DETAILED ACTION
This Office Action is in response to the Amendment filed on 6/24/2026.
Claim(s) 1-20 are pending in the application.
Claim(s) 15-18, and 20 are withdrawn due to a previous restriction requirement.
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 recites the limitation " a DC conductivity … plaque sample consisting of the polymer" in the last line. There is insufficient antecedent basis for this limitation in the claim and therefore the scope of the claim is unclear. Additionally, it is unclear if “the polymer” is the same or different as the multimodal polyethylene composition. For purposes of examination, the claim will be interpreted as removing the phrase “consisting of the polymer” in the last line and therefore the DC conductivity limitation will refer to the multimodal polyethylene composition of line 12.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 and 35 U.S.C. 103 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-3, 6-14, and 19 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over EP3626774 to Traisilanun et al.
Regarding Claims 1-3, 9-10, 12-14, and 19 Traisilanun teaches example 1 [Table 2, EX1] comprising component #1 that is a bimodal polyethylene 1-butene copolymer (i.e., component (A)) and component #2 bimodal polyethylene 1-butene copolymer (i.e., component (B)) [table 2] wherein component #1 has a lower Mw than component #2 [table 2]. Table 1 further teaches that component #1 comprises an ethylene homopolymer first fraction (i.e., (ai)) having a higher molecular weight than the second ethylene 1-butene copolymer second fraction (i.e., (aii)) [table 1]. Example 1 comprises 80 wt% of component #1 [table 2] that comprises 40-60 wt% of the first fraction and 40-60 wt% of the second fraction [0014] (reading on claim 2 and 13) and therefore example 1 requires a minimum of 32 wt% of each (ai) and (aii) (reading on at least 10 wt% of claims 1, 12, and 14). Example 1 has a MFR of 0.43, a density of 0.9551, and a 1-butene content of 0.56 mol% [Table 3] thereby reading on the MFR, density, and comonomer limitations of claim 1 and 9 and 10.
Traisilanun does not particularly teach the properties of flexural modulus or DC conductivity.
However,the mechanical properties of flexural modulus and DC conductivity are functions of the composition. Traisilanun teaches the same composition comprising components (A), (ai), (aii), and (B) as set forth in the rejection above. Therefore, the mechanical properties of flexural modulus and DC conductivity in the composition of Traisilanun will be the same mechanical properties as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding Claims 6, Traisilanun teaches the multimodal polyethylene composition of claim 1, that is prepared using a single site catalyst [0027].
Regarding Claims 7, Traisilanun teaches the multimodal polyethylene composition of claim 1, that is silent regarding crosslinking.
Regarding Claims 8 and 11, Traisilanun teaches the multimodal polyethylene composition of claim 1 as set forth above and incorporated herein by reference.
Traisilanun does not particularly teach the properties of melting point or the ratio of melting point to flexural modulus.
However, the mechanical properties of melting point and the ratio of melting point to flexural modulus are functions of the composition. Traisilanun teaches the same composition comprising components (A), (ai), (aii), and (B) as set forth in the rejection above. Therefore, the mechanical properties of melting point and the ratio of melting point to flexural modulus in the composition of Traisilanun will be the same mechanical properties as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Claim Rejections - 35 USC § 103
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over EP3626774 to Traisilanun et al.
Regarding claim 5, Traisilanun teaches the multimodal polyethylene composition of claim 1, as set forth above and incorporated herein by reference.
Traisilanun does not particularly teach component (B) comprising 1-hexene.
However, Traisilanun teaches the comonomer is selected from 1-butene or 1-hexene [0015].
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute 1-hexene for the 1-butene. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Traisilanun discloses that both 1-butene and 1-hexene are suitable comonomers for use in multimodal polyethene copolymers, thus providing evidence of obviousness in substituting one for the other.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over EP3626774 to Traisilanun et al. in view of EP2182524 to Pakkanen et al. (as cited on the IDS dated 12/12/2022).
Regarding claim 4, Traisilanun teaches the multimodal polyethylene composition of claim 1, comprising components (A) and (B) as set forth above and incorporated herein by reference.
Traisilanun is silent regarding component (A) in an amount of 35-60 wt% and component (B) in an amount of 40-65 wt%.
However, Pakkanen teaches a cable a polymer composition [abstract] comprising 40-60 wt% of a low molecular weight ethylene polymer (A) selected from ethylene homopolymer and a copolymer of ethylene with one or more alpha olefins [0042] and 40-60 wt% of a high molecular weight copolymer (B) of ethylene and one or more alpha-olefins.
Before the effective filing date of the instantly claimed invention, it would have been obvious to one of ordinary skill in the art to use the amounts of (A) and (B) as taught by Pakkanen in Traisilanun’s composition.
The motivation would have been that it has been held that it is obvious to select a known material based on its suitability for its intended use. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945); In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); and MPEP 2144.07. In the instant case, Pakkanen shows that the (A) and (B) amounts are known in the art to be suitable for polyethylene copolymer cable compositions.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive.
Applicant states Kontro and Pakkanen do not teach the newly amended claim 1.
In response, attention is drawn to the rejection set forth above wherein Traisilanun in view of Pakkanen teach the newly amended instantly claimed multimodal polyethylene composition.
For these reasons, Applicant's arguments are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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