DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment of claim 6 is supported by the specification. The new claims 15-20 are supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 6/3/2026. Thus, the following action is properly made final.
Claim Interpretation
It is noted that “(a), (b), (c) and (d) amount to 100wt% of the crosslinkable composition” is interpreted as “the crosslinkable composition consists of (a), (b), (c) and (d)” because those four ingredients amount to 100wt% of the composition; “(a), (b), and (c) amount to 100wt% of the crosslinkable composition” is interpreted as “the crosslinked composition consists of (a), (b), and (c)” because these three ingredients amount to 100wt% of the composition.
It is noted that although applicant’s argument regarding claim rejection based on Boogh is not persuasive, this rejection is withdrawn because the composition of Boogh includes a moisture source which is excluded in the instant claims.
Claim Objections
Claim 17 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 20 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 19. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 5-6, 8-9, 12, 14-20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1, 8 recites “from 0-1.5wt% of an optional additive”. However, the specification discloses 0.01-1.5 wt% of antioxidant, and does not disclose contents for other additives.
Claim 14 recites “from greater than 0 to 1.5wt% of antioxidant”. However, the specification discloses 0.01-1.5 wt% of antioxidant.
Claims 8-9, 12, 14, 18-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention. Evidence that claims fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA applications the applicant regards as the invention can be found in the specification as filed. It discloses a crosslinked composition is formed by crosslinking a composition comprising ethylene polymer, silane and peroxide. In the crosslinked composition the ethylene polymer is crosslinked and the silanes should be chemically bonded to the polyethylene, both lose their original characteristics therefore the crosslinked composition does not comprise individual polyethylene and silane as claimed. For purposes of expediting prosecution, the claim is interpreted as a crosslinked composition formed by curing a composition consisting of a, b, c and d.
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 5-6, 12, 14 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.
Claim 5, 12 recites “the composition comprising” which allows additional ingredients in the composition and therefore broadens the scope of the claim. For purposes of expediting prosecution, the claim is interpreted as: the crosslinkable composition of claim 1, wherein the aminosilane…
Claim 6 recites “the composition comprising” which allows additional ingredients in the composition and therefore broadens the scope of the claim.
Claim 14 recites “the composition comprising” which allows additional ingredients in the composition and therefore broadens the scope of the claim.
Claim Rejections - 35 USC § 103
Claims 1-2, 5-6, 8-9, 12, 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinya et al (JPH05258612) in view of Bertini et al (US 2005/0189130).
In setting forth this rejection a machine translation an equivalent document of JP H05258612 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Shinya teaches a crosslinked composition prepared by curing a composition consisting of 97wt% of a polyethylene, peroxide and 0.2-1 wt% of a silane, and 0.25wt% of a phenol antioxidant [table 1, examples]. The polyethylene has a density of 0.92, MI of 1.0. The silane has a formula of
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, such as N-(2-aminoethyl)-3-aminopropyltrimethoxysilane, N-(2-aminoethyl)-3-aminopropylmethyldimethoxysilane, aminopropyltriethoxysilane [0014]. Shinya further teaches the composition is for making an electrical insulator such as power cable and suppressed occurrence of water trees is desired [0001].
Shinya does not teach a silane like claimed.
However, Bertini teaches compounds such as aminophenyltrimethoxysilane and N-(2-aminoethyl)-3-aminopropyltrimethoxysilane are tree retardant agents or anti-treeing agents, which can suppress occurrence of water tree [0045-0046, 0079-80, 0085]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize aminophenyltrimethoxysilane in the composition of Shinya because it is a tree retardant agent which can prevent water trees in polymeric insulation, within the scope of the aminosilane structure disclosed by Shinya, and it is useful for the same purpose as N-(2-aminoethyl)-3-aminopropyltrimethoxysilane which is disclosed by Shinya.
Claim 6: Shinya exemplifies the amount of peroxide being 2.4wt%.
Shinya does not teach a range of the amount of peroxide.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust the amount of peroxide through routine experimentation depending on the final application and the features of polyethylene (molecular weight, branching distribution etc.) used in the composition, because the amount of the peroxide is a result effective variable high amount of peroxide increases crosslinking density, suppresses water tree, increases modulus, but it lowers elongation and makes the product brittle. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim 14: Shinya is silent with respect to the WTL and dissipation factor of the crosslinked composition. However, the teachings from Shinya and Bertini have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Response to Arguments
Applicant's arguments filed 6/3/2026 have been fully considered but they are not persuasive.
In response to applicant's argument regarding the 112(b) rejection of claims 8-9, 12-14, the argument is not persuasive because a backbone or a moiety is insufficient to identify a compound, they lose their original characteristics and are chemically reacted to form a new compound.
In response to applicant's argument that Shinya excludes aminosilanes having a (substituted) phenyl group, this statement is incorrect. Shinya discloses “compounds in which a phenyl group or a substituted phenyl group is introduced into R1 and R2 are excluded”, which indicates (substituted) phenyl group are allowed in the aminosilane as long as they are not introduced into R1 and R2.
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 extension fee 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 date of this final action.
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Primary Examiner, Art Unit 1763
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