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
Claim 14 is 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 14 is rejected because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). See MPEP 2173.05(q). Applicant is advised to amend or to cancel the claim.
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 1-5, 9-15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Sultan et al. (PG Pub. 2007/0161758) in view of either of Yijian et al. (PG Pub. 2018/0371217) or Tran et al. (WO 2019/229209) or, in the alternative, under 35 U.S.C. 103 as obvious over Sultan et al. (PG Pub. 2007/0161758) in view of Jackson et al. (US Pat. 6,468,583) in view of either of Yijian et al. (PG Pub. 2018/0371217) or Tran et al. (WO 2019/229209).
Regarding claims 1-5, Sultan et al. teach a crosslinkable polymer composition comprising a high density ethylene homo or copolymer with a density in the claimed range and a copolymer of ethylene with a silane groups containing comonomer having a content of silane groups containing monomer in the claimed range (VTMS is below 2 wt%) [0011, 0039]. Sultan et al. are silent regarding the claimed tracking resistance test. However, give Sultan teaches such a similar crosslinkable polymer composition with such similar contents of materials, and given US Pat. 6,468,583 teaches silane modified polyolefins produce improved tracking resistance, even with that in the claimed range, the crosslinkable polymer composition would pass the tracking resistance test inherently. In the alternative, Jackson et al. teach using silane modified polyethylene to pass tracking resistance test. It would have been obvious to one of ordinary skill in the art to use the silane modified polyethylene of Jackson et al. in Sultan et al. in order to pass the tracking resistance test and arrive at the claimed invention.
Sultan et al. and Jackson et al. are silent regarding the claimed specifics of the high density ethylene. However, Yijian et al. or Tran et al. teach high density ethylene copolymer which is multimodal copolymer of ethylene and hexene with a density in the claimed range and a melt flow rate in the claimed range and also includes a very low density polyethylene with a density in the claimed range (taught in WO 2004/101674 which is incorporated in Yijian et al.) in order to provide high density polyethylene which has better crack resistance and to improve barrier properties [Abstract, 0002, and 0026]. It would have been obvious to one of ordinary skill in the art to use the high density ethylene copolymer which is multimodal copolymer of ethylene and hexene with the claimed density and melt flow rate in order to provide improved crack resistance and to improve barrier properties and arrive at the claimed invention.
Regarding claims 7-8 and 17, Sultan et al. are silent regarding the claimed fillers. However it would have been obvious to add any of the claimed fillers in the claimed amount as such is well known in the art as evidenced by Jackson et al. In the alternative, Jackson et al. teach incorporation of anti-track fillers, including ground magnesium hydroxide in the claimed amount. It would have been obvious to one of ordinary skill in the art to include magnesium hydroxide as an anti-track filler and arrive at the claimed invention.
Regarding claim 9, Sultan et al. teach antioxidants [0042-0043]. Moreover, it would have been obvious to one of ordinary skill in the art to include any of the claimed additives as is known in the art. Further, Jackson et al. teach antioxidants, UV stabilizers.
Regarding claim 10, Sultan et al. teach a tensile strength and elongation in the claimed range [0014].
Regarding claim 11, it would have been obvious to one of ordinary skill in the art to have the claimed UV resistance in order to protect the cable from damage. Further, Jackson et al. teach inclusion of UV stabilizers and absorbers and it would have been obvious to one of ordinary skill in the art to include the UV stabilizers and absorbers of Jackson et al. in Sultan et al. to provide the claimed UV resistance to prevent damage and arrive at the claimed invention.
Regarding claim 12, Sultan et al. teach crosslinking in the presence of a crosslinking agent.
Regarding claims 13-14 and 18-19, Sultan et al. and or the previous combination teach a track resistant power cable [0026] comprising at least one layer of the polymer composition of claim 1 with the one layer being a jacket layer or sheath layer or insulation layer and use of the polymer of claim 1 in a cable for increasing track resistance. The previous combination teaches a method for increasing track resistance and/or for increasing fire retardancy along the length of a wire or cable comprising forming a layer of the wire or cable.
