DETAILED ACTION
Applicant’s response December 1, 2025 has been fully considered. Claims 2-7 and 9-15 are amended and claims 16-20 are added. Claims 1-20 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 9-12 are objected to because of the following informalities:
Regarding claim 9, in line 1, the word “the” should be inserted before silane.
Regarding claims 11 and 12, in line two of each claim, the quotation marks are not needed.
Regarding claim 10, this claim depends from an objected to claim and includes all of the limitations thereof. Therefore, it is also subject to the objection.
Appropriate correction is required.
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.
Claims 11-13 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 11, claim 11 recites the limitation "the active oxygen atom in component b" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “an active oxygen atom in component b.”
Regarding claim 12, claim 12 recites the limitation "the active oxygen atom in component b" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “an active oxygen atom in component b.”
Regarding claims 13 and 18, at the end of each of these claims, “at least one crosslinking coagent” is enclosed in parentheses. It is unclear if this phrase is meant to be part of the claim. For the purpose of further examination, these claims will be interpreted to read “wherein the composition comprises the at least one crosslinking coagent.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 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.
Claims 1-8, 11, 12, 15, 16, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kimura et al. (US 2014/0200297).
Regarding claims 1, 2, 5-8, and 19, Kimura et al. teaches a crosslinked composition and method of making the crosslinked composition, wherein the composition comprises 100 parts by weight of an ethylene/alpha-olefin/nonconjugated polyene random copolymer that has been modified with 5 parts by weight of dimethylpolysiloxane to provide at least one Si‒H group on the polymer (ethylene/alpha-olefin/silane interpolymer), 100 parts by weight of carbon black, and 60 parts by weight of process oil (¶51, 52; Example 1). Then, 100 parts by weight of this composition were mixed with 2 parts by weight of a peroxide vulcanizer and heated to a temperature of 165° C (thermally treating) (¶58). The amount of peroxide used is about 2% by weight of the composition.
Regarding claims 3 and 4, Kimura et al. teaches that the silane is present in the interpolymer of Example 1 described above in an amount of about 5% by weight (calculated by Examiner).
Regarding claims 11 and 12, Kimura et al. teaches that the composition of Example 1 contains 40% by weight of the interpolymer (component a) (calculated by Examiner). Therefore, when 100 parts by weight of the composition are mixed with 2 parts by weight of peroxide, about 40 parts by weight of that 100 is the interpolymer. A weight ratio of the peroxide to the interpolymer is 0.5 (calculated by Examiner; 2:40 ratio is 0.5). While a weight ratio is not a mole ratio, the values should be similar and therefore the claimed range of greater than or equal to 0.5 and less than or equal to 30 is met.
Regarding claim 15, Kimura et al. teaches that the composition is used to make shaped rubber articles (¶49).
Regarding claims 16 and 20, Kimura et al. teaches that the composition of Example 1 contains 40% by weight of the interpolymer (component a) (calculated by Examiner).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2018/0142080) in view of Asanuma et al. (EP 0349155).
Regarding claims 1-9, 13, 14, and 16-20, Sun et al. teaches a crosslinkable polymeric composition comprising from 50% to 98.9% by weight of an ethylene-based polymer, from 0.1% to less than 1.1% by weight of an organic peroxide, and from 0.3% to 3% by weight of a polyallyl crosslinking coagent (¶31). The composition is compounded at a temperature ranging from 100 to 200° C (thermally treated) (¶38). The ethylene-based polymer can be an ethylene/alpha-olefin interpolymer (¶18).
Sun et al. does not teach that the ethylene/alpha-olefin interpolymer comprises from 0.10% to 40% by weight of a silane having at least one Si-H group. However, Asanuma et al. teaches crosslinked polyolefins (Page 2, lines 3-4) comprising alkenylsilane compounds having one or more Si‒H linkages such as vinylsilane, allylsilane, butenylsilane, and pentenylsilane (meet the bounds of Formula 1) (Page 3, lines 15-25). Example 1 teaches a polyolefin containing 1.8% by weight of vinylsilane units (Page 5, lines 46-47). Sun et al. and Asanuma et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of crosslinked polyolefin compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add an alkenylsilane, as taught by Asanuma et al., to the ethylene/alpha-olefin interpolymer, as taught by Sun et al., and would have been motivated to do so in order to improve the physical properties of polyolefins and more particularly to provide a process for producing crosslinked polyolefins in which no molecular weight reduction occurs due to degradation of the polymer backbone.
Regarding claim 10, Asanuma et al. teaches more broadly that the alkenylsilane has the formula (I)
H2C=CH‒(CH2)n–SiHpR(3-p)
wherein n is 0 or an integer from 1 to 12, p is an integer from 1 to 3, and R is a hydrocarbon residue having from 1 to 12 carbon atoms (Page 2, lines 50-55). Structure (s1) meets this formula where n is 0, p is 1, and R is methyl. Structures (s2) through (s6) can also be met by this formula by simply changing the value of n.
Regarding claims 11 and 12, Sun et al. teaches compositions in Table 2 which provide a weight ratio of peroxide to polyolefin of about 0.01 (calculated by Examiner). Even though this is a weight ratio and not a mole ratio, for examination purposes, it will be assumed that they are similar. Therefore, claim 12 is met. As for claim 11, a ratio of greater than or equal to 0.5 is not taught by Sun et al. However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II.A. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to optimize the ratio between the polyolefin and the peroxide through routine experimentation and would have been motivated to do so in order to ensure the desired level of crosslinking of the composition.
Regarding claim 15, Sun et al. teaches cables comprising the crosslinkable polymeric composition (Abstract; ¶42).
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kimura et al. (US 2014/0200297) as applied to claim 7 above.
Regarding claims 11 and 12, these claims are rejected under 35 U.S.C. 102(a)(1) as set forth above. However, assuming arguendo, that the calculated weight ratio is not the same as the molar ratio, one of ordinary skill in the art would have found it obvious to optimize, through routine experimentation, the molar ratio of the two components to fall within the claimed range, and would have been motivated to do so in order to ensure that the desired level of crosslinking for the composition takes place.
Terminal Disclaimer
The terminal disclaimer filed on December 2, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/719,488, any patent granted on Application Number 18/719,393, or any patent granted on Application Number 18/719,657 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments, see pages 6 and 7, filed December 1, 2025, with respect to the rejection of claims 1-3 and 7-9 under 35 U.S.C 103 have been fully considered and are persuasive. Specifically, the argument pertaining to Uchida et al. not teaching that a crosslinked composition would be formed based on the small amount of peroxide used is persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made under 35 U.S.C. 102(a)(1) over Kimura et al. (US 2014/0200297) and under 35 U.S.C. 103 over Sun et al. (US 2018/0142080) in view of Asanuma et al. (EP 0349155).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767