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 .
Election/Restrictions
Applicant’s election without traverse of Group II, in the reply filed on July 14, 2025, is acknowledged. Claims 1 and 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
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 (i.e., changing from AIA to pre-AIA ) 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.
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 2-8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2014-238996 to Yamazaki, as evidenced by the machine translation.
Regarding claims 2-8, Yamazaki teaches a cable comprising a conductive part and an insulation layer covering the outer circumference of the conductive part, wherein the insulation layer includes a base resin including polyethylene in which at least a part thereof is cross-linked, and an inorganic filler including magnesium oxide formed by a vapor phase method (Yamazaki, Abstract, paragraphs 0071-0072). Yamazaki teaches that the inorganic filler contains 0.1 to 5 parts by weight of magnesium oxide relative to 100 parts by weight of the base resin (Id., paragraph 0008). Yamazaki teaches that at least part of the inorganic filler is surface-treated with a silane coupling agent (Id., paragraph 0013) including vinyltrimethoxysilane (Id., paragraph 0045) to improve the adhesion at the interface with polyethylene, and improves the mechanical and low-temperature properties (Id., paragraph 0068). Yamazaki teaches that the resin further contains a polar ethylene copolymer (Id., paragraph 0010) including maleic anhydride grafted polyethylene (Id., paragraph 0030). Yamazaki teaches that the magnesium oxide powder does not aggregate (Id., paragraph 0043), wherein magnesium oxide powder formed by the vapor phase method is relatively unagglomerated and is separated into individual particles (Id., paragraph 0041). Yamazaki teaches that the average particle size is preferably 2 µm or less, such as about 0.05 µm or about 0.2 µm, wherein the average particle size is the “volume average particle size (MV: Mean Volume Diameter” of primary articles calculated by the formula:
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Where di is the particle size and Vi is the volume of the particles (Id., paragraphs 0047, 0077, 0080, Examples 1-11). Yamazaki teaches that the polyethylene is crosslinked by a crosslinking agent containing an organic peroxide, including dicumyl peroxide, 2,5-dimethyl-2,5-di(t-butylperoxy)hexane, and 1,3-bis(t-butylperoxyisopropyl)benzene (Id., paragraph 0027). Yamazaki teaches that the composition may further contain an antioxidant, such as 2,2-thio-diethylenebis[3-(3,5-di-t-butyl-4-hydroxyphenyl)propionate] (Id., paragraph 0051). Yamazaki teaches that the diameter of the conductive portion is 5 mm or more and 60 mm or less, and that the thickness of the insulating layer is 1 mm or more and 35 mm or less (Id., paragraph 0054).
Regarding the claimed properties, including the remaining rate R, and the time it takes until dielectric breakdown occurs, the properties are directed to properties of the resin composition of the insulating layer and the inorganic filler. As set forth above, Yamazaki teaches the claimed resin composition, including the polyolefin and modified polyolefin, and inorganic filler including magnesium oxide and surface treated with a silane coupling agent. Additionally, Yamazaki teaches that the magnesium oxide is treated by a substantially similar or identical manner as claimed, including requiring the particles being unagglomerated and having a particle size within the scope of Applicants’ specification.
The Patent and Trademark Office can require Applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Therefore, since Yamazaki teaches a substantially similar structure and composition as claimed, including formed by a substantially similar manner and having overlapping properties as set forth in Applicants’ specification, the claimed properties appear to be inherent to the composition and inorganic filler of the prior art. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786