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 § 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 1-19 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.
Claims 1 and 16 recite “A highly heat-resistant and flame-retardant polymer composite composition for cable covering”. The term “highly heat-resistant” in claims 1 and 16 is a relative term which renders the claim indefinite. The term “highly heat-resistant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicant’s specification does not define or provide guidance on how to determine what is “highly” heat-resistant and therefore the scope of the claim is indefinite.
Claims 2-19 are rejected for being dependent on a rejected base claim.
Claim Analysis
Claim 1:
A highly heat-resistance and flame-retardant polymer composite composition for cable covering, the composition comprising
45% to 70% by weight of a polyolefin- based resin composition,
20% to 35% by weight of a calcium- based flame retardant,
1% to 10% by weight of a non-halogen- based flame retardant,
and 1% to 10% by weight of a crosslinking agent, based on the total weight of the composition.
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.
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, 7, 9-19 are rejected under 35 U.S.C. 103 as being unpatentable over Belli et al. (US PG Pub 2003/0141097 A1).
Regarding claim 1, Belli et al. teach a self-extinguishing cable, wherein the cable comprises at least one flame retardant coating, wherein the flame retardant coating is produced from a polymeric material and at least one intumescent agent (Abstract, claim 1), wherein the polymeric material is a polyolefin ([0056], claim 9), wherein the polymeric material comprises at least one mineral filler (claim 19), wherein the mineral filler is a flame-retardant filler (claim 21) and wherein the flame-retardant filler is calcium carbonate (claim 23) thereby reading on the calcium based flame retardant, wherein the flame retardant also comprises magnesium hydroxide (claim 22, [0071]) thereby reading on the claimed “non-halogen-based flame retardant” and wherein the polymeric material is subjected to a crosslinking stage (claim 28) thereby reading on the crosslinking agent. Belli et al. teach the crosslinking agents in “suitable amounts” [0062] and also teach the flame retardants are present in an amount of not more than 60 phr (per 100 parts by weight of rubber) [0071].
Belli et al. and the claims differ in that Belli et al. do not teach the exact same amounts for the polyolefin, calcium flame retardant, non-halogen flame retardant and the crosslinking agent as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Belli et al. (100 phr, up to 60 phr for the flame retardants) overlap the instantly claimed ranges once all the components are considered (45 to 70% by weight of polyolefin, 20% to 35% by weight of calcium-based flame retardant and 1 to 10% by weight of non-halogen flame retardant) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding the amount of cross-linking agent, Belli et al. teach the crosslinking agents in “suitable amounts” [0062]. The amount of cross-linking agent will affect the resulting amount of crosslinking in the polymeric material. Therefore, the amount of crosslinking agent can be optimized to reach the desired amount of crosslinking via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the compounds for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding claim 7, Belli et al. teach calcium carbonate [0071].
Regarding claim 9, Belli teach magnesium hydroxide [0071].
Regarding claim 10, Belli et al. teach phosphorus flame retardants [0013] such as melamine cyanurate, among others.
Regarding claim 11, Belli et al. teach crosslinking agents such as triallyl cyanurate and triallyl isocyanurate [0100].
Regarding claims 12 and 15, Belli et al. teach the vinyltrimethoxy silane [0081] thereby reading on the organosilane as required by the instant claims.
Regarding claims 13-14, these claims are further limiting the optional embodiment of styrene based block copolymer in claim 12, whereas Belli et al. teach the organosilane of claim 12 thereby satisfying the claim requirements.
Regarding claims 16 and 18-19, Belli et al. teach a cable covering comprising the polymer composition wherein the cable covering has flame retardant properties and an insulating layer (Abstract, [0004]).
Regarding claim 17, Belli et al. teach the polymer composition according to claim 1 as set forth above wherein the composition has flame retardancy properties [0018-0019] and heat resistance.
Belli et al. do not particularly teach the composition tested using the UL 1581 VW-1 standard or the heat resistance at 125 °C temperature or higher.
