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 .
The Office Action is in response to the application filed June 08, 2023.
Claim Analysis
Summary of Claim 1:
A crosslinkable polymer composition comprising a copolymer of ethylene and hexene, which is a multimodal polyethylene having at least two polymer fractions present in the polymer, each having different weight average molecular weights,
the copolymer having a crystallinity, determined by DSC as described herein, of at least 40%,
the polymer composition further comprising a carbon black content of from 0 wt.% to not more than 4 wt.%, based on the total weight of the polymer composition,
wherein the polymer composition does not contain a silane-modified polymeric component,
and the polymer composition passes the tracking resistance test, determined according to IEC60587 (2007), method 2A, at least at 4.5 kV for 1 h followed at 4.75 kV for 1 h on compression molded plaques prepared according to ISO 11357 and as described herein.
Claim Objections
Claims 1-2 are objected to because Claim 1, Line 14 and Claim 2, Line 5 contain the language “according to ISO 11357 and described herein” but do not go into further detail. The language “and described herein” is unnecessary and it is suggested the language be removed.
Claim 12 is objected to because it contains the typo “any one of”. Appropriate correction is required.
Claim 13 is objected to because of the spelling of “polymerization” in Line 2. It is suggested to be changed to “polymerization” to be consistent with the spelling used throughout the rest of the claims.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 12 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility.
Claim 12 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101.
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 1-2, 4, and 7-8 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "the polymer" in Line 3, and “the tracking resistance test” in Line 12. There is insufficient antecedent basis for these limitations in the claim.
Claim 4 recites ‘and/or’ language which renders the claim indefinite. It is unclear what components are considered optional and which are required.
Claim 7 contains the test method (NFC62-062-2) with a trademark/trade name “the Sepap UV ageing test”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the UV ageing test and, accordingly, the identification/description is indefinite. Further, the test method NFC62-062-2 is not described in the instant specification and as such, the test method is also considered indefinite.
Claim 8 recites “the presence of a crosslinking agent or in the presence of moisture and a condensation catalyst” (emphasis added). However, it is unclear which as to which limitations should be grouped together, i.e. if the language should be interpreted “(A or B) and C” or “A or (B and C).” For the purpose of examination, it will be interpreted to mean “A or (B and C).”
Claim 12 is further rejected as being indefinite because of the language “Use of a polymer composition” in the preamble. There are no positively recited steps in the claim thereby rendering the claim unclear because it is unknown how the polymer composition is being used.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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, 7, and 9-14 are rejected are under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Martinsson et al. (EP 1267189A1; as disclosed in the IDS dated 06/08/2023; hereafter as “Martinsson”).
Regarding Claims 1-2, Martinsson teaches a catalyzed polymer composition [Claim 1; Abstract], corresponding to the crosslinkable polymer composition of Claim 1, comprising:
Copolymer of ethylene polymer and 1-hexene [Claim 7; ¶ 0031], corresponding to a copolymer of ethylene and hexene of Claim 1;
A bimodal polymer, such as ethylene polymer comprising low molecular weight ethylene polymer and high molecular weight ethylene polymer [Claims 5, 8], corresponding to a multimodal polyethylene having at least two polymer fractions present in the polymer, each having different weight average molecular weights of Claim 1;
0.01-0.9% by weight of carbon black [Claim 1], corresponding to 0 wt. % to not more than 4 wt. % carbon black of Claim 1; and
is silent to silane-modified polymer component, which will be interpreted to be absent of the silane-modified polymer component, thereby corresponding to wherein the polymer composition does not contain a silane-modified polymeric component of Claim 1.
Martinsson further teaches said polymer composition passes tracking tests according to IEC 587 at a test voltage of 4.5 kV [Tables 1-2; ¶ 0057-0060], corresponding to wherein the polymer composition passes the tracking resistance test at least 4.5 kV of Claim 1.
However, Martinsson is silent to the copolymer having a crystallinity, determined by DSC as described herein, of at least 40% of Claim 1 and the polymer composition passes the tracking resistance test, determined according to IEC60587 (2007), method 2A, at least at 4.5 kV for 1 h followed at 4.75 kV for 1 h on compression molded plaques prepared according to ISO 11357 of Claim 1, and wherein the polymer composition passes the tracking resistance test determined according to IEC60587 (2007), method 2A, at least at 5.75 kV for 1h followed at 6kV for 1h, on compression molded plaques prepared according to ISO 11357 of Claim 2.
Nevertheless, the crystallinity and tracking resistance are functions of the composition and the method by which it is made. Since Martinsson teaches the same crosslinked polymer composition formed by the same method as required by the instant claim, as set forth in the rejection above, the crosslinked polymer composition of Martinsson would inherently result in the same crystallinity as required by the instant claims if the crosslinked polymer composition of Martinsson was subjected to the same testing. Martinsson teaches passing the tracking test albeit by a different testing standard, nevertheless, it would be obvious to one of ordinary skill that passing according to one testing standard (such as IEC 587 : 1986 of Martinsson) would likely mean passing by another standard as well (IEC60587 (2007)). Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). 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. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (copolymer of ethylene and hexene, bimodal polyethylene, carbon black, and absence of silane-modified polymeric component ) and for the same purpose (to obtain a crosslinkable polymer composition).
