl
teaches the base rein having such Tm and MI is suitable for making electric cable and has good mechanical properties.
Regarding Claim 2, Zhang teaches mixing polypropylene and ethylene propylene rubber (lns120-
123).
Regarding Claim 5, as discussed in Claim 1 above, Zhang in view of Machl teach the base resin
having a Tm of 148°C.
Regarding Claim 6, as discussed in Claim 1 above, Zhang in view of Machl teach the base resin
having a melt index of in the range of 0.005 to 4.5 g/l0min, overlapping with the claimed 0.8 to 5.0 g/10
minutes. It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to have selected the overlapping portion of the range taught by Zhang in view of
Machl.
Regarding Claim 7, the when clause directs to an optional limitation, therefore, the intrinsic
viscosity is not addressed herein.
Regarding Claim 10, Zhang teaches that the composition comprising a stabilizer and an
antioxidant (ab.).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Machl, as
applied to Claim 1 above, and in further view of Huang (CN108586859 A).
The disclosure of Zhang in view of Machl has been discussed above. Zhang in view of Machl
teaches the composition comprising carbon black but is silent on the type of carbon black.
However, Huang teaches a composition for cable sheath comprising furnace carbon black (ab.).
Huang further teaches that the cable sheath can adapt to harsh environments (lns41-47). In view of such
benefit, one ordinary skilled artisan would have been motivated before the effective filing date of instant
application to utilize furnace carbon black in the composition of Zhang in view of Machl because Zhang in view of Machl concerns to make a cable sheath for severe environments (ab.) and Huang teaches that
furnace carbon black is suitable for a composition to making a cable sheath for severe environments.
Claims 1-8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al.
(US2015/0122529 Al) in view of Zhang (CN109796674A).
Regarding Claim 1, Han teaches a polymeric coating composition for power delivery products
([0003]) comprising a blend of an a-olefin polymer and an a-olefin block composite (claim 1), wherein
each of the a-olefin polymer and the a-olefin block composite is 30 to 70 wt.% of the combined weight of
the a-olefin polymer and the a-olefin block composite (claim 8), thereby the wt% of the a-olefin polymer
overlapping with the claimed 60 to 90 wt.% of base resin and the wt% of the a-olefin block composite
overlapping with the claimed 10 to 40 wt.% of base resin. Han further teaches the a-olefin polymer can be
a polypropylene ([0024]) and the a-olefin block composite is a copolymer of ethylene-propylene (claim
2). Han furthermore teaches the composition may include aluminum trihydroxide, magnesium hydroxide,
and carbon blacks ([0040]). Moreover, Han teaches the polypropylene has a Tm in the range of 150°C to
170°C and has melt index from 0.1 g/l0min to 20 g/l0min ([0024]). Although Han discloses that the melt
index is measured under 190° C./2.16 kg, one ordinary skilled artisan would reasonably infer the melt
index would overlap with the claimed 0.5 to 6.0 g/ l0min (230°C/2.16kg). Additionally, Han teaches that
the a-olefin block composite has a Tm greater than 125°C and melt index in the range of 0.1 to 30
g/l0min ([0037]). Because Han discloses the a-olefin polymer and the a-olefin block composite each has
a Tm and a melt index falling within or overlapping with the claimed respective Tm and melt index
ranges, the blend of the a-olefin polymer and the a-olefin block composite has a Tm and a melt index
overlapping with the claimed respective ranges.
The difference between Han and instant Claim 1 that Han does not explicitly teach the amounts of
hydrated metal compound and carbon black.
However, as discussed at para.8, Zhang teaches a composition for electrical sheath comprising 10
parts to 21 parts hydrated metal compounds relative to 100 parts base resin and 0.8 parts to 3 parts carbon black relative to 100 parts base resin. Zhang further teaches the composition has good impact resistance
and can be used for severe environments. In view of such benefits, one ordinary skilled artisan would
have been motivated, before the effective filing date of instant application, to utilized the amounts taught
by Zhang for the composition of Han to obtain a modified composition with the desirable properties.
Although Han discloses that the coating composition can be cross-linked following extrusion, the composition is not crosslinked until after extrusion, therefore, Han in view of Zhang discloses a non-crosslinked polyolefin resin composition. “Where the products produced by the reference process are neither transitory nor ephemeral but are by nature tangible and permanent pending the subsequent treatment to which they are subjected, Held that such products, though intermediate, in the reference, are anticipatory of the product defined by the claims on appeal.” Ex parte Brinton, 82 USPQ 112.
Regarding Claim 2, Han teaches the composition is prepared by blending the a-olefin polymer
and the a-olefin block composite ([0039]).
Regarding claims 3-4, the a-olefin block composite is an ethylene-propylene copolymer.
Regarding Claim 5, as discussed above, Han teaches that the polypropylene has a Tm in the range
of 150°C to 170°C and the a-olefin block composite has a Tm greater than 125°C, as such one ordinary
skilled artisan would reasonably infer that the polymer blend would have a Tm overlapping the 148 to
155°c.