However, the importance of flame retardancy is acknowledged by Belli et al. and further Belli et al. teach the same composition as set forth in the rejection above. Therefore, the composition of Belli et al. when tested under the same flame retardancy and heat resistance standards as set forth in the claim would be expected to result in the same heat resistance and flame retardancy as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (polyolefin, calcium and metal oxide flame retardants and crosslinking agents) within the claimed proportions for the same utility (cable coverings).
Claims 2-6 are rejected under 35 U.S.C. 103 as being unpatentable over Belli et al. (US PG Pub 2003/0141097 A1) in view of Kim et al. (WO 2010/047469).
Regarding claims 2-4 and 6, Belli et al. teach the composition according to claim 1 as set forth above and incorporated herein by reference.
Belli et al. do not teach the polar polyolefin based resin and are further silent regarding the amount of polar monomer and are further silent on the molecular weight, Shore hardness and melt flow index of the polar monomer.
Kim et al. teach halogen-free insulating composition for insulating a cable (Title) comprising a base resin in an amount of 50 to 98wt% and a polyolefin grafted with a polar functional group (Abstract, claim 1), wherein the polyolefin grafted with a polar functional group is present in an amount of 2 to 50 wt%, wherein the polar functional group may be polyethylene, EVA or ethylene-ethyl acrylate copolymer grafted with maleic anhydride or glycidyl methacrylate (p. 3 , [8]) and wherein the base resin has a molecular weight of from 20,000 to 700,000, a Shore hardness of 20D to 80D (p. 3, [8]), and wherein a preferred embodiment has a Shore hardness of 36D, [43-45] and a melt flow index of 1.5 g/10 min. Kim et al. is considered to be analogous art due to both Kim and Belli being related to cable coverings having flame retarding properties. Kim et al. offer the motivation of choosing a composition having the polar functional group due to its ability to result in an insulation layer that is flexible, maintaining mechanical strength, excellent in oil resistance and abrasion resistance (p. 3, [9]). In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the polyolefin grafted with a polar monomer group in the composition of Belli et al., thereby arriving at the claimed invention.
Belli et al. in view of Kim do not particularly teach the exact same amounts for the polar polyolefin based resin as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Kim et al. (polyolefin grafted with a polar functional group is present in an amount of 2 to 50 wt% and a base resin in an amount of 50 to 98%) overlap the instantly claimed ranges (weight ratio of polar polyolefin to polyolefin based resin of 1:9 to 7:3 and the polar monomer in an amount of from 0.1 parts to 5 parts by weight) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 5, Belli et al. teach the polyolefin is selected from polyethylene, polypropylene, ethylene/vinyl acetate, among others [0055].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Belli et al. (US PG Pub 2003/0141097 A1) in view of Lim, et al. (KR 2020/0053903; English Machine Translation provided herewith).
Regarding claim 8, Belli et al. teach the composition according to claim 1 as set forth above and incorporated herein by reference.
Belli et al. are silent regarding the moisture content of the calcium based flame retardant.
Lim et al. teach wire coating materials for insulating electrical wires comprising flame retardants and having high temperature long term heat resistant properties (Abstract) wherein the base polymer comprising maleic anhydride grafted polyethylene and calcium oxide wherein the calcium oxide is a moisture absorbent and wherein the moisture content of the wire sheathing material is controlled by the presence of the calcium oxide [0024]. Lim et al. offers the motivation of controlling the moisture content due to its ability to maintain tensile strength and flame retardancy [0024]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to control the moisture content using calcium oxide as taught by Lim et al. in the composition of Belli et al., thereby arriving at the claimed invention.
Lim et al. do not particularly teach the moisture content of the calcium based flame retardant, however, it Lim teaches the moisture content is controlled by the presence of the calcium flame retardant. Therefore, the moisture content of the calcium oxide be optimized to reach the desired overall moisture content via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the moisture content of the calcium for the intended application via a routine optimization, thereby obtaining the present invention.
Claims 1-5, 9-19 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US PG Pub 2009/0090536).