Regarding Claims 3-5, and 7, Martinsson further teaches:
A density of 0.870-0.970 g/cm3 (which is equivalent to a density of 870-970kg/m3), corresponding to a density of from 920 to 970 kg/m3 of Claim 3;
a MFR2 of 0.3-0.6 g/min determined according to ISO 1133 at a load of 2.16 kg at 190˚C [Claim 3; ¶ 0017-0018], corresponding MFR2 of less than 0.4 g/min determined according to ISO 1133 at a load of 2.16 kg at 190˚C of Claim 3;
15-40% by weight of aluminum hydroxide [Claim 1], thereby reading on the metal hydroxide of Claim 4, and corresponding to wherein the filler is contained in an amount of at least 25 wt.%, based on the total weight of the polymer composition of Claim 5; and
A tensile strength of 34 MPa in accordance with ISO 527-2 [Table 1], thereby reading on a tensile strength, determined according to ISO 572-2, of at least 12.5MPa of Claim 7.
Regarding Claims 9-12, Martinsson further teaches:
An optical cable with improved tracking resistance comprising an outer sheath [Claim 1], corresponding to a track resistant cable of Claim 9;
Thereby reading on the optical cable of Claim 10;
Thereby reading on the sheath layer of Claim 11; and
Use of a polymer composition in a wire or cable for increasing track resistance of Claim 12.
Regarding Claims 13-14, Martinsson further teaches:
A method of producing a bimodal polyethylene [Example 1; ¶ 0046-0055], corresponding to a method for manufacturing a polymer composition comprising at least two polymer components of Claim 13;
A first polymer produced in a loop reactor [¶ 0048], corresponding to one polymer component produced in a first reaction stage of a multistage polymerization process of Claim 13;
A second polymer produced in a gas phase reactor [¶ 0049], corresponding to a second polymer component produced in a second reaction stage of a multistage polymerization process of Claim 13;
Ziegler-Natta catalyst [¶ 0047], corresponding to the polymerization catalyst of Claim 13, and the Ziegler-Natta catalyst of Claim 14; and
Wherein the second polymer was produced in an intimate mixture of the formed first polymer [¶ 0049], corresponding to wherein the polymer component formed in a preceding polymerisation stage is present in a subsequent polymerisation stage of Claim 13.
Claim 6 is rejected are under 35 U.S.C. 103 as obvious over Martinsson et al. (EP 1267189A1; as disclosed in the IDS dated 06/08/2023; hereafter as “Martinsson”) in view of Cho et al. (US 8796373 B1; cited in the IDS submitted on 06/08/2023; hereafter as “Cho”).
Martinsson teaches the crosslinkable polymer comprising a copolymer of ethylene and hexene, which is a bimodal polyethylene, carbon black, and tracking resistance of Claim 1 as set forth above and incorporated herein by reference.
Martinsson further teaches use of a UV stabilizer [¶ 0055].
However, Martinsson does not explicitly teach wherein the UV stabilizer is a hindered amine light-stabilizer (HALS) of Claim 6.
Nevertheless, Cho teaches a polyethylene composition for a cable [Abstract] comprising UV stabilizer is a hindered amine light-stabilizer (HALS) [Column 6, Lines 17-23], corresponding to the hindered amine light-stabilizer (HALS) of Claim 6. Cho further teaches the UV stabilizer is used to improve long-term creep properties during transportation, storage and use of a power cable [Column 6, Lines 17-23].
Martinsson and Cho are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing bimodal polymer composition comprising polyethylene and hexene, metal hydroxide, and carbon black.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the HALS of Cho with the polymer composition of Martinsson, thereby arriving at the claimed invention.
Claim 8 is rejected under 35 U.S.C. 103 as obvious over Martinsson et al. (EP 1267189A1; as disclosed in the IDS dated 06/08/2023; hereafter as “Martinsson”) in view of Pakkanen et al. (EP 2182524 A1; hereafter as “Pakkanen”).
Martinsson teaches the crosslinkable polymer comprising a copolymer of ethylene and hexene, which is a bimodal polyethylene, carbon black, and tracking resistance of Claim 1 as set forth above and incorporated herein by reference.
Martinsson teaches the use of a catalyst [¶ 0047].
However, Martinsson does not explicitly teach crosslinking in the presence of a crosslinking agent or in the presence of moisture and a condensation catalyst of Claim 8.
Nevertheless, Pakkanen teaches a cable and polymer composition comprising a multimodal ethylene copolymer [Abstract], comprising crosslinking agent [¶ 0090], thereby reading on the crosslinking agent of Claim 8. Pakkenen further teaches said polymer composition has excellent mechanical properties and surface smoothness [¶ 0006-0007].
Martinsson and Pakkanen are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing bimodal polymer composition comprising polyethylene and hexene, filler, and carbon black.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the crosslinking agent of Pakkanen with the polymer composition of Martinsson, thereby arriving at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764