DETAILED ACTION
This Office Action is responsive to the amendment filed on 3/10/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
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 § 103
Claim(s) 40-53 are rejected under 35 U.S.C. 103 as being unpatentable over Nilsson et al, WO2011/113686 (of record), in view of Li Pi Shan et al, WO2011/163187 (of record).
Nilsson discloses a polymer composition (for claim 40) which is used in the production of insulating layers for power cables (for claim 40), wherein said composition comprises a polyolefin (a) and a second polyolefin (b) which is different from said polyolefin (a) (page 3: lines 15-29). Nilsson does not require the addition of a peroxide (for claims 40, 41); furthermore, Nilsson expressly teaches an embodiment of the prior art composition that does not contain a crosslinking agent and is not crosslinked (for claims 40, 41) (page 8: lines 19-22). The prior art composition is not required to comprise carbon black (for claims 40, 41). The prior art composition is applied to a conductor via extrusion (for claim 41) (page 28: lines 21-29).
Regarding the claimed low density polyethylene (LDPE): The prior art polyolefin (b) is preferably a LDPE which may be a homopolymer (page 7: lines 24-27), corresponding to the claimed LDPE (for claims 40, 41, 47, 51-53). Further note that Nilsson teaches that
the prior art composition comprises up to 100 wt% of the combination of polyolefins (a) and (b) (page 11: lines 1-3), and
the amount of polyolefin (b) is 0.1 to 99.9 wt% based on the sum of the amounts of polyolefin (a) and polyolefin (b) (page 7: lines 14-19).
Based on these numbers, it is estimated that the prior art composition comprises polyolefin (b) in an amount ≤ 99.9 wt%, overlapping the claimed range for the amount of LDPE (for claims 40, 41, 51-53).
Regarding the claimed polypropylene: The prior art polyolefin (a) is preferably a propylene-based resin chosen from a propylene homopolymer, a random copolymer of propylene with one or more comonomers (for claims 48, 49, 51, 52), or a heterophasic copolymer of propylene with one or more comonomers (for claims 42, 53) (page 7: lines 1-3). Said heterophasic copolymer may comprise a random propylene copolymer as the matrix (for claim 42) (page 17: lines 29-30). The prior art polyolefin (a) therefore corresponds to the claimed polypropylene (for claim 40).
Further note that Nilsson teaches that
the prior art composition comprises up to 100 wt% of the combination of polyolefins (a) and (b) (page 11: lines 1-3), and
the amount of polyolefin (a) is 0.1 to 99.9 wt% based on the sum of the amounts of polyolefin (a) and polyolefin (b) (page 6: lines 12-17).
Based on these numbers, it is estimated that the prior art composition comprises polyolefin (a) in an amount ≤ 99.9 wt%, overlapping the claimed range for the amount of polypropylene (for claims 40, 41, 51-53).
Regarding claim 43: The prior art composition is preferably characterized by a conductivity in the range of 0.01 to 80 fS/m when measured at 30 kV/mm (page 5: lines 26-30; page 44: lines 23-25), overlapping the claimed range.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05). The prior art ranges overlap the claimed ranges. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition comprising the required amounts of LDPE and polypropylene in view of the teachings of Nilsson.
Nilsson is silent regarding the inclusion of 0.25 to 10 wt% of a compatibilizer.
Li Pi Shan discloses a block composite comprising an ethylene/C2-30olefin block copolymer (¶9, 56), corresponding to the claimed compatibilizer which is a block copolymer (for claim 40), wherein said composite can be used as a compatibilizer (¶2) for blends of LDPE with propylene (co)polymers (¶9). Said block composite comprises 5 to 99 wt% of the block copolymer (¶69), and is preferably added to a composition in an amount in the range of 0.5 to 15 wt% (¶79). Based on the content of block copolymer in the composite, this corresponds to a final concentration of block copolymer in the compatibilized blend in the range of 0.025 to 14.85 wt%, overlapping the claimed range (for claims 40, 41, 51-53). Li Pi Shan teaches that addition of the composite results in improved properties (¶83), and that it can be used in compositions for extrusion coating (¶84).
As taught by Li Pi Shan, it was known in the art to add a compatibilizer comprising a block copolymer to blends of LDPE and propylene (co)polymers to improve the properties of the final blend. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to modify the composition of Nilsson by adding the block composite compatibilizer of Li Pi Shan, in order to improve the compatibility of the polymer components and obtain a composition having the improved properties taught by the prior art.
Regarding the claimed properties of conductivity (for claims 44-46), melting point (for claim 50): “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As discussed in the previous paragraphs, the prior art renders obvious a composition comprising the same components in the same amounts as the claimed invention. As the composition rendered obvious by the prior art appears to be the same as the claimed composition, it is reasonably expected that its properties would not be materially different from those of the claimed composition. The burden is therefore shifted to the applicant to provide evidence that the properties used to define the claimed composition would not be present in the composition rendered obvious by the prior art.
Response to Arguments
Applicant’s arguments, see page 7, filed 3/10/2026, with respect to the rejection(s) over Steffl et al, US2012/0325515, in view of Chaudhary, WO2016/200600 of record have been fully considered and are persuasive. Applicant argues that neither Steffl nor Chaudhary teaches the inclusion of a block copolymer as required by the amended claims. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Nilsson in view of Li Pi Shan as discussed earlier in this Action.
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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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, Heidi Riviere Kelley can be reached at 571-270-1831. 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.
/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
Prosecution Insights