DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 3/19/2026. In particular, claim 1 has been amended to recite the composition does not comprise a polymer comprising polar monomer units. This presents the claims in a manner with a scope not previously examined. Thus, the following action is properly made FINAL.
Information Disclosure Statement
The information disclosure statement filed 3/19/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Specifically, only the first page of EP 0629222 and EP 0591224 have been provided.
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.
Claim(s) 1-3, 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fuchs (EP 3647349).
Fuchs teaches a polypropylene composition (abstract) which includes examples which use 46 parts Resin 1, 21 parts Resin 2, and 7.5 parts carbon black (Table 2) where Resin 1 is a HECO and Resin 2 is a RAHECO (Table 1) where RAHECO is a heterophasic polypropylene copolymer (pg. 4, ¶ 30). This gives a composition having about 67 wt% heterophasic propylene copolymer (46 +21 = 67). The composition of Fuchs does not contain a polymer having polar monomer units or any TMQ, meeting the limitations of claims 1 and 3. Fuchs teaches the composition forms polypropylene pellets (¶ 140) which meets the ‘article’ of claim 14.
Fuchs does not state that the composition is a semiconductor. However, the composition of Fuchs is formed from an insulative material (heterophasic propylene copolymer) and a conductive material (carbon black), and thus is a semiconductive composition.
To the extent that the component (C) recited in claim 2 is present in an amount that includes 0 wt%, the composition of Fuchs meets claim 2.
Claim Rejections - 35 USC § 103
Claim(s) 4-5, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuchs (EP 3647349).
The discussion with respect to Fuchs above is hereby incorporated by reference.
Fuchs teaches the heterophasic copolymers have an ethylene content of 4-20 wt% (¶ 67-69) which overlaps the range of claim 4. Fuchs teaches the xylene solubles content at 23˚C of the heterophasic copolymer is 8-30 wt% (¶ 66-67) which overlaps the range of claim 5. Fuchs teaches the heterophasic copolymer has a MFR2 of 5-150 g/10min (¶66-68) which overlaps the range of claim 7.
Fuchs teaches ranges which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Fuchs suggests the ethylene content, XSC and MFR2. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Fuchs. See MPEP 2123.
Claim(s) 1-4, 7-8, 10, 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perego (US 2013/0025909).
Perego teaches a cable including a semiconductive layer (¶ 21) of a heterophasic propylene copolymer (component (a)) mixed with a nanofiller (component (b)) and 1-50 wt% of carbon black (¶74) where components (b) is 0.5-2 wt% of (a). This gives a composition of about 1-50 wt% carbon black, 0.5-2 wt% nanofiller, and 49.5-98.5 wt% heterophasic propylene copolymer which overlaps the amounts in the claims. Perego teaches the semiconductor is a layer of the cable including medium voltage cables (¶ 1, 21-22).
Perego teaches the heterophasic copolymer has elastomeric domains such as ethylene propylene elastomer, dispersed in a propylene homopolymer matrix (¶26).
Perego does not teach a polymer having polar monomer units or TMQ are present, meeting claims 1 and 3.
To the extent that the component (C) recited in claim 2 is present in an amount that includes 0 wt%, the composition of Perego meets claim 2.
Perego teaches the heterophasic polymer has a melting point of 140-180˚C (¶ 42), an ethylene content of 15-50 wt% (¶ 36) which overlap claim 4 and claim 8.
Perego teaches a MFI of 0.05-10 dg/min (¶29) which overlaps to the MFR2 of claim 7. Perego teaches the semiconductive layer has a resitivity of less than 20 Ohm cm (¶24) which meets claim 10.
Perego teaches amounts which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Perego suggests the amounts. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Perego. See MPEP 2123.
Allowable Subject Matter
Claims 6, 9, 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 6 recites the XCS fraction has 20-35 wt% comonomer units.
Claim 9 recites the composition has a MFR10 (at 230˚C) of 0.5-15 g/10min.
Claim 11 recites 0.05-2.5 wt% functionalized polyolefin (C) and claim 12 depends from claim 11.
Relevant prior art includes Fuchs (EP 3647349), Bareggi (CA 3045056), Steffl (US 2013/0161059), Perego (US 2013/0025909), Gkourmpis (EP 3495411) (cited on the 5/26/2023 IDS).
Fuchs, described above, fails to teach the comonomer amount of the XCS fraction, the MFR10, or the presence of a functionalized polyolefin (C).
Steffl, described previously, fails to teach the claimed MFR10 of the composition. This property is not necessarily present and an inherency position is not proper. Additionally, Steffl teaches a polymer containing polar monomers is present, and thus teaches away from the claimed invention.
Perego teaches a cable including a semiconductive layer (¶ 21) of a heterophasic propylene copolymer mixed with a nanofiller (¶ 12) where the heterophasic copolymer rhas elastomeric domains such as ethylene propylene elastomer, dispersed in a propylene homopolymer matrix (¶26). Perego teaches carbon black is added in ana mount of 1-50 wt% (¶24). Perego fails to teach the claimed MFR10 of the composition. This property is not necessarily present and an inherency position is not proper. Perego fails to teach the comonomer amount of the XCS fraction, the MFR10, or the presence of a functionalized polyolefin (C).
Gkourmpis teaches semiconductive compositions (abstract) of an olefin polymer resin and a carbonaceous structure (¶17) where the olefin polymer resin includes heterophasic propylene copolymer (¶ 45) with 0.5-10 wt% ethylene content (¶ 53) with 40% XCS and a MFR2 of 3.8 g/10 min and a Tm of 150˚C (¶ 77). Gkourmpis teaches the carbonaceous structure provides improved processability comparted to carbon black (¶43). Thus, Gkourmpis teaches away from the claimed invention which requires carbon black.
Bareggi teaches power cables having a layer including an ethylene/propylene heterophastic polymer (abstract) and teaches an example of a semiconductive layer made of a mixture of HPP/RPP 70:30 containing 6 wt% dibenzyltoluene and 30 wt% carbon black (pg. 9, ln. 23-27). 30 wt% carbon black and 6 wt% dibenzyltoluene leaves 64 wt% polymer, of which 70% is HPP (heterophasic ethylene/propylene copolymer) which is 44.8 wt% HPP. This amount of HPP falls outside the scope of claim 1.
Response to Arguments
Applicant’s arguments with respect to Steffl have been considered but are moot because the new ground of rejection does not rely on Steffl for any teaching or matter specifically challenged in the argument.
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 ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764