Regarding claim 15, Sultan and or the previous combination teach a method of manufacturing a polymer composition according to claim 1, with a step of compounding the high density homo or copolymer and the copolymer of ethylene with a silane groups containing monomer. Even if Sultan et al. does not disclose the process, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process and given that Sultan and or the previous combination meets the requirements of the claimed composition, Sultan and or the previous combination clearly meet the requirements of present claims composition.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sultan et al. (PG Pub. 2007/0161758) in view of either of Yijian et al. (PG Pub. 2018/0371217) or Tran et al. (WO 2019/229209) in view of Cao et al. (CN 102532728) or, in the alternative, under 35 U.S.C. 103 as obvious over Sultan et al. (PG Pub. 2007/0161758) in view of Jackson et al. (US Pat. 6,468,583) in view of either of Yijian et al. (PG Pub. 2018/0371217) or Tran et al. (WO 2019/229209) in view of Cao et al. (CN 102532728).
Regarding claims 6 and 16, the previous combination is silent regarding the claimed linear low density polyethylene copolymerized or grafted with maleic acid anhydride. However, Cao et al. teach linear low density polyethylene copolymerized or grafted with maleic acid anhydride used in a cable sheath as a compatibilizer in order to improve blending, and adhesion and properties. It would have been obvious to one of ordinary skill in the art to use the linear low density polyethylene copolymerized or grafted with maleic anhydride of Cao et al. in the previous combination as a compatibilizer in order to improve blending, and adhesion and properties and arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 02/27/2026 have been fully considered but they are not persuasive.
Applicant argues Tran does not relate to cable applications. Tran is drawn to a process for making multimodal high density polyethylene and is not limited to use in injection molded or compression molded articles as admitted by Applicant, Tran teaches it is suitable for injection molding and compression molding, but is in no way limited to such.
Applicant argues Tran shows hdpe ethylene-butene in the examples. Tran teaches hexene, butene and octene. Given the small number of alpha olefins taught, it would have been obvious for one ordinary skill in the art to arrive at hexene. Moreover, it is noted that Tran is relied upon for all that is taught and is in no way limited to specific embodiments. Tran in no way teaches away from hexene and in fact teaches use of hexene and in fact teaches hexene as 1 of 3 comonomers [claim 5]. Per MPEP 2132 II, “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).”
Applicant argues the problem addressed by Tran is different than the present invention. Per MPEP 2144 IV, “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)”.
Applicant argues Yijian does not relate to cable applications. Yijian is drawn to a process for making multimodal high density polyethylene and is not limited to molded articles.
Applicant argues the problem addressed by Yijian is different than the present invention. Per MPEP 2144 IV, “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991)”.
Applicant argues Yijian does not provide motivation to select hexene as a comonomer although Applicant admits Yijian teaches hexene as a comonomer. Yijian teaches hexene as 1of 5 comonomers listed. It would have been obvious to one of ordinary skill in the art to arrive at the claimed hexene in order to affect the mechanical properties and arrive at the claimed invention.
Applicant argues unexpected results from the inventive examples. The data provided of unexpected results is not found to be convincing as the claims are not commensurate in scope with the data. The claims recite up to 5% silane groups containing monomer, while the data merely exemplifies, 3, discrete data point of silane containing monomer at 1.1, 1.35 and 1.9. Further, comparative example 2 meets the claimed tracking resistance. It is further noted that the present specification teaches “Moreover, the inventive examples show that the combination of a multimodal high density polyethylene with a copolymer of ethylene with a silane groups-containing comonomer surprisingly achieves excellent track resistance and still reaches acceptable or good mechanical properties. This is unexpected as the ethylene vinyl silane copolymer, being produced by high pressure polymerization, has a relatively low density.
The results further show that the mechanical and tracking performance is improved, if replacing the bimodal ethylene/butene copolymer (CE1) by the especially preferred bimodal ethylene/hexene copolymer (polymer B).”
Therefore, given the cited art teaches the claimed combination of a multimodal high density polyethylene with a copolymer of ethylene with a silane groups-containing comonomer and teaches ethylene/hexene copolymer, the claimed tracking resistance and properties are clearly inherent.
It is further noted that PG Pub. 2005/0049343 teaches the claimed multimodal high density ethylene/hexene copolymer for cables and wires.
Applicant is invited to amend the claims over the cited art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789
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