Regarding claim 1, Park et al. teach a flame retardant composition for cable covering material comprising (claim 1):
100 parts by weight of a base resin including 5--80 parts by weight of chlorosulfonated polyethylene and 30-90 parts by weight of an ethylene/vinyl acetate copolymer thereby reading on the polyolefin in the claimed range 45% to 70% when the other components are considered;
30-150 parts by weight of at least one metal oxide as a flame retardant; wherein the “at least one” implies more than one flame retardant is selected, and wherein the metal oxide flame retardant is selected from calcium hydroxide (claim 5) and magnesium oxide (claim 5) thereby reading on both the calcium-based flame retardant and the non-halogen flame retardant;
and 3-20 parts by weight of a crosslinking agent; thereby reading on the claimed range of 1% to 10% crosslinking agent as required by the instant claim.
Park et al. and the claims differ in that Park et al. do not teach the exact same amounts for the calcium flame retardant and non-halogen flame retardant as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Park et al. (30-150 parts by weight of the flame retardant) overlap the instantly claimed ranges once all the components are considered (20% to 35% by weight of calcium-based flame retardant and 1 to 10% by weight of non-halogen flame retardant) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 2, Park et al. teach the polyolefin-based resin comprises a polar grafted group wherein a content of the polar grafted group is from 0.5 to 2% by weight based on the copolymer that is present in an amount of from 1 to 15 parts by weight [0011].
Park et al. do not particularly teach the weight ratio of polar polyolefin-based resin to polyolefin-based resin.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Park et al. (polar grafted group is from 0.5 to 2% by weight based on the copolymer that is present in an amount of from 1 to 15 parts by weight) overlap the instantly claimed ranges (weight ratio of polar polyolefin based resin to polyolefin based resin of from 1:9 to 7:3) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 3, Park et al. teach the polyolefin-based resin comprises a polar grafted group wherein a content of the polar grafted group is from 0.5 to 2% by weight [0011, claim 3] thereby reading on the claimed range of from 0.1 to 5 parts by weight.
Regarding claim 4, Park et al. teach the polar monomer is selected from maleic anhydride, glycidyl methacrylate and acrylic acid [0011, claim 4].
Regarding claim 5, Park et al. teach the polyolefin-based resin is selected from ethylene/vinyl acetate (claim 1).
Regarding claim 9, Park et al. teach metal hydroxide flame retardants (claim 1).
Regarding claim 10, claim 10 is further limiting the optional embodiment of phosphorous flame retardant in claim 9, whereas Park et al. teach the metal hydroxide thereby satisfying the claim requirement.
Regarding claim 11, Park et al. teach the crosslinking agent such as triaryl cyanurate and triaryl isocyanurate [0029].
Regarding claims 12 and 15, Park et al. teach vinyltrimethoxy silane [0027] thereby reading on the organosilane.
Regarding claims 13-14, these claims are further limiting the optional embodiment of styrene based block copolymer in claim 12, whereas Park et al. teach the organosilane of claim 12 thereby satisfying the claim requirements.
Regarding claims 16 and 18-19, Park et al. teach a cable covering comprising the polymer composition wherein the cable covering has flame retardant properties and an insulating layer (Abstract, [0016]).
Regarding claim 17, Park et al. teach the polymer composition according to claim 1 as set forth above wherein the composition has flame retardancy properties (Abstract, Title) and heat resistance ([0020], [0027], [0043]).
Park et al. do not particularly teach the composition tested using the UL 1581 VW-1 standard or the heat resistance at 125 °C temperature or higher.
However, the importance of the flame retardancy and heat resistance are acknowledged by Park and further Park et al. teach the same composition as set forth in the rejection above. Therefore, the composition of Park et al. when tested under the same flame retardancy and heat resistance standards as set forth in the claim would be expected to result in the same heat resistance and flame retardancy as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients (polyolefin, calcium and metal oxide flame retardants and crosslinking agents) within the claimed proportions for the same utility (cable coverings).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US PG Pub 2009/0090536) in view of Kim et al. (WO 2010/047469).
