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 .
Disposition of Claims
Claims 1, 4-14 and 16-21 are pending in the application. Claims 2-3 and 15 have been cancelled.
Amendments to claims 1, 7, 13 and 19, filed on 2/23/2026, have been entered in the above-identified application.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 4-11 and 16-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun et al. (“Modeling of the Electrical Percolation of Mixed Carbon Fillers in Polymer-Based Composites,” attached).
Regarding claims 1, 4-11 and 16-21, Sun teaches two-filler-containing (MWCNTs + CB or MWCNTs + G) composites (see Results and Discussion on page 459). Sun prepared polymer/mixed-filler composites by first melt mixing a polymer with one filler, PP/CB and polymer/MWCNT (in cases where G was used as the other filler), for 5 min; then, the second filler was added, and the mixing was continued for another 5 min (see Sample Preparation on page 459). For mixed filler systems, the MWCNT contents were kept constant (1 and 0.5 wt %) for PP- and POM-based composites, respectively (see same section). Sun teaches that Figure 1 shows the electrical resistivities of PP and POM filled with different kinds of single fillers and mixed fillers at various filler contents (see same section). The resistivity of PP/MWCNT/CB composite at 3 wt % filler content (1 wt % MWCNTs + 2 wt % CB) is 104 Ω·cm (a conductivity of 1·10-4 S/cm, as calculated by the examiner) (see top of left column on page 460, and FIG. 1a). According to eq 10, the mass fraction required for CB is 1.63 wt % to get the composite percolated (see top of left column on page 463). Because MWCNT content is 1 wt %, the total mass fraction of the conductive filler is 2.63 wt % (see top of left column on page 463). All data shown in Figure 1a fit eq 10 well (see top of left column on page 463).
Claim(s) 1, 4-11, 13 and 16-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (“Synergistic effect in conductive networks constructed with carbon nanofillers in different dimensions,” attached).
Regarding claims 1, 4-10, 13 and 16-21, Zhang that an investigation on synergistic effect during network formation for conductive network constructed with carbon nanofillers in different dimensions is conducted (Abstract). Multi-walled carbon nanotubes (MWNTs) and carbon black (CB) are employed as conductive fillers in the system (Abstract). It is observed that the percolation threshold of hybrid fillers filled conductive polymer composites (CPCs) is much lower than that of MWNTs or CB filled CPCs, and it can be reduced from 2.4 to 0.21 wt% by replacing half of the MWNTs with CB (Abstract).
Under Section 2.2, Zhang discloses the following: “Fillers were melt-blended with PP copolymer (co-PP) in an internal mixer (XSS-300, Qingfeng Mould Factory, Shanghai, China) at 200°C, 100 rpm for 15 min in order to prepare the masterbatch with high filler content. The mixture of MWNT and CB are mentioned as ‘Hybrid fillers.’ Then, the masterbatch, co-PP and E43 were added into a double-screw micro-extruder (HAAKE Mini-Lab, Thermo Electron, Germany) at 200°C, 100 rpm for 15 min to prepare composites containing different filler content. The content of E43 is kept at 10 wt% for all composites in the study.” Zhang teaches that E43 is a maleic anhydride grafted polypropylene (PP-g-MA) used as a compatibilizer (Section 2.1). The examiner notes that co-PP, either alone or in combination with PP-g-MA, meets the claimed “olefin polymer base resin” limitation. PP-g-MA alternatively meets the claimed “optional additives” limitation.
Zhang teaches that resistivity exceeding 104 Ω·m is not measurable with the current set-up and these films are therefore classified as non-conductive (end of section 2.3.1). The electrical conductivity of isotropic nanocomposites is plotted as a function of filler content in Figure 1 (section 3.1). Composites containing only MWNTs, only CB, both MWNTs and CB in the ratio of 1:1, 1:4 and 4:1 are labeled as: CPC-MWNT, CPC-CB, CPC-MWNT1-CB1, CPC-MWNT1-CB4 and CPC-MWNT4-CB1, respectively (section 3.1). Interestingly, a measurable resistivity is obtained for the composites containing a hybrid filler consisting of 0.25 wt% MWNTs and 0.25 wt% CB (section 3.1 and FIG. 1). Therefore, Zhang teaches a composition in which the co-PP (either alone or in combination with PP-g-MA), the MWNTs (first carbonaceous structures), and the carbon black would be present in the claimed ranges. Figure 1 shows additional CPC-MWNT1-CB1 compositions that would also be within the claimed ranges.
From Figure 1, it can also be seen that the composites containing a hybrid filler consisting of 0.25 wt% MWNTs and 0.25 wt% CB have a resistivity between 102 and 103 Ω·m (a conductivity of between 1·10-5 and 1·10-4 S/cm, as calculated by the examiner). It can further be seen in Figure 1 that the additional CPC-MWNT1-CB1 compositions have lower resistivities and therefore higher conductivities.
