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
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.
Claims 1, 3-7 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cristofani et al (WO 2019223878 cited as US 20210210253) in view of Cleveland et al (US4454379) as evidenced by Engineering Toolbox database.
Cristofani is directed to a high voltage power cable with fatigue-resistant water barrier. Cristofani teaches a power cable (105; 205) comprises an insulated conductor (110, 210); a copper water barrier (140; 240), in form of a tube with a welding line (141, 241), surrounding each insulated conductor (110, 210); and a polymeric sheath (150; 250) surrounding each copper water barrier (140; 240). The copper water barrier (140; 240) has a thickness and the polymeric sheath (150; 250) has a thickness such that a ratio between the thickness of the copper water barrier (140; 240) and the thickness of the polymeric sheath (150; 250) is 0.15 at most (ABST).
PNG
media_image1.png
334
468
media_image1.png
Greyscale
Cristofani teaches a water barrier around a cable core as claimed and the water barrier is copper which is inherently lead free and an outer layer that is a polymeric sheath.
Cristofani teaches an adhesive layer, is interposed between and in direct contact with the copper water barrier and sheath[0023].
Cristofani teaches the sheath 150 can have thickness of from 3 and 7 mm, for example of from 4 to 6 mm. The copper water barrier 140 can have a thickness selected in the range from about 0.2 mm and about 1.0 mm, also depending on the thickness of the sheath 150, so to achieve a ratio between the thickness of the water barrier copper 140 and the thickness of the sheath 150 less than or equal to 0.15 [0046].
A ratio of 0.15 overlaps the claimed range of at least 0.15.
Cristofani teaches an example wherein an insulated conductor 110 as depicted in FIG. 1, optionally surrounded by a cushion layer 135 (manufacturing process steps up to the formation of the insulated conductor 110 and of the optional cushion layer 135 are not described, being known per-se), a copper foil or copper sheet, for example with a width of 280 mm and a thickness of 0.5 mm, is caused to pass through a set of straightening rolls to straighten and apply the proper tension to the strip. Using the metal foil thickness of 0.5/3mm outer sheath, the ratio is 0.16 and greater than 0.15 as claimed [0049].
Cristofani meets the claimed limitation of an outer sheath layer that is 1.5 to 3 mm as Cristofani overlaps the claimed range at 3 to 7 mm. Crisofani further overlaps the claimed limitation of a ratio of metal foil to polymeric sheath of 0.15. As the range of the metal foil is 0.2 to 1.0 and sheath is 3 to 7, 1/3 = 0.33 and in claimed range of greater than at least 0.15.
The power cable comprises a copper made water barrier in form of welded tube surrounding each insulated conductor and a polymeric, optionally semiconductive, sheath surrounding the water barrier, wherein the thickness of the copper barrier is reduced with respect to that of the sheath. The ratio between copper barrier thickness and sheath thickness is equal to or lower than 0.15 [0017]. Such a reduction of the copper water barrier thickness allows the sheath to better protect the metal layer which, in turn, maintains its water barrier properties and fatigue and bending resistance [0018].
Cristofani teaches the polymeric sheath is semiconductive but differs and does not specify a polyethylene sheath nor the modulus of the sheath (claims 1 and 3).
Cleveland is directed to semi-conductive moisture barrier shielding tape and cable (Title). Cleveland teaches a cable (as shown in Fig. 1) wherein the inner layer is a metallic foil layer (12); an adhesive layer (14); and a semiconductive film (16) as the outer layer. The film (16) is polyethylene with carbon black.
Cleveland teaches the polyethylene with carbon black is preferred for their resistivities of 50 to 10000 ohm-cm (col. 5, lines 37-48).
Cleveland does not teach the properties of the elastic modulus of the metal foil and the polyethylene outer layer, as Cleveland teaches the same materials and structure, it is reasonable to presume that the properties are inherent to Cleveland.
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention the examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112- 2112.02
Evidence that the modulus would be inherent to the materials claimed is found in the Engineering Toolbox https://www.engineeringtoolbox.com/young-modulus-d_417.html and https://www.engineeringtoolbox.com/polymer-properties-d_1222.html. For example the elastic modulus for aluminum is 69 GPa which is below 210 GPa and for polyethylene HDPE is 0.8 and polyethylene is 0.7 which is greater than 0.5 GPa.
As to claims 1 and 3, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate a semi-conducting polyethylene sheath of the claimed modulus motivated to employ a polymer sheath with the desired resistivity, fatigue and bending resistance.
As to claim 4, Cristofani teaches the metal foil can be smooth or corrugated [0007].
As to claim 5, Cristofani teaches the copper foil has a thickness of 0.2 to 1 mm which is 200 to 1000 micron and overlaps the claimed range.
As to claims 6 and 7, Cristofani teaches a copper metal foil water barrier.
As to claim 9, Cristofani teaches the adhesive layer can be 0.1 mm to 0.3 mm [0044] which is 100 to 300 micron as claimed.
As to claim 10, Cristofani differs and does not teach a polyethylene sheath.
Cleveland teaches the semi-conducting polymer is a polyethylene, such as high density polyethylene, or copolymers such as ethylene-acrylic acid copolymer (col. 6, lines 29-47).
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ a polyethylene semi-conducting sheath motivated to provide a polymeric sheath on metal water barrier.
