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 .
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.
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.
Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nam (U.S. 20080283273).
Nam exemplifies in Table 1 and Table 2 compositions which include two ethylene butyl acrylates of differing melt indexes, carbon black, crosslinking agent and antioxidant.
From ¶[0039] the different ethylene butyl acrylates are:
ethylene butyl acrylate 1 having a melt index of 7 g/10 min and a butyl acrylate content of 17% by weight was used as the major base resin, and
ethylene butyl acrylate 2 having a melt index of 175 g/10 min and a butyl acrylate content of 28% by weight was used as the minor base resin.
ethylene ethyl acrylate 3 having a melt index of 7 g/10 min and an ethyl acrylate content of 15% by weight was used as the major base resin,
ethylene ethyl acrylate 4 having a melt index of 275 g/10 min and an ethyl acrylate content of 25% by weight was used as the minor base resin.
The differing melt indexes (high and low) are used to improve processability. ¶[0041]
The above exemplified composition anticipates Claim 1.
As a crosslinking agent is exemplified, one of ordinary skill in the art is reasonably suggested the resulting power cables from using the composition of Nam must have crosslinked compositions of the exemplified formulation. This anticipates Claim 10.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-4, 6, 9, 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Nam (U.S. 20080283273) and Smedberg (U.S. 20080308296).
Nam is applied under §102 as above
The ethylene butyl acrylates exemplified by Nam do not meet the relations of Claim 2. The exemplified ethylene butyl acrylates are combinations of MI1 that meets the claim but MI2 that is far in excess of the claimed inequality.
In ¶[0020] Nam teaches the minor resin (the higher melt index one) may have a melt index of 15 to 300 g/10 mins.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Nam, in particular those of the examples, such that the higher melt index ethylene butyl acrylate has a melt index of 15 to 300 g/10 mins because Nam suggests this range of the high melt index resin in ¶[0020]. On of ordinary skill in the art would have been motivated to choose melt indexes in the above range towards the lower end of the range to begin routine experimentation with Nam because the exemplified high melt index ethylene butyl acrylate copolymers are already exemplified at the higher end of the range taught by Nam. This would have led one of ordinary skill in the art to the melt indexes of 15 to 125 g/10 mins as this is the same separate from the lower end as the exemplified high melt indexes are from the top end (300 g/10 minutes).
Nam does not teach or suggest the melt index test conditions at all.
Smedberg, working in the field of polyolefin compositions for power cables similar to Applicant and Nam, teaches the melt flow rates are tested at 190 oC and 2.16 kg in units of g/10 mins. ¶[0139]. Ethylene butyl acrylate copolymers are taught in ¶[0169].
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Nam, in particular that of the examples, such that the melt indexes with unknown test conditions of Nam are done at 190 oC and 2.16 kg to achieve the disclosed values of Nam, such as the 7 g/10 min and 15 to 125 g/10 min ethylene butyl acrylate, because Smedberg teaches these test conditions are used in the are of power cable insulation of Nam as discussed above.
The recited conditions are 125 oC and 2.16 kg in g/10 minutes. The test conditions motivated above, therefore, differ the temperature (190 oC vs. 125 oC). This lower test temperature logically suggests the viscosity will be lower when tested at the lower test temperarture (more viscous) and less mass will flow per 10 minutes of time. This reasonably suggests the 7 and 15 to 125 g / 10 minutes MI of the two different ethylene butyl acrylates chosen at 190 oC, when tested according to the claimed test method, must have lower MI than the numbers above. The ranges, however, are still reasonably suggested to overlap the recited ranges at the recited test temperatures even with the lowering (1 to 8 g/10 mins and 15 to 125 g/10 mins ¶[0020] or the motivated range above) due to the breadth of the ranges. This overlap in the overlaps the recited ranges of Claim 2. These two ranges of overlap in Claim 2 also, therefore, overlap the ranges of Claim 4 for the same reason as above.
While Nam is silent on the difference between the MI recited by Claim 3, Nam’s ranges do set up a difference between the ranges that must overlap the claimed overlap even considering the above MI test condition difference as the difference affects both ranges in the same way. Therefore, one of ordinary skill in the art is reasonably suggested there must be a difference between the two MI of the two ethylene butyl acrylate polymers in Nam of 7 or more (15 -8) even at the lower temperature test conditions as this is the minimum difference between the reasonably suggested ranges of Nam. This 7 or more difference overlaps the claimed range of 11 to 20 of Claim 3.
