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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 5, and 6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Considering Claim 2: Claim 2 recites a range for the amount of the ethylene based polymer that is broader than the range of claim 1, from which it depends. Therefore the scope of the claim is broader than the claim from which it depends.
Considering Claim 5: Claim 5 recites that the composition comprises a fatty acid amide. However, claim 1, from which claim 5 depends, recites that the composition is free from fatty acid amide. As such, the scope of claim 5 is broader than the scope of the claim from which it depends.
Considering Claim 6: Claim 6 recites that the polymeric composition is free from a fatty acid amide. However, this feature is already present in claim 1, from which claim 6 depends. As such, the claim does not further limit the scope of the claim from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 2, 4, 6, 8, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Alric et al. (US 9,796,837) in view of Habimana et al. (US 9,527,988).
Considering Claims 1, 2, 4, and 6: Alric et al. teaches a composition comprising a polyethylene polymer having a density of 0.91 to 0.94 g/cc (2:54-67); and a high molecular weight non-reactive/unsubstituted polydimethylsiloxane gum (Table 2). Alric et al. teaches an example comprising 79% of the polyethylene matrix, 20% of a master batch that is 10% polydimethylsiloxane gum, and 1% of antiblock MB (Table 5), thus providing a composition with 97% polyethylene, 2% of the polydimethylsiloxane gum, and 1% of antiblock MB. No low molecular weight polydimethylsiloxane gum with a molecular weight of 30,000 to 300,000 g/mol is present in Alric et al. Alric et al. does not teach the presence of a fatty acid amide.
Alric et al. is silent towards the molecular weight of the polydimethylsiloxane. Habimana et al. teaches a polydimethylsiloxane having a weight average molecular weight of 649,900 g/mol as a slip agent for a polyolefin (11:52-65). Alric et al. and Habimana et al. are analogous art as they are concerned with the same field of endeavor, namely polyolefin compositions with low coefficient of friction. It would have been obvious to a person of ordinary skill in the art to have used the polydimethylsiloxane of Habimana et al. in the composition of Alric et al., and the motivation to do so would have been, as Habimana et al. suggests, to impart low surface friction to the composition (10:43-45).
The Office recognizes that the non-reactive polydimethylsiloxane is being used in a comparative example. However, "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). See MPEP § 2123.
Considering Claims 8 and 9: Alric et al. teaches a coefficient of friction of less than 0.4.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the initial and aged coefficient of friction, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Alric et al. (US 9,796,837) in view of Habimana et al. (US 9,527,988) as applied to claim 1 above, and further in view of the evidence of Klotzbach et al. (US 2016/0160081).
Considering Claim 7: Alric et al. and Habimana et al. collectively teach the composition of claim 1 as shown above. Alric et al. teaches using Silres MSE-100 as a slip additive (Table 2). Alric et al. teaches adding additional slip additives to the composition (4:16-26). Klotzbach et al. teaches Silres MSE-100 as having a molecular weight of 2,566 g/mol (¶0067).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Alric et al. (US 9,796,837) in view of Habimana et al. (US 9,527,988) as applied to claim 1 above, and further in view of Chen et al. (US 9,701,859).
Considering Claim 10: Alric et al. and Habimana et al. collectively teach the composition of claim 1 as shown above.
Alric et al. does not teach using the polymer composition in a coated conductor. However, Chen et al. teaches a coated conductor comprising the polymeric composition (7:5-8). Alric et al. and Chen et al. are analogous art as they are concerned with the same field of endeavor, namely polyolefin compositions with low coefficient of friction. It would have been obvious to a person of ordinary skill in the art to have used the composition of Alric et al. to coat a conductor, as in Chen et al., and the motivation to do so would have been, it is a known use for the composition.
Response to Arguments
Applicant's arguments filed January 27, 2026 have been fully considered but they are not persuasive, because:
The applicant’s argument that Alric et al. teaches a functionalized polydimethylsiloxane is not persuasive. Alric et al. teaches an example comprising a non-reactive/unfunctionalized polydimethylsiloxane (Table 5). The Office recognizes that the non-reactive polydimethylsiloxane is being used in a comparative example. However, "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). See MPEP § 2123.
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 LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767