Regarding claim 6, Park et al. teach the composition according to claim 1 as set forth above and incorporated herein by reference.
Park et al. do not teach the molecular weight, Shore hardness and melt flow index of the polar monomer.
Kim et al. teach halogen-free insulating composition for insulating a cable (Title) comprising a base resin in an amount of 50 to 98wt% and a polyolefin grafted with a polar functional group (Abstract, claim 1), wherein the polyolefin grafted with a polar functional group is present in an amount of 2 to 50 wt%, wherein the polar functional group may be polyethylene, EVA or ethylene-ethyl acrylate copolymer grafted with maleic anhydride or glycidyl methacrylate (p. 3 , [8]) and wherein the base resin has a molecular weight of from 20,000 to 700,000, a Shore hardness of 20D to 80D (p. 3, [8]), and wherein a preferred embodiment has a Shore hardness of 36D, [43-45] and a melt flow index of 1.5 g/10 min. Kim et al. is considered to be analogous art due to both Kim and Park being related to cable coverings having flame retarding properties. Kim et al. offer the motivation of choosing a composition having the polar functional group due to its ability to result in an insulation layer that is flexible, maintaining mechanical strength, excellent in oil resistance and abrasion resistance (p. 3, [9]). In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the polyolefin grafted with a polar monomer group in the composition of Park et al., thereby arriving at the claimed invention.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US PG Pub 2009/0090536) in view of Belli et al. (US PG Pub 2003/0141097 A1).
Regarding claim 7, Park et al. teach the composition according to claim 1 as set forth above and incorporated herein by reference.
Park et al. do not teach the calcium based flame retardant is selected from calcium carbonate and calcium sulfate.
Belli et al. teach a self-extinguishing cable, wherein the cable comprises at least one flame retardant coating, wherein the flame retardant coating is produced from a polymeric material and at least one intumescent agent (Abstract, claim 1), wherein the polymeric material is a polyolefin ([0056], claim 9), wherein the polymeric material comprises at least one mineral filler (claim 19), wherein the mineral filler is a flame-retardant filler (claim 21) and wherein the flame-retardant filler is calcium carbonate (claim 23). Belli et al. offer the motivation of choosing calcium carbonate due to its ability to not undergo decomposition [0011]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use the calcium carbonate of Belli et al. as the calcium flame retardant of Park et al., thereby arriving at the claimed invention.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (US PG Pub 2009/0090536) in view of Lim, et al. (KR 2020/0053903; English Machine Translation provided herewith).
Regarding claim 8, Park et al. teach the composition according to claim 1 as set forth above and incorporated herein by reference.
Park et al. are silent regarding the moisture content of the calcium based flame retardant.
Lim et al. teach wire coating materials for insulating electrical wires comprising flame retardants and having high temperature long term heat resistant properties (Abstract) wherein the base polymer comprising maleic anhydride grafted polyethylene and calcium oxide wherein the calcium oxide is a moisture absorbent and wherein the moisture content of the wire sheathing material is controlled by the presence of the calcium oxide [0024]. Lim et al. offers the motivation of controlling the moisture content due to its ability to maintain tensile strength and flame retardancy [0024]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to control the moisture content using calcium oxide as taught by Lim et al. in the composition of Park et al., thereby arriving at the claimed invention.
Lim et al. do not particularly teach the moisture content of the calcium based flame retardant, however, it Lim teaches the moisture content is controlled by the presence of the calcium flame retardant. Therefore, the moisture content of the calcium oxide be optimized to reach the desired overall moisture content via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the moisture content of the calcium for the intended application via a routine optimization, thereby obtaining the present invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Grizante Redondo et al. US PG Pub 2011/0240335 A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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, Patricia Mallari can be reached at 571-272-4729. 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.
/ARRIE L REUTHER/ Supervisory Primary Examiner, Art Unit 1764
Prosecution Insights