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 .
Claim Rejections - 35 USC § 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.
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.
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.
Claims 1-15, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Smedberg et al. (WO-2010/112333) in view of Sinclair et al. (9951753).
Smedberg et al. discloses a process for transmitting power comprising: using a cable; and allowing power to flow through the cable, wherein the cable comprises a conductor which is surrounded by at least an inner semiconductive layer, an insulation layer, and an outer semiconductive layer (not shown, see page 2) in thar order, wherein the insulation layer (composition B = b1+b2) comprises at least 60 wt% of a low density polyethylene (LDPE) homopolymer (b1, see claims 11 and 12 of Smedberg) and 10 to 35wt% of a LDPE copolymer (b2) with an alkyl acrylate or vinyl acetate (see claim 8 of Smedberg).
Smedberg et al. does not disclose the process comprising connecting the cable between an offshore energy generator and a substation located onshore, wherein the cable is buried under the sea (re-claims 1, 17, and 20).
Sinclair et al. discloses a process for transmitting power comprising connecting an offshore energy generator (200) to a substation (214) located onshore using a cable (210/212), wherein the cable is buried under the sea (Fig. 1).
It would have been obvious to one skilled in the art to connect the cable of Smedberg et al., in the process of transmitting power, between an offshore energy generator and a substation located onshore, wherein the cable is buried under the sea, as taught by Sinclair et al., to provide power transmission therebetween since the cable of Smedberg et al. has improved physical properties, aging characteristics (page 1).
Re-claims 2 and 20, Smedberg et al. discloses a cable, crosslinkable, the cable comprising a conductor which is surrounded by at least an inner semiconductive layer, an insulation layer, and an outer semiconductive layer (not shown, see page 2) in thar order, wherein the insulation layer (composition B = b1+b2) comprises (i) at least 60 wt% of a low density polyethylene (LDPE) homopolymer or LDPE copolymer with at least one polyunsaturated comonomer (b1, see claims 11 and 12 of Smedberg) and (ii) 10 to 35wt% of a LDPE copolymer (b2) with an alkyl acrylate or vinyl acetate (see claim 8 of Smedberg), wherein the inner and outer semiconductive layer independently comprise a LDPE copolymer with alkyl acrylate or vinyl acetate and carbon black (composition A).
Smedberg et al. also discloses that the inner semiconductive layer and the outer semiconductive layer have the same chemical composition (re-claim 3); the inner and outer semiconductive layers comprise an ethylene alkyl acrylate (EAA) or ethylene vinyl acetate (EVA) copolymer (re-claim 4); the component (ii) of the insulation layer is an EAA copolymer (re-claim 5); the EAA copolymer is an ethylene methyl acrylate or ethylene butyl acrylate (re-claim 6); the polyunsaturated comonomer of the LDPE copolymer component (i) is a straight carbon chain with at least 8 carbon atoms and at least 4 carbons between the non-conjugated double bonds, of which at least one is terminal (pages 4-6) (re-claim 7); the polyunsaturated comonomer of the LDPE copolymer component (i) is C8- to C14-non-conjugated diene (pages 4-6) (re-claim 8); the insulation layer, inner and outer semiconductive layer comprise peroxide (re-claim 9); the cable of Smedberg et al. can be a wet design cable since it comprises structure and material as claimed (re-claim 11); the inner and outer semiconductive layer independently comprise (composition A) at least 50 wt% of the LDPE copolymer with alkyl acrylate or vinyl acetate, 25-48 wt% of carbon black (see claim 9 of Smedberg) and 0.1-2.5 wt% of a peroxide (page 21, lines 12-16) and the insulation layer further comprises 0.1-2.5 wt% of a peroxide (page 21, lines 1-16) (re-claim 12); a crosslinked cable is obtained by the crosslinking of the cable of claim 2 (re-claim 13); the crosslinked cable of Smedberg et al. would have the Weibull Eb value of at least 55 kV/mm after 1 year when measured on a 20 kV cable as described under “Determination methods” since it comprises structure and material as claimed (re-claim 14); and the crosslinked cable of Smedberg et al. can be an AC power cable since it comprises structure and material as claimed (re-claim 15).