Regarding Claim 6, as discussed above, Han teaches the a-olefin polymer and the a-olefin block
composite each has a melt index overlapping with the claimed melt index range, therefore, the blend of
the a-olefin polymer and the a-olefin block composite has a melt index overlapping with the claimed melt
index range.
Regarding Claim 7, the when clause directs to optional limitation, therefore, the intrinsic viscosity
is not addressed herein.
Regarding Claims 10-11, Han teaches the polymeric coating composition comprising an antioxidant ([0041]) and exemplifies the antioxidant is used at about 1 part per 100 parts of the blend of the a-olefin polymer and the a-olefin block composite (Table 3 and Table 4).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Han in view of Zhang, as
applied to claim 1 at para.10, and in further view of Iruya et al. (US9,711,257 B2).
The disclosure of Han in view of Zhang has been discussed above. Han in view of Zhang teaches
a modified composition for delivery products comprising carbon black but silent on the types of carbon
black.
However, lruya teaches a composition for coating electric wire (2:34-38), wherein the
composition comprising resins a-c (ab.), flame retardant (d), for example, aluminum hydroxide and/or
magnesium hydroxide (9: 65-10: 3), in the amount of 0.1 to 30 parts per 100 parts of the resins a-c (10:
55-60), and carbon black in the amount of 1 to 50 parts per 100 parts of the reins a-c (12: 40-50). lruya
further teaches that carbon black can be furnace black, acetylene black, thermal black, or channel black
(12: 36-40).
One ordinary skilled artisan would have been motivated to utilize furnace black, acetylene black,
thermal black, or channel black for the carbon black in the modified composition of Han in view of
Zhang because lruya teaches that furnace black, acetylene black, thermal black, or channel black is
suitable for a composition comprising base resin, aluminum hydroxide and/or magnesium hydroxide and
carbon black.
Response to Arguments
Applicant's arguments filed 09/10/2025 have been fully considered but they are not persuasive.
Applicant’s argument: Zhang fails to teach a polyolefin resin composition that is for a sheath layer of a high-voltage outdoor power cable.
Examiner’s answer: “for a sheath layer of a high-voltage outdoor power cable” of the preamble recites the purpose or intended use of the claimed polyolefin resin composition which is not considered a limitation of and is of no significance to claim construction. ( see MPEP 2111.02(II)).
Applicant’s argument: the teachings of Machi are non-analogous to the teachings of Zhang (p9 last paragraph). Zhang is directed to providing an electric power sheathed tube whereas Machi is directed to providing an insulation layer. As a result, Zhang and Machi are totally different from each other in terms of the applications of the compositions (p10, 1st paragraph).
Examiner’s answer: Machi teaches the composition can be used for a sheath layer. “The cable can be prepared by known methods. Preferably, the cable layer comprising the heterophasic polymer
composition as defined above, is applied onto the conductor and/or another cable layer by extrusion.([0074])” “applied onto another cable layer” indicates the composition can be applied as a sheath layer. Machi further teaches “ [P]referably, the cable comprises an insulation layer, a semiconductive layer ("semicon") and/or a jacketing layer as coating layers. Preferably, at least the insulation layer comprises the heterophasic polymer composition as defined above. ([0075])” The paragraph implies that the composition can be made into a jacketing layer, i.e. sheath layer. In addition, Machi teaches the composition has excellent notched impact strength at 23 °C and -20 °C ([0091] and Table 1), which is reasonably pertinent to solve Zhang’s problem, -to prepare electric sheath tube with good impact resistance and cold resistance. “Same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art (See MPEP 2141.01 (a) I).
As to Applicant’s concern that the composition of Machi is soft, Zhang teaches that the composition contain a large amount of carbon black which improves the toughness of polypropylene (lns60-75).
.
Applicant’s argument: one skilled in the art would not pick and choose amongst teachings of Zhang and Machi to arrive at the claimed invention because each components of Zhang and Machi are essential for achieving the respective objects of Zhang and Machi (page 10 2nd and third paragraphs)
Examiner’s answer: The rejection was not based on picking and choosing Zhang and Machi’s components. Machi supplements the silent properties of a component of Zhang.
Applicant’s argument: The argument of the paragraph from bottom of p10 to top of p11 seems argued that the α-olefin block composite of Han is not a conventional, random copolymer.
Examiner’s answer: The instant Claim 1 does not claim the (A-2) copolymer being a random copolymer.
Applicant’s argument: an intermediate cable extruded from the composition of Han is
subjected to cross-linking in the presence of a cross-linking catalyst which instant claim 1 claims a non-crosslinking resin composition.
Examiner’s answer: as discussed above Han discloses the composition is not crosslinked until after extrusion. “Where the products produced by the reference process are neither transitory nor ephemeral but are by nature tangible and permanent pending the subsequent treatment to which they are subjected, Held that such products, though intermediate, in the reference, are anticipatory of the product defined by the claims on appeal.” Ex parte Brinton, 82 USPQ 112.
Applicant’s argument: because Han and Zhang differ from each other in terms of the basic components of the composition, there is no technical basis for a person of ordinary skill in the art to combine Han and Zhang to reach the claimed invention.
Examiner’s answer: the reasons of combining Han and Zhang have been set forth 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 HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763