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 .
Claim Rejections - 35 USC § 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.
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.
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 1-4 and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jamieson et al. (2014/0199547) in view of Easter (6864429).
Jamieson et al. discloses a non-crosslinked ([0137]) semiconductive polymer composition comprising (a) an ethylene alkyl (meth)acrylate copolymer; (b) 15 to 48 wt% carbon black; and (c) 0.05 to 1.0 wt% of 4,4'-bis(1,1'-dimethylbenzyl)diphenylamine (Comp b, page 15 and Table 4); all weight percentages being based on the total weight of the semiconductive polymer composition (re-claim 1).
Jamieson et al. does not disclose the carbon black having the properties as claimed in claim 1.
Easter (col. 2) discloses a semiconductive polymer composition comprising carbon black which has an iodine adsorption number of 100 to 130 mg/g (ASTM D1510); an oil absorption number of 92 to 105 ml/100g (ASTM D2414); and an average particle size of 25 nm or less (ASTM D3849).
It would have been obvious to one skilled in the art to use the carbon black as taught by Easter for the carbon black in the composition of Jamieson et al. to provide a semiconducting composition having improved electrical properties (Easter, abstract).
Jamieson et al. also discloses that the ethylene alkyl (meth)acrylate copolymer is ethylene butyl acrylate (re-claims 2 and 16); the composition comprises at least 54 wt% or 54 to 85 wt% of the ethylene alkyl (meth)acrylate copolymer ([0048]) based on the total weight of the composition (re-claims 3 and 17); the ethylene alkyl (meth)acrylate copolymer comprises 9 wt% or more or 10 to 20 wt% of an alkyl (meth)acrylate comonomer ([0114] & [0117]) based on the total weight of the ethylene alkyl (meth)acrylate copolymer (re-claims 4 and 18); the carbon black forms 25 to 45 wt% of the semiconductive polymer composition based on the total weight of the composition (re-claim 6); the semiconductive polymer composition is free of other antioxidant (in [0045], Jamieson discloses that the composition may naturally comprise…antioxidant, but not being added; also in [0124], Jamieson discloses that adding antioxidant in the composition is optional) (re-claim 7).
Re-claim 8, Jamieson et al. does not disclose the non-crosslinked semiconductive polymer composition comprising 0.1 to 2.0 wt% peroxide, based on the total weight of the composition. Easter discloses the semiconducting polymer composition comprising 0.1 to 2.0 wt% of peroxide, based on the total weight of the composition (col. 4, lines36-38). It would have been obvious to one skilled in the art to include 0.1 to 2.0 wt% of peroxide, as taught by Easter, in the composition of Jamieson et al. such that the peroxide will be acted as a crosslinking agent when the composition is required to be crosslinked.
Re-claim 9, the modified semiconductive polymer composition of Jamieson et al. has a volume resistivity at 23°C of less than 100 Ohm.cm since it comprises material as claimed.
Re-claim 10, Jamieson et al., as modified, discloses a process for preparation of the composition as claimed in claim 1 including compounding components (a) to (c) at a temperature of 150 to 300°C ([0315]).
Re-claim 11, Jamieson et al., as modified, discloses a cable ([0319]) comprising a conductor which is surrounded by an inner semiconductive layer, an insulation layer, and an outer semiconductive layer in that order, wherein the inner and/or outer semiconductive layer comprises the non-crosslinked semiconductive polymer composition as defined in claim 1.
Re-claim 12, Jamieson et al., as modified, discloses the semiconductive polymer composition for the inner and/or outer semiconductive layer not being crosslinked ([0137]).
Re-claim 13, Jamieson et al., as modified, discloses a process for producing the cable comprising extruding ([0315]) on the conductor, the inner semiconductive layer, the insulation layer, and the outer semiconductive layer.
Re-claims 14 and 15, the modified non-crosslinked semiconductive polymer composition of Jamieson et al. is used in the manufacturing of inner and/or outer semiconductive layer of the cable, and the semiconductive polymer composition of Jamieson et al. will increase the smoothness of a semiconductive shield layer when using said composition since the semiconductive polymer composition of Jamieson et al. comprises material as claimed.
Re-claim 19, the ethylene alkyl (meth)acrylate copolymer of Jamieson et al. comprises the material as claimed, the ethylene alkyl (meth)acrylate copolymer of Jamieson et al. would have an MFR2 of 4.0 to 15 g/10min (ISO 1133 190°C and 2.16 kg load) as claimed.
Re-claim 20, the inner and/or outer semiconductive layer of Jamieson et al. consists of the semiconductive polymer composition.
Response to Arguments
Applicant's arguments filed 02/27/2026 have been fully considered but they are not persuasive.
Applicant argues that the iodine number (IAN) and oil absorption number DBP/OAN ranges of Easter are much broader than those cited in claim 1. Faced with such broad ranges, the skilled person would rely on the Examples and the preferred embodiments disclosed in the Easter reference regarding where within the ranges they should operate. Examiner would disagree. Noticed that claim 1 is rejected under 35 USC 103, not 102. Easter does teach the IAN and DBP ranges as claimed. It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005). See also In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992); MPEP § 2144.08.
Applicant argues that Easter, col. 2 lines 60-62, discloses the carbon black having a DBP number of 110 to 150 cm3/100g. This does not overlap with the range presently claimed. Examiner would disagree because in col. 2 lines 60-61 of Easter, it is disclosed that the DBP number is in the range of about 90 to about 170 cm3/100g. Accordingly, the claimed is inside the range taught by Easter, and as stated in the above, where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Applicant points to Easter, col. 2 lines 64-67, to argue that Easter teaches away from the carbon black presently claimed. Examiner would disagree. In col. 2 lines 64-67, Easter discloses that carbon black with DBP below 90 and IAN below 85 are not conductive enough for semiconductive shields. Therefore, Easter teaches using carbon black having DBP between 90 and 170 cm3/100g and IAN between 115 and 200 mg/g (col. 2, lines 57-61), meeting the claimed ranges.
Applicant states that if the ranges of Easter already overlap with the carbon black exemplified in Jamieson, the why would one of ordinary skill in the art be motivated to change the carbon black of Jamieson with another carbon black of Easter? There is no reason to combine Jamieson with Easter. Examiner would disagree. Jamieson, [0127], teaches that “Any carbon black can be used which is electrically conductive and provides semiconductive property needed for the semiconductive layer.” Easter, col. 2 lines 7-16, concentrates on using particular carbon black to provide “a conductor shield material with both low cost and improved performance…exhibit superior performance over time…as compared to conductor shield compositions using conventionally available carbon blacks.” Accordingly, one skilled in the art would have motivated to use the carbon black taught by Easter in the semiconductive composition of Jamieson.
Applicant argues that it is clear from the examples in Easter that a peroxide is present. Claim 1 is limited to non-crosslinked systems. Examiner would disagree. Easter is relied upon only to support the position of using certain carbon blacks in a semiconductive composition. Feature of non-crosslinked system is already taught in Jamieson.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841