Re-claim 10, although not disclosed in Smedberg et al., it would have been obvious to one skilled in the art to use aluminum for the conductor of Smedberg et al. to meet the specific use of the resulting cable since aluminum is well-known in the art for being used as electrical conductors.
Claims 1-15, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sinclair et al. in view of Smedberg et al.
Sinclair et al. discloses a process for transmitting power comprising connecting an offshore energy generator (200) to a substation (214) located onshore using a cable (210/212); and allowing power to flow through the cable, wherein the cable is buried under the sea (Figs 1-2). Sinclair et al. does not disclose the cable as claimed. Smedberg et al. discloses a process for transmitting power comprising using a cable; and allowing power to flow through the cable, wherein the cable comprises structure and material as claimed, see the above rejection. It would have been obvious to one skilled in the art to substitute the cable (210/212) of Sinclair et al. with the cable taught by Smedberg et al. since the cable of Smedberg et al. has improved physical properties (page 1).
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
Applicant argues that the Office has not met its burden to establish that whether a skilled person would have been motivated to use the Smedberg cable to make a connection between an offshore generator and a substation located onshore. Examiner would disagree. As stated the Office Action (OA), since the cable, power cable, of Smedberg has improved aging characteristics (see page 1); one skilled in the art would have motivated to use the cable of Smedberg for connecting between an offshore generator and a substation located onshore taught by Sinclair et al.
Applicant points to the Sutton reference, in the record but not applied in the rejection. Applicant argues that in the Sutton reference, the cables discussed therein are similar to those disclosed in Smedberg: they are made from crosslinked polyethylene with no radial water barrier (page 7, col 1, last paragraph), and they are unsuitable for subsea use. A skilled person seeking a power line for Sinclair would be led to a cable with jacketing materials or water-blocking tapes.
Examiner would disagree. First, Smedberg discloses the cable comprising structure and material as claimed, if the cable of Smedberg is unsuitable for subsea use; then the claimed cable is also unsuitable for subsea use, connecting an offshore generator and a substation located onshore. Second, Smedberg does disclose the cable having a jacket and further layer(s) covering the outer semiconductive layer (see Smedberg, page 1, lines 8-12 and page 2, lines 15-16).
Applicant argues that nothing in Smedberg provides even a suggestion that the cables described therein are suitable for the particular applications described in Sinclair. Similarly, the skilled person starting at Sinclair would not have a reason to turn to Smedberg. Examiner would disagree. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Smedberg does teach the cable having improved aging characteristics.
Applicant argues that in the present application, the combination of an LDPE copolymer with a polar comonomer acts as a polymeric water tree retarder (WTR). Smedberg does not suggest anywhere that the LDPE copolymer can act as a WTR. Examiner would disagree. First, Smedberg discloses a combination of an LDPE copolymer with a polar comonomer, as claimed, not just an LDPE copolymer as argued by the applicant. Second, obviousness is satisfied by a showing of structural similarity between the claims and prior art; it does not require a showing of some suggestion or expectation in the prior art that the structurally similar subject matter will have the same or a similar utility as that discovered by the applicant. In re Dillon, 16 USPQ 2d 1897.
Applicant argues that claim 1 is limited to a cable that is used in a seawater environment, and there is nothing in Smedberg even to suggest that the cable reported therein is suitable for use in seawater. Examiner would disagree. It has been held that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues that in Smedberg, there is a suggestion to use water-tree retarders as additives, implying that Smedberg did not consider the LDPE copolymer alone as a WTR. Examiner would disagree. First, at page 22 of Smedberg, the water-tree retardant additive is optional additive, not required. Second, Smedberg does not disclose LDPE copolymer alone, but the LDPE copolymer and a polar comonomer as claimed.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841