DETAILED ACTION
Information Disclosure Statement
The information disclosure statement filed September 4, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. The non-patent literature publication which was not supplied was not considered by the examiner, as indicated by a strike-through. All other cited art was considered.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-6, 10, 11 and 13 in the reply filed on April 21, 2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, 10, 11, and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1: The parentheses in claim 1 around the number of carbon atoms per alkyl group (for example “C1-C5”) render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required.
Regarding claim 3: The parentheses in claim 3 around the number of carbon atoms per alkyl group (for example “C2-C5”) render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required.
Regarding claim 4: The parentheses in claim 4 around the number of carbon atoms per alkyl group (for example “C4-C20”) and the second part of the copolymer (for example “unsaturated carboxylic ester”, render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required.
Regarding claim 11: Claim 11 is dependent on a withdrawn claim. Since the crosslinked polyolefin product of claim 9 appears to be the polyolefin formulation of claim 1 that has been crosslinked, it is taken to mean that claim 11 has the scope of a coated conductor comprising a conductive core and an insulation layer at least partially covering the conductive core, wherein the insulation layer comprises the polyolefin formulation of claim 1 that has been crosslinked.
Regarding claim 13: The parentheses in claim 13 around “increase” render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required.
Further, in claim 13, limitations from the specification are not read into the claims, and claim limitations cannot refer back to the specification since it is unclear to a person having ordinary skill in the art how much of the specification and which specific sections change the scope of the claims. Appropriate correction is required. It is suggested to delete the phrase “described in the description” since both the Electrical Breakdown Strength Test Method and Weibull Statistics Method are art recognized standards that a person having ordinary skill in the art would understand.
Claim Rejections - 35 USC § 102
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.
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 1-4, 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Si et al. (CN 111378287) using the English language machine translation supplied by the examiner with this action.
Regarding claims 1-4: Si et al. teaches a polyolefin formulation comprising a polyolefin polymer/EPDM rubber (para. 12), which is an ethylene/propylene/diene monomer terpolymer and a crotophenone compound/1-phenyl-2-buten-1-one (para. 13), which is the claimed formula where Ar is phenyl, and R is methyl.
Regarding claims 10 and 11: Si et al. teaches a conductor and an insulation layer (para. 4) and a cable sheath material made of the formulation (para. 11) which is crosslinked (para. 25).
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.
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Si et al. (CN 111378287) using the English language machine translation supplied by the examiner with this action as applied to claim 1 set forth above.
Regarding claim 13: Si et al. teaches the basic claimed invention as set forth above. While the reference does not specifically disclose the improvement in electrical breakdown strength, mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to improve the electrical breakdown strength of the polyolefin formulation with a crotophenone compound as in Si et al. and would have been motivated to do so since Si et al. teaches the compound acts as a heat resistant additive, and therefore would be beneficial to add to the formulation.
Allowable Subject Matter
Claims 5-6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Si et al. is the closest prior art, but does not teach an overlapping amount of the components as in claims 5 and 6.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 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, Mark Eashoo can be reached at 571-272-1197. 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.
/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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