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 .
Election/Restrictions
Applicant’s election without traverse of species of the aminosilane of claim 5 in the reply filed on 12/20/2025 is acknowledged. Claims 3-4, 10-11 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/20/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the peroxide is an essential elements for the crosslinkable composition to prepare the crosslinked composition possessing the claimed properties.
Claims 8-9, 12-14 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.
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, 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Leland et al (US 4,680,326).
Leland teaches a composition comprising a polyethylene and silane [table 1]. The silane can be aminophenyl trimethoxysilane [claim 13].
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 5-8, 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boogh et al (US 2006/0258796).
Boogh teaches a composition comprising a matrix polymer, a reinforcing phase polymer, peroxide and silane, and an antioxidant [0023, 0033, 0038]. The matrix polymer and reinforcing phase polymer can be the same such as polyethylene [0015, 0020-0022], the silane can be aminophenyl trimethoxysilane [0028]. The total amount of the matrix polymer and reinforcing phase polymer can be 91.8 wt% (74.8+17), the amount of silane is 0.25wt%, peroxide is 0.05wt% [0038]. The composition can be crosslinked to form a crosslinked composition.
Boogh does not expressly name a single embodiment having the claimed composition. However, each of the components of the composition is described in the reference. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have made any of the compositions suggested by the reference, including the claimed composition, thereby arriving at the presently claimed invention.
Claim 14: Boogh is silent with respect to the WTL and dissipation factor of the crosslinked composition. However, the teachings from Boogh 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.
Claims 1-2, 5-9, 12-14 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 from a composition comprising 97wt% of a polyethylene, peroxide and 0.2-1 wt% of a silane, and a phenol antioxidant [table 1, examples]. The polyethylene has a density of 0.92, MI of 1.0. The silane has a formula of
PNG
media_image1.png
119
302
media_image1.png
Greyscale
, 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENWEN CAI whose telephone number is (571)270-3590. The examiner can normally be reached on M-F 9am-6pm.
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, Joseph Del Sole can be reached on (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WENWEN CAI/
Primary Examiner, Art Unit 1763