Nam is silent on the specific antioxidants used. Smedberg teaches in ¶[0095] antioxidants for the power cable compositions may include sterically hindered or semi-hindered phenols.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Nam such that the unknown anti-oxidant used is a sterically hindered or semi-hindered phenol because Smedberg teaches this is a type of anti-oxidant used in making power cables such as those in Nam. This represents the combination of prior art elements, known anti-oxidants used in power cable compositions, to yield the predicable result of proper antioxidant in the composition of Nam. This reads over Claim 6.
The examples of Nam have the recited amounts of each of the components of Claim 9.
With respect to Claim 13, Nam is silent on the preparation of the cured product of Claim 13.
Smedberg teaches the compositions for power cables can be made such that the base resin and additives including anti-oxidants, are mixed together to form pellets then these pellets are mixed together with the crosslinking agent then fed into a cable extruder. ¶[0108]
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Nam using the processing technique of Smedberg discussed above because Nam does to not teach how to make the compositions and the Smedberg’s processing technique is taught be used to make power cables which Nam is drawn to produce. This represents the application of known technique, processing compositions for power cables, to yield a process power cable formulation.
The above additives (i.e. carbon black), antioxidant and base resin melt mixed (i.e. kneaded) together to produce a pellet (the recited chip form) and then further melt mixed (i.e. kneaded) with the crosslinking agent read over said steps of the method of Claim 13.
Smedberg exemplifies degree of crosslinking ¶[0136] and aging ¶[0143] for 1000 hours. Therefore, this reasonably suggests the above method of Smedberg must also include crosslinking and ageing the compositions which reads over step d) of the method of Claim 13.
To perform the degree of crosslinking test, Smedberg teaches the occurs at 10 minutes of crosslinking ¶[0136] which reads over the value of Claim 14.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Nam (U.S. 20080283273) and Smedberg (U.S. 20080308296) as applied to Claim 2 and in further view of Perego (U.S. 20130344329).
Nam and Smedberg are applied as above.
Nam and Smedberg are silent on the addition of a metal stearate.
Perego, working in the field of power cable compositions similar to Nam, Smedberg and Applicant, teaches the use of stearates such as zinc stearates as processing aides in cable jacketing compositions (such as those of Nam and Smedberg).¶[0076]
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Nam and Smedberg such that zinc stearate was added as a processing aid to the compositions because Perego teaches this is a processing aid for polymer compositions used in power cabling such as those of Nam and Smedberg. This represents the combination of known prior art elements, additives used in power cable jacketing compositions, for the predictable result of a power cable polymer composition.
This reads over Claim 7 and Claim 8.
In general as multiple §103s (including combined with §102) are made in this action, If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Applicant’s data in the as-filed specification does not provide any comparative data concerning the melt indexes of either ethylene butyl acrylate polymer, the differences thereof nor the types of ethylene butyl acrylate polymers used. The comparative examples only comparing using one ethylene butyl acrylate polymer vs. the inventive two ethylene butyl acrylate polymers of differing melt index. Nam already has this feature and, therefore, features Applicant may argue are present or advantageous from this feature must be present in Nam. In other words, those present and advantageous features are not considered truly unexpected as they are already present in Nam as Nam already exemplifies ethylene butyl acrylate resins with differing melt indexes.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-10 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-11 of U.S. Patent No. 12,570,843. Although the claims at issue are not identical, they are not patentably distinct from each other because combinations of claims of 12,570,843 read over the above instant claims as outlined below.
Claim 1 of 12,570,843 does not recite an antioxidant and crosslinking against as recited by instant Claim 1.
Claims 1, 6 and 7 of 12,570,843 represent a combination of ethylene butyl acrylate resins with differing melt index, antioxidant, carbon black and crosslinking agent which reads over instant Claim 1, Claim 2 (because the inequalities are met from the copolymers of Claim 1 of 12,570,843), Claim 5 and Claim 9.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of 12,570,843 by using the specific composition of Claim 7 of 12,570,843 because it is recited by 12,570,843 as a specific variant of the composition of Claim 1 of 12,570,843.
Claim 2 of 12,570,843 reads over instant Claim 2.
Claim 4 of 12,570,843 reads over instant Claim 3.
