DETAILED ACTION
Election/Restrictions
Claims 24 and 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/26/26. The Examiner makes note of applicants’ species election – the alkoxysilane of Formula (I). While applicant’s election states that claims 27 to 29 read on this elected species, the Examiner cannot find a ferrocene compound of Formula 1 (as found in claim 1) in these claims. As such claims 27 to 29 are likewise withdrawn from further consideration.
Claim Interpretation
For claim interpretation purposes the Examiner notes the following. The PE in claims 17 and 19 refers to polyethylene and the PE retention property is fully defined on page 28 of the specification. Also while the hindered amine light stabilizer (XI) technically allows for compounds having no alkoxy groups, it is specifically referred to as an alkoxysilane such that this must contain at least one alkoxy group.
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.
Claims 1 to 13, 15 to 19 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Bertini et al. 2008/0223498 in view of Wilkus 3,321,501.
Bertini et al. teach a method of extending the life of in service electrical cable, the same method as found in claim 1. Note that this cable has a stranded conductor and an interstitial void volume, as found in claim 2. See for instance paragraph 5. The method of Bertini et al. injects a dielectric enhance fluid into the void volume in a comparable manner as that claimed. Again see paragraph 5 as well as the paragraphs that follow. This differs from that claimed in that it does not specifically teach the injection of an organoalkoxysilane functional additive (i).
Paragraphs 134 and on teach the components in this injected fluid. Of particular importance see paragraph 154 which teaches that metalocenes, specifically ferrocenes, can be added. Bertini et al. teach that such materials act as voltage stabilizers and UV absorbers.
Wilkus teaches ferrocenes compounds meeting Formula 1 in claim 1. While the formula on the top of column 2 includes a Y carbofunctional group the bottom of column 4 to the top of column 5 teaches that the silylorgano radical can be bonded by means of a divalent hydrocarbon radical. When considering the compound on the top of column 2 as having a divalent hydrocarbon linkage without the Y group, and recognizing that the R group can be alkoxy (column 2, line 17), the skilled artisan would appreciate that the teachings in Wilkus embrace the alkoxysilane of Formula (1) in claim 1. Column 5, line 15, teaches that these compounds can be used as UV absorbers (the desired property of the metalocenes in Bertini et al.) as well as heat stabilizers, among many other uses.
As such one having ordinary skill in the art would have found it obvious to use the silane functional metallocene of Wilkus as the metallocene in the composition of Bertini et al. and inject the composition into the interstitial void volume in the method for extending the useful life of an electrical cable of Bertini et al. with the expectation of obtaining useful, beneficial and predictable results.
With regard to the requirement of a catalyst (b), the Examiner notes that this the presence of such a compound is obvious over the teachings of Bertini et al.
On one hand, note that paragraph 163 teaches that the components of the fluid composition can be used in combination. Note too that paragraphs 141 and on teach that organosilanes having condensable groups can be used and, when they are used, condensation catalysts are used in conjunction (paragraph 143). From this one having ordinary skill in the art would have been motivated to combine alkoxysilanes with the alkoxysilane of Wilkus and include a catalyst. Please note that the addition of such an alkoxysilane meets the requirements of claims 3 and 7.
In addition to the teaching in paragraph 163 that the compounds can be used in combination, note that it is prima facie obvious to combine two compositions, each of which is taught by prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. The idea for combining said compositions flows logically from their having been individually taught in the prior art. From this the skilled artisan would have found the combination of different fluids useful in the method of Bertini et al. to have been obvious, with the expectation of obtaining useful and predictable results.
On the other hand, note that paragraph 143 teaches that a condensation catalyst can be used in combination with an alkoxysilane to promote the hydrolysis and conden-sation thereof. As such the skilled artisan, recognizing that the organosilane of Wilkus can possess Si bonded alkoxy groups, would have been motivated to add a catalyst to a modified composition of Bertini et al. in an effort to promote the desired condensation of the Si bonded alkoxy groups.
In view of that noted supra, each of claims 1 to 3 is rendered obvious by this combination of references.
For claims 4 and 17 to 19, note that this property is one that is inherently present in the organosilane (i) such that organosilane monomer in Wilkus which renders this same organosilane obvious will necessarily meet this property.
For claims 5 and 6 see the additives found in paragraphs 148 and on, again noting that the compounds can be used in combination.
For claims 7 to 12 see the specific alkoxysilanes found in Table 2 (paragraph 141). See also the preferred silanes found in the end of paragraph 142. This teaches many of the claimed silanes.
For claim 13 note that the ferrocene compound in Wilkus meets this requirement.
For claim 15, note that the divalent hydrocarbon in Wilkus (attaching the Si atom to the metallocene) includes ethylene and propylene (column 2, lines 35 to 37). The R groups can be methoxy or ethoxy (column 2, line 32) such that the formula in Wilkus embraces those found in this claim. From this one having ordinary skill in the art would have found a silane compound within the breadth of claim 15 to have been obvious.
For claim 26, note that this does not specifically require the compound as claim-ed. Rather this simply limits the selection of the additive (ii).
For claim 16, note that Table 2 in paragraph 141 teaches, as material number 14, the reaction product between a dimethoxysilane and a hydroxyphenyl methacrylate compound which will result in an alkoxysilane functional hindered phenol. The skilled artisan would have been motivated to include such a compound as a Class 1 additive in the composition of Bertini et al. in an effort to take advantage of this disclosed property.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Bertini et al. 2008/0223498 in view of Wilkus 3,321,501 and further in view of PIckett.
In the alternative to the rejection of claim 16 above, this rejection is also made.
Pickett teaches compounds that are alkoxysilane hindered phenols. See column 2, lines 15 to 37. These hindered phenol compounds are UV absorbing. This meets the limitation of claim 16.
Paragraphs 157 and 158 in Bertini et al. teach that UV absorbing materials can be added to the composition therein.
Given the teachings of Bertini et al., one having ordinary skill in the art would have been motivated to include the UV absorbing compound of Pickett as a UV absorb-ing compound in Bertini et al. with a reasonable expectation of success and obtaining predictable UV absorbing results. In this manner claim 16 is rendered obvious.
Note that it has been held prima facie obvious to add a known compound to a known composition in an effort to take advantage of the known benefits and properties thereof.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
Claims 1 to 13, 15 to 19 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 to 19 of U.S. Patent No. 11,749,422. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims allow for combinations of the organoalkoxysilane functional additives (i) to (iii) such that the claims embrace the combinations found in ‘422. Note that the dependent claims and method claims in each case are comparable, as the instant application is a DIV of ‘422.
Conclusion
Wilkus 3,324,157 is cited as being of general interest. This reference also teach-es compounds of the formula 1 in claim 1. The Ravichandran references are also cited as being of general interest. They do not qualify as prior art in this application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
8/22/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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