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 Interpretation
The claims use the transitional language “consisting essentially of”. The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristic(s) of the claimed invention. For the purposes of searching for and applying prior art, absent a clear indication in the specification or claims of what the basic and novel characteristics are, “consisting essentially of” will be construed as equivalent to “comprising”. See MPEP 2111.03.
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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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. Claim 1 states that the carbon black has both the claimed BET and OAN-1, and then claims “or both BET-1 and OAN-1”. The alternative “or both BET-1 and OAN-1” is indefinite since both are already required by the claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Meverden et al. (5,312,861) in view of Akrochem (Carbon Blacks).
Meverden et al. teach a moisture-curable composition for a cable coating (claim 28) consisting essentially of 54.2 wt% of an ethylene-vinyltriethoxysilane (EVTEOS) copolymer (claimed (A)), 27 wt% of an ethylene-vinyl acetate copolymer (EVA, claimed (B)), 18.6 wt% of carbon black (claimed (C)), and 0.6 wt% of additives (claimed (X)) comprising 0.2 wt% DBTL (dibutyltindilaurate; a silanol condensation catalyst), and 0.4 wt% of the antioxidant, Irganox 1010 (Example XII).
Wherein the EVTEOS comprises 95.9 wt% ethylene and 4.1 wt% VTEOS (Example XII). Meverden et al. teach a melt index of from 0.2 to 10 g/10 min (column 5, lines 4-14). The ranges satisfy the claimed range of 0.7 to 3.0 wt% of the formulation.
Wherein the EVA comprises 81 wt% ethylene and 19 wt% vinyl acetate (Example XII).
The melt index of Meverden et al. overlaps the claimed range.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Meverden et al. fail to teach carbon black with the claimed BET and OAN-1.
However, Akrochem teaches that XC72 is an industry standard carbon black for wire and cable jacketing and that compounders have found that Vulcan XC72 has extended their part’s life expectancy due to XC72 low levels of sulfur and ash (page 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the XC72 carbon black of Akrochem as the carbon black in the examples of Meverden et al. to provide a carbon black for cable coating that extends the life expectancy of the part. XC72 possesses the claimed BET and OAN as evidenced by the instant specification [00123].
Since the composition is the same as claimed, it will possess the claimed volume resistivity. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3 and 5 have been considered but are moot due to the new ground of rejection.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
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.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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