As to claim 11, Cristofani differs and does not teach a polyethylene sheath.
Cleveland is silent with regard to the modulus. The engineering toolbox provides evidence that the modulus for polyethylene is 0.7 or 0.8 GPa.
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ a polyethylene semi-conducting sheath motivated to provide a polymeric sheath on metal water barrier with the desired strength.
As to claim 12, Cristofani differs and does not teach a carbon black in the sheath.
Cleveland teaches the semiconductive polyethylene has 4-30% carbon in the composition which is within the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the claimed amount of carbon black motivated to produce a semi-conducting sheath.
As to claim 13, Cristofani teaches the thickness of the polymer sheath is 3 to 7 mm and outside of the claimed range. Cristofani teaches the ratio of metal thickness to polymer thickness provides for fatigue and bending resistance with water barrier properties of the metal layer.
Cleveland teaches the semiconductive polymer film has a thickness of 0.001 to 0.05 inches which is equivalent to 0.0254 mm to 1.27 mm which is less than the claimed range.
A thickness of 3 mm is substantially the same as 2 mm and a thickness of 1.27 mm is also substantially the same as 1.5 mm. In the absence of evidence of an unexpected result, the claimed thickness is obvious over the prior art.
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ a 1.5 to 2 mm thick outer sheath motivated to achieve the desired polymer layer on the metal water barrier to protect the water barrier. It would have been obvious to one of ordinary skill in the art before the effective filing date to optimize the layer thickness as the prior art teaches thicknesses that cover the range of 1.5 to 2 mm and achieve fatigue, bending resistance and water barrier properties.
As to claim 14, Cristofani and Cleveland teach cable with a metal water barrier and polymeric sheath.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Cristofani et al (WO 2019223878 cited as US 20210210253) in view of Cleveland et al (US4454379) as evidenced by Engineering Toolbox database and in view of Eggertsen et al (EP 2312591).
As to claim 8, Cristofani teaches the adhesive layer is co-extruded with the polymer sheath which infers a thermoplastic adhesive, i.e. a hot melt adhesive, but does not explicitly teach a hot melt adhesive.
Cleveland teaches an adhesive layer but is silent with regard to a hot melt adhesive layer.
Eggertsen is directed to a fatigue resistant metallic moisture barrier for a submarine power cable. he present invention concerns a submarine power cable (10) comprising an electrical conductor (1) surrounded by an insulation (2,3,4), said insulation being surrounded by a metallic moisture barrier (5) characterized in that the cable (10) further comprises a semi-conductive adhesive layer (6) surrounding said metallic moisture barrier (5), and a semi-conductive polymeric jacket (7) able to be in electrical contact with sea water surrounding said semi-conductive adhesive layer (6), the overlaying of the metallic moisture barrier (5), the semi-conductive adhesive layer (6) and the semi-conductive polymeric jacket (7) forming a 3-layer sheath (ABST).
The adhesive layer (6) is a hot melt adhesive layer such as maleic anhydride modified polyethylene [0017]-[0025].
The hot melt adhesive material has a thickness of 0.3 mm which is equivalent to 300 micron as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing date to employ the claimed adhesive motivated to produce a water and fatigue resistance barrier cable.
Response to Arguments
Applicant’s amendments and arguments, with respect to Cleveland have been fully considered and are persuasive. Cleveland does not teach the claimed thickness of the outer polymer sheath. The 35 USC 102/103 rejection over Cleveland as evidenced by the Engineering toolbox has been withdrawn. New grounds of rejection is presented over Cristofani in view of Cleveland and evidenced by the Engineering Toolbox.
With respect to Applicant’s arguments over Eggertsen and claims 8 and 13 are not persuasive. Applicant argues that Eggertsen does not cure the deficiencies of Cleveland as Eggertsen does not describe the feature of an outer layer of polyethylene-based semiconducting polymer. Eggertsen is relied upon for teaching the adhesive between polymer sheath and the metal water barrier. Eggertsen is not relied upon for teaching the semi-conducting polyethylene. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The rejection is revised to include Cristofani which teaches an outer sheath and an extrudable adhesive and then Cleveland for the polyethylene species and Eggertsen for a hot melt type adhesive. As Eggertsen teaches the claimed feature for use in a cable with a metal barrier and polymeric sheath, it would have been obvious to select the claimed adhesive.
Applicant argues that claimed invention differs from Eggertsen especially from a specific choice of parameters and leads to effects that are not contemplated in Eggertsen, especially an especially good fatigue strength. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., fatigue strength) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Eggertsen may be how to provide a lightweight mechanically reinforced water barrier for a cable. Eggertsen suggests that fatigue resistance and thickness are linked and that fatigue resistance is related to the adhesion between the layers. Applicant concludes that the skilled person starting from Eggertsen and attempting to solve the above problem would seek to improve the adhesion and may attempt to increase thicknesses. Applicant concludes from the cited paragraphs in the remarks, the nothing in Eggertsen to suggest a thinner layer having a higher elastic modulus. The rejection over claim 13 including Eggertsen is withdrawn in view of Cristofani.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER A STEELE whose telephone number is (571)272-7115. The examiner can normally be reached 9-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER A STEELE/ Primary Examiner, Art Unit 1789