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 .
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 Objections
Claim 14 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claim has not been further treated on the merits.
Information Disclosure Statement
The information disclosure statement filed 2/8/2024 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. Applicant did not provide a copy of cited reference WO2003/51514. It has been placed in the application file, but the information referred to therein has not been considered with respect to this reference.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is 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.
Claim 16 recites the limitation "a pipe extrusion step is carried out prior to the the crosslinking step" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 depends from claim 13, which in turn depends from claim 10. Neither claim 13 nor its parent claim recite the limitation of a “crosslinking step”. Note that claim 10 recites a step (b) of extruding a soaked polyethylene powder in an extruder, thereby obtaining crosslinked polyethylene. It is therefore unclear whether the phrase “the crosslinking step” in claim 16 is intended to refer back to step (b) of claim 10, or if it is intended to be an additional, separate step.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 depends from claim 10 through claim 13. The examiner notes that this rejection is based on the interpretation that the phrase “the crosslinking step” in lines 3-4 of claim 16 is intended to refer to step (b) of parent claim 10.
As written, claim 16 states that a pipe extrusion step is performed prior to the crosslinking step; note that this implies that a pipe has been formed before the composition is crosslinked-i.e., the crosslinking is performed on a polyethylene that is in the form of a pipe. Note, however, that step (b) of the process recited in claim 10 requires that crosslinked polyethylene is obtained by extruding a polyethylene powder. Claim 16 therefore fails to include the limitation that the crosslinking occurs via extrusion of a powder.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1-13 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record is Palmlöf et al, EP2632980.
Palmlöf discloses the production of a crosslinkable ethylene polymer having a MFR21 or 5-50 g/10 min (¶0028), a weight average molecular weight (Mw) of 80000 to 250000 (¶0031), and a vinyl content of at least 0.5 vinyl groups per 1000 carbon atoms (¶0041); these values all overlap the ranges used by applicant to define the claimed invention. Palmlöf does not disclose the calculation of UI × PI as defined in claim 1; furthermore, Palmlöf does not disclose the melt strength of its ethylene polymer. As such, there is insufficient information to calculate the UI × PI value for the prior art polymer. Palmlöf therefore does not expressly teach the requirements of claim 1.
Additionally, the evidence in the record does not establish that the prior art polymer would reasonably be expected to be characterized by a value of UI × PI that satisfies the claimed inequation (I). Note comparative example CE1 of applicant’s specification (specification page 36: Table 1). As reported in applicant’s Table 1, the polymer of CE1 is characterized by properties of melt flow rate (MFR21), melt strength (F120), weight average molecular weight (Mw), vinyl content weight, Mw/Mn, and density that are all within the ranges used to define the claimed polyethylene (see claims 4-9); however, the polymer of CE1 is reported to have a value of UI × PI of 23.7 which does not satisfy the required inequation (I).
The evidence in the record demonstrates that a polymer can have values of MFR21, F120, Mw, and vinyl content that are the same as the polymers disclosed in the instant specification and still not satisfy the required inequation that 1.4 ≤ UI × PI < 20. The evidence in the record therefore does not demonstrate that the polymer of Palmlöf would be reasonably expected to satisfy claimed inequation (I). Furthermore, no reference has been found that would provide an ordinary artisan with motivation to modify the polymer of Palmlöf to satisfy inequation (I). The claimed invention is therefore allowable in view of the limitation that the polyethylene is required to satisfy the inequation 1.4 ≤ UI × PI < 20, wherein UI and PI are calculated as defined in the independent claim.
Conclusion
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.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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