Regarding claim 11, Zhang teaches that polypropylene (PP, Basell Adsyl 5C39F, Basell, U.S.) is a copolymer (Mw = 320 kg·mol–1, MFI = 5.5 g·min–1) containing 98% of PP and 2% of ethylene (Section 2.1).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 4-13 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lundgard et al. (US Patent No. 5,844,037).
Regarding claims 1, 4-13 and 16-21, Lundgard teaches blends of thermoplastic polymers containing carbon black (col. 1, lines 6-9). More particularly, Lundgard’s invention relates to such blends which have a conductivity of at least 10-12 Siemens/cm (S/cm) (col. 1, lines 7-9). Preferably, the composition contains only two phases, in which case the minor phase contains at least 60 percent of the conductive carbon present, and the polymer(s) of the minor phase is less crystalline or, if both phases are amorphous, has a lower glass transition temperature than the polymer(s) of the major phase (col. 3, lines 16-21). Preferably, the major phase is a polymer having a crystallinity of greater than 30 percent and the minor phase is a polymer having a crystallinity of less than 20 percent (col. 3, lines 21-24). Preferably, the most crystalline component is high density polyethylene homopolymer, a linear low density copolymer of ethylene and at least one α-olefin monomer, or polypropylene, and is most preferably polypropylene (col. 3, lines 58-62). Other polymers which are useful as a component having a relatively low degree of crystallinity include polyisoprene rubbers, ethylene-propylene copolymers, ethylene-propylene diene rubbers (EPDM), chlorinated rubbers, nitrile rubbers, polystyrene, styrene, acrylonitrile copolymers, polyphenylene oxides, methylmethacrylate styrene-butadiene block copolymers, polyether sulfones, polysulfones, polyarylates, polybutadiene, and acrylonitrile-butadiene-styrene copolymers (col. 4, lines 18-26).
The carbon black is preferably employed in an amount, based on the weight of the composition, of at least about 0.1 percent, more preferably at least 0.25 percent, but preferably no greater than 20 percent, more preferably no greater than 12 percent, but is preferably no greater than 11 percent (col. 13, lines 4-9). If desired, mixtures of conductive carbons with different properties may also be used (col. 13, lines 9-11, and col. 12 lines 45-47). The term "conductive carbon" refers to electronically-conductive grades of carbon black, carbon fibers, and graphite ([0012]). Suitable fillers which may be present in the composition include talc or graphite, calcium carbonate, clay, feldspar, nepheline, silica or glass, fumed silica, alumina, magnesium oxide, zinc oxide, barium sulfate, aluminum silicate, calcium silicate, titanium dioxide, titanates, glass microspheres or chalk (col. 13, lines 17-21). The addition of such non-conductive fillers have been discovered to increase the conductivity of the composition (col. 13, lines 33-35). Preferably, the compositions contain fillers in an amount, based on the weight of the composition, of at least 0.1 percent (col. 13, lines 31-33).
The composition preferably has a conductivity of at least about 10-9 S/cm, and more preferably at least 10-7 S/cm, but is preferably no greater than 1 S/cm (col. 14, lines 42-44).
Lundgard does not explicitly disclose the amount of the olefin polymer base resin in the compositions.
However, Lundgard teaches examples of compositions comprising the polyolefin polymers PROFAX™ 6323 and ENGAGE™ 8180 (an elastomer) in total amounts ranging from 89 to 94 wt% (as calculated by the examiner) (see Table 1, col. 15, lines 34-53 and col. 8, lines 35-38).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have incorporated the polyolefin polymers in amounts in a range of 89 to 94 wt% in the compositions of Lundgard because Lundgard teaches examples of such amounts (Table 1).
Lundgard does not explicitly disclose wherein the semiconductive polyolefin composition has an electrical percolation threshold of not more than 5 wt.% of the combined amount of components (B) and (C) dispersed in the olefin polymer base resin (A).