Claim 3 of 12,570,843 reads over instant Claim 4.
Claims 8 and 9 of 12,570,843 reads over instant Claim 7 and 8.
Claim 10 of 12,570,843 reads over instant Claim 10.
Claim 11 of 12,570,843 reads over instant Claim 12.
Claims 6, 13 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 7 and 11/12 of U.S. Patent No. 12,570,843 in view of Smedberg (U.S. 20080308296).
12,570,843 is applied as above.
12,570,843 is silent on the specific antioxidants used. Smedberg teaches in ¶[0095] antioxidants for the power cable compositions may include sterically hindered or semi-hindered phenols.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of 12,570,843 such that the unknown anti-oxidant used is a sterically hindered or semi-hindered phenol because Smedberg teaches this is a type of anti-oxidant used in making semiconducting compositions such as those in 12,570,843. This represents the combination of prior art elements, known anti-oxidants used in semiconducting compositions, to yield the predicable result of proper antioxidant in the composition of 12,570,843. This reads over Claim 6.
The examples of Nam have the recited amounts of each of the components of Claim 9.
With respect to Claim 13, Claim 12 of 12,570,843 is silent step d of the claimed method (curing and aging) but does teach a cured product in step c.
The masterbatch of 12,570,843 is the chip of instant Claim 13 which is then kneaded again with crosslinking agent (impregnating the crosslinking agent into the master batch). The ethylene butyl acrylates of differing melt index are present via the dependency to Clam 10.
Smedberg teaches the compositions for power cables can be made such that the base resin and additives including anti-oxidants, are mixed together to form pellets then these pellets are mixed together with the crosslinking agent then fed into a cable extruder. ¶[0108]
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Claim 12 of 12,570,843 to use the cable extruder of Smedberg to produce a semiconducting cured product because 12,570,843 does to not teach how to make the cured product and the Smedberg’s cable extruder is taught be used to make extruded semiconductor resin cured product using process steps significantly similar to that of 12,570,843 to make similar products (compounding all ingredients to make a masterbatch then further compounding the crosslinking agent in). This represents the application of known technique, processing compositions for power cables, to yield a process power cable formulation.
Smedberg exemplifies degree of crosslinking ¶[0136] and aging ¶[0143] for 1000 hours. Therefore, this reasonably suggests the above cable extrusion after compounding with similar steps to 12,570,843 using a cable extruder of Smedberg must also include crosslinking and ageing the compositions which reads over step d) of the method of Claim 13.
To perform the degree of crosslinking test, Smedberg teaches the occurs at 10 minutes of crosslinking ¶[0136] which reads over the value of Claim 14.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 5 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and resolution of the non-statutory double patenting rejections of record.
Claim 5 recites mol% of butyl acrylate monomer combined with melt index (which itself is a measure of polymer molecular weight and, therefore, molar amounts of monomers used to make the polymer). The closest prior art is Nam (U.S. 20080283273) which teaches ethylene butyl acrylates in terms of weight precents of butyl acrylates and melt indexes. The exemplified butyl acrylate 1 (17 wt% BA) , for instance, is ~ 4 mol% of butyl acrylate with respect to melt index of 7 g/ 10min. Nam teaches this component can have 10 to 20 wt% of butyl acrylate in ¶[0019]. Similarly, the higher wt% copolymers (28 wt%) have ~ 7.8 mol % BA. This suggests that one could not get to the combined mol % and melt index using Nam for the combined ethylene butyl acrylate of Nam without the use of hindsight.
For Claims 11 and 12, Applicant’s as-filed specification establishes the crosslinking density and volume resistivity properties claimed are not necessarily inherent either considered separately or combined. Smedberg (U.S. 20080308296) teaches crosslink density (Elastograph) of 0.93 to 0.98 N/m for use in power cabling compositions. The recited number is 1.5 N/m. There does not appear to be any motivation to increase or decrease this number for ethylene butyl acrylate cabling compositions to arrive at the claimed range without using hindsight.
Similarly, Yan teaches volume resistance measured at 90 oC of 200 [Symbol font/0x57][Symbol font/0xD7]cm in ¶[0081] for power cable compositions similar to Nam but there is no indication as to what this volume resistivity would be at 135 oC as recited. Therefore, one of ordinary skill in the art would only arrive at this property as recited using Nam through hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766