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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/13/2026 has been entered.
Claims 1, 5-9, 13-19,22 and 23 are pending.
Response to Amendment
The previous rejection of claims 1, 3-6, 9, 11-14, 16 and 17 under 35 U.S.C. 103 as being unpatentable over Aimoto et al (JPS59217737) in view of Doufas et al. (US2018/0079845) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 7, 8 and 15 under 35 U.S.C. 103 as being unpatentable over Aimoto et al (JPS59217737) in view of Doufas et al. (US2018/0079845) and Song et al. (US2010/0224399) is withdrawn in view of applicant’s amendment.
The previous rejection of claims 18 and 19 under 35 U.S.C. 103 as being unpatentable over Aimoto et al (JPS59217737) in view of Doufas et al. (US2018/0079845) and Yonahara et al. (US4,585,578) is withdrawn in view of applicant’s amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 5-9, 13-19, 22 and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 9 recite a limitation “the polyethylene polymer has a monomodal molecular weight distribution”. This limitation was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant states that support for the limitation is an inherent property of the Formolene® HL5010 polyethylene polymer, which is present in the examples (Table 1). However, new or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971). The disclosure of a species (Formolene® HL5010 polyethylene polymer) in the specification does not suffice to provide written description support for the genus (polyethylene polymer has a monomodal molecular weight distribution). See MPEP 2163.
Claims 22 and 23 recite “the high molecular weight polyethylene copolymer”. There is insufficient antecedent basis for this limitation in the claim.
Claims 5-8, 13-19, 22 and 23 are rejected as being dependent on a rejected claim.
Claim Rejections - 35 USC § 103
Claims 1, 5, 6, 9, 13, 14, 16, 17, 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Aimoto et al (JPS59217737) in view of Mihan et al. (US 2007/0213205) and Hoecket et al (US20160280896). The machine translation of Aimoto reference is replied upon for the rejection purposes.
Regarding claims 1, 17, 22 and 23, Aimoto discloses a composition comprises (a) plastic as matrix in which (b) a conductive carbon black and (c) powdery graphite are mixed and homogeneously dispersed (abstract). The ratio of (a), (b) and (c) is 40-70:9-51:9-51 by wt. Plastic (a) is polyolefin resin, preferably a high-density polyethylene; component (b) has specific surface area, 1000 m2/g or more; and component (c) has average particle diameter 10 micron or less (abstract). Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103, See In re Wertheim 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and MPEP 2144.05, I.
Aimoto does not disclose the polyethylene polymer comprises a copolymer comprising ethylene monomer and hexene comonomer and has the claimed properties. Mihan discloses a polyethylene, which is a copolymer comprising ethylene monomer and hexene monomer (para 0034) and having a density from 0.89 to 0.97 g/cm3 (para 0014), and an Environmental Stress-Cracking Resistance (ESCR) of least 160 h (para 0033). Doufas discloses the polyethylene polymer comprises a copolymer comprising ethylene monomer and hexene monomer (Doufas, para 0093 and 0208) and the polyethylene polymer has a melt flow rate (MFR) of 5 to 50 g/10 min (HLMI para 0029). Mihan also discloses the polyethylene can be monomodal (para 0020). Mihan does not disclose a degree of crystallinity of the polyethylene is about 61.5% as determined by differential scanning calorimetry. Heocket disclose the degree of crystallinity depends on the co-monomer content, the polyethylene having the higher co-monomer content means lower level of crystallinity, lower comonomer content means higher level of crystallinity (para 0027). One of ordinary skill in the art would determine a suitable degree of crystallinity of a polyethylene by adjusting the content of the co-monomer in the polyethylene, to produce the polyethylene having good mechanical properties and good processability. It would have been obvious to one of ordinary skill in the art before the filling date of the invention to replace the polyethylene in the composition of Aimoto with the polyethylene of Mihan, which has good mechanical properties, good processability, suitable for producing fibers and moldings, in particular for pipes and crosslinkable pipes. They are likewise suitable for blow molding, molding or injection molding. They are also suitable as compounding components, bonding agents and as rubber components in polypropylene, in particular in polypropylene compounds having high impact toughnesses (para 0013, 0016 and 0045). Given that the composition of Aimoto in view of Doufas comprises of all elements in the claimed composition, a person having an ordinary skill in the art would reasonably expect the composition of Aimoto in view of Doufas to have the claimed volume electrical resistivity and MFR. 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 II. The claim also would have been obvious over the teachings of the reference because overlapping ranges would have been obvious. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and MPEP 2144.05, I.
Regarding claim 5, Aimoto discloses the graphite is a synthetic graphite (Tokai Carbon Co. Ltd, graphite powder 200-page 216- (6)).
Regarding claim 6, Aimoto discloses the carbon powder filler has a BET surface area of at least 60 square meters per gram (m2/g) as determined in accordance with ASTM D3037 (page 4).
Regarding claim 9, Aimoto discloses a method for forming the composition of claim 1, the method comprising combining the at least one polyethylene polymer, the at least one graphite filler and the carbon powder filler to form a mixture; and extruding (kneading) the mixture to form the composition (page 4).
Regarding claim 13, Aimoto discloses the graphite is a synthetic graphite (Tokai Carbon Co. Ltd, graphite powder 200-page 4).
Regarding claim 14, Aimoto discloses the carbon powder filler has a BET surface area of at least 60 square meters per gram (m2/g) as determined in accordance with ASTM D3037 (page 4)
Regarding claim 16, Aimoto discloses the graphite has a D90 particle size of less than 75microns (200 mesh size, page 4).
Claims 7, 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Aimoto et al (JPS59217737) in view of Mihan et al. (US 2007/0213205) and Hecker et al (US20160280896) as applied above, and further in view of Song et al. (US2010/0224399).
Song et al discloses an electromagnetic wave shielding sheet (abstract). Song discloses the thickness of the electromagnetic wave shielding sheet may be adjusted according to an electronic device to which the electromagnetic wave shielding sheet of the present invention is applied, and is preferably about 0.1 to 10 mil (para 0053). Aimoto in view of Mihan and Hoecker discloses a composition comprises (a) polyethylene (b) a conductive carbon black and (c) powdery graphite as described above and is incorporated herein by reference. It would have been obvious to one of ordinary skill in the art before the filling date of the invention to forming an electromagnetic wave shielding sheet having a thickness of about 0.1 to 10 mil using the composition taught by Aimoto in view of Mihan and Hoecker, which can be lightweight and has excellent processability, with a reasonable expectation for providing excellent electromagnetic wave shielding properties to the device to which the electromagnetic wave shielding sheet of the is applied.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Aimoto et al (JPS59217737) in view of Mihan et al. (US 2007/0213205) and Hoecker et al (US20160280896) as applied above, and further in view of Yonahara et al. (US4,585,578).
Aimoto in view of Mihan and Hoecker discloses a composition comprises (a) polyethylene (b) a conductive carbon black and (c) powdery graphite as described above and is incorporated herein by reference. Aimoto discloses commercially available conductive carbon black can be used (para 0001). Yonahara discloses electrically conductive carbon blacks having the surface area in the range of 245 to 1000 m2/g in producing electrically conductive plastic composition (col 2, ln 47-52). It would have been obvious to one of ordinary skill in the art before the filling date of the invention to select electrically conductive carbon blacks having the surface area of about 800 m2/g in producing the composition of Aimoto in view of Doufas, with a reasonable expectation for providing electrically conducting property to the composition.
Response to Arguments
Applicant’s arguments filed 4/13/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/HAIDUNG D NGUYEN/Primary Examiner, Art Unit 1761
4/30/2026
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