However, Lundgard teaches that the least crystalline component is preferably employed in an amount sufficient to provide a continuous phase thereof in the composition (col. 4, lines 64-66). A relatively high conductivity indicates that the conductive carbon-filled component is present in an amount above the percolation threshold for the composition, which also indicates that the particles of thermoplastic material are connected to each other, providing a continuous phase thereof (col. 5, lines 5-10). The composition and the method for its preparation are preferably optimized experimentally to achieve the best combination of conductivity and physical properties, depending on the structural application for which the composition is to be used (col. 14, lines 4-8).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have incorporated the carbon black and the filler in the disclosed amounts (0.1 to 11 wt%, and at least 0.1 wt%, respectively) in such a way that the combined amount is above the percolation threshold for the composition in order to ensure a continuous phase of the thermoplastic material as desired by Lundgard, and in order to achieve particular, sufficiently high conductivities with a relatively low amount of conductive carbon for certain applications (col. 2, lines 48-58, cols. 4-5, lines 64-17, and col. 14, lines 4-8). In addition, or in the alternative, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have expected that the amounts of carbon black and filler taught by Lundgard would be above the percolation threshold for the disclosed compositions because Lundgard teaches that the combination has been discovered to yield compositions with increased conductivity, and that a relatively high conductivity indicates that the conductive carbon-filled component is present in an amount above the percolation threshold (col. 13, lines 33-35, col. 2, lines 48-58 and cols. 4-5, lines 64-17).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lundgard et al. (US Patent No. 5,844,037), as applied to claim 1 above, in view of Uematsu et al. (US 2015/0170787 A1).
Regarding claim 14, Lundgard remains as applied above.
Lundgard further teaches that it has been discovered that the compositions prepared by the process of the invention, as well as the compositions of the invention, are sufficiently conductive to be useful for a variety of applications, such as structural materials for applications requiring electromotively-paintable substrates, or static-dissipation or EMI shielding applications (col. 2, lines 48-53).
Lundgard does not explicitly disclose a power cable comprising a semiconductive layer which comprises the semiconductive polyolefin composition.
However, Uematsu teaches that medium and high voltage power cables may comprise six major elements ([0094]). The elements may be, from the interior to the exterior of the cables, a conductor made of a conducting material such as copper and aluminum, a semiconductive conductor shield, an insulating layer, a semiconductive insulation shield, a metallic screen or sheath layer, and a jacket ([0094]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have included the composition of Lundgard in a medium or high voltage power cable in order to provide an EMI shielding layer for the cable, thereby providing one of the six major known elements in such cables, as suggested by Uematsu ([0094]; also see Lundgard: col. 2, lines 48-53).
Claim(s) 1, 4-11, 13 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shim (KR 20200065162 A, attached) in view of Johnson et al. (US 2006/0155043 A1).
Regarding claims 1, 4-11, 13 and 16-21, Shim teaches a polymer composite comprising polypropylene (PP) of a plasma-treated powder form and a plasma-treated single-walled carbon nanotube (SWNT) (Abstract). The examiner notes that the entire polymer composite may comprise a single-walled carbon nanotube in an amount of 0.001 to 2 wt%, specifically 0.01 to 1.5 wt%, 0.015 to 1.3 wt% or 0.02 to 1 wt%, and more specifically it may be 0.1 to 0.7 wt% (page 3, lines 16-18). Shim also teaches larger amounts in Table 1 (see the Korean document). The percolation threshold of the polymer composite may be from 0.01 to 1.5% by weight based on the entire polymer composite, specifically from 0.02 to 1% by weight, and more specifically from 0.03 to 0.95% by weight (page 4, lines 14-16). The electrical conductivity of the polymer composite may be 10-9 to 10-1 S/m, specifically 10-8 to 10-2 S/m, but is not limited thereto (as calculated by the examiner: 10-11 to 10-3 S/cm, specifically 10-10 to 10-4 S/cm (page 4, lines 21-22).
The examiner notes that the composites may consist of the plasma treated PP and SWNTs, and therefore the amounts of the plasma treated polypropylene in the composites would overlap with the amounts for an olefin polymer base resin of 80 to 99.5 wt.%.
For instance, in Example 4, Shim teaches that nanocomposites having SWNTs of various weights were prepared using Brabender microcompounder TSC 42/6, which are shown in Table 1 (see page 6, lines 28-29; and Table 1 in the Korean document). Oxygen plasma treated single wall carbon nanotubes (f-SWNTs) were synthesized with oxygen plasma treated powder form PP (f-PP) (page 2, lines 18-19). In contrast, as a comparative example, the untreated plasma single-walled carbon nanotube (u-SWNT) was made of polypropylene in the form of untreated plasma (u-PP) (page 2, lines 19-21). The electrical conductivity curves versus weight percent of SWNTs for the u -SWNT/u-PP and f-SWNT/f-PP composites are shown in FIG. 10 (page 10, lines 31-33). The result of the statistical percolation theory was an electrical percolation threshold of 1.4% by weight for u-SWNT/u-PP and 0.91% by weight for f-SWNT/f-PP (page 10, lines 32-34; and FIG. 10). The examiner notes that it can be seen from the first dashed line in FIG. 10 that the trend in the data for the plasma treated f-SWNT/f-PP composites suggests an electrical conductivity that is at least 0.01 S/m (1·10-4 S/cm) and is approaching 0.1 S/m (1·10-3 S/cm) at the percolation threshold of 0.91% by weight SWNT.
As noted above, the polymer composite of Shim may comprise the single-walled carbon nanotube in an amount of 0.001 to 2 wt%, specifically 0.01 to 1.5 wt%, 0.015 to 1.3 wt% or 0.02 to 1 wt%, and more specifically it may be 0.1 to 0.7 wt% (page 3, lines 16-18). Shim also teaches larger amounts in Table 1.
Shim does not explicitly disclose wherein the semiconductive polyolefin composition comprises (B) 0.1 to 10.0 wt.% of first carbonaceous structures based on the total weight of the semiconductive polyolefin composition; and (C) 0.2 to 15.0 wt.% of carbon black based on the total weight of the semiconductive polyolefin composition.
However, Johnson teaches that depending on the method by which nanostructures are made, varying amounts of materials other than nanostructures may be present ([0028] and [0024]). Such materials may include various forms of carbon that are reactants or byproducts of the nanostructure fabrication process ([0028]). Highly pure nanostructure material comprises at least about 95% SWNTs and is difficult to manufacture ([0028]). Nanostructure material of lower purity may have from about 50 to about 80% SWNTs and is associated with less complicated and expensive fabrication methods ([0028]). With respect to achieving a degree of percolation necessary to impart enhanced mechanical, thermal and electronic properties to composites, Johnson teaches that loading levels may be accomplished by the use of a small amount of high purity nano structure material or a larger amount of lower purity nanostructure material ([0028]). For example, if the target SWNT loading was set at about 0.4% w/w, equivalent SWNT loadings may be accomplished by the use of either 0.4% w/w of a highly pure nanostructure material or 0.8% w/w of 50% pure nano structure material ([0028]). Johnson further teaches that additives may include, for example, silica; boron nitride; metal particles such as silver, gold and alumina; and forms of carbon such as graphite, carbon fibers, and carbon black ([0036]). These additives may be provided separately as a distinct component of the composition or, in the case of nano structures of low purity, together as a part of the nanostructure material ([0036]). Where additives are used, it is preferred that such additives comprise from about 0.01 to about 85 percent of the total solids content of the composition ([0036]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have used either a small amount of SWNTs having a purity of at least about 95% or a proportionally larger amount of SWNTs having a purity in the range of about 50 to about 80% (with impurities/additives making up the remainder in the second case), and with the impurities/additives being composed of forms of carbon such as graphite, carbon fibers or carbon black, in order to either provide highly pure SWNTs or to provide SWNTs that allow less complicated and expensive fabrication and/or modification of the properties of the composites made therefrom, as suggested by Johnson ([0028] and [0036]).
The examiner notes that based on the teaching of Johnson, a target SWNT loading of 0.001 to 2 wt% may be provided by 0.001 to 2 wt% of highly pure SWNTS or by 0.00125 to 2.5 wt% of 80% pure SWNTs, as calculated by the examiner (see [0029]). In the latter case, the loading of the SWNTs in the composition would range from 0.001 to 2 wt% and the amount of another form of carbon such as carbon black would range from 0.00025 to 0.5 wt%, which overlaps with the claimed ranges.
Response to Arguments
Applicant's arguments filed 2/23/2026 have been fully considered but they are not persuasive.
Applicant contends the following: “With respect to Johnson, Applicant understands the Examiner to be effectively assuming that all of the "other materials" present in the Johnson nanostructure material are the same material (e.g., if the nanostructure material contains 80% carbon nanotubes, the remaining 20% necessarily consists of carbon black as the "other material"). This assumption is incorrect. Johnson's disclosure is consistent with the "other material" fraction comprising a mixture of different carbon forms (for example, 5% graphite, 5% carbon fibers, 5% carbon black, etc.), such that the amount of any individual "other material," including carbon black, would be significantly lower than the Office's calculation (paragraph [0028] discloses "varying amounts of other materials").
Regarding this contention, Johnson teaches that in preferred embodiments, additional materials may be added to the compositions in order to further modify the properties of composites made therefrom ([0036]). Such additives may include, for example, silica; boron nitride; metal particles such as silver, gold and alumina; and forms of carbon such as graphite, carbon fibers, and carbon black ([0036]). The additives may either be provided separately as a distinct component of the composition or, in the case of nanostructures of low purity, together as a part of the nanostructure material ([0036]). Johnson also teaches that, as such, materials such as graphite, carbon fibers, carbon black and other materials present in the nanostructure material may be regarded as additives within the scope of the invention ([0036]). Where additives are used, it is preferred that such additives comprise from about 0.01 to about 85 percent of the total solids content of the composition ([0036]). Therefore, a person having skill in the art would reasonably have included an additive/impurity such as carbon black in the composition in the disclosed amounts.
Conclusion
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/Kevin Worrell/Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789