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 .
Reopening of Prosecution
In view of the Appeal Brief filed on 06/01/2026, PROSECUTION IS HEREBY REOPENED. A non-final rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/IMANI N HAYMAN/ Supervisory Patent Examiner, Art Unit 2841
Claim Objections
Claim 16 is objected to because of the following informalities: claim 16 is a redundant of claim 2. Appropriate correction is required.
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, 7-10, 12, 13, 16, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nielsen et al. (SE 1600224).
Nielsen et al. discloses a power cable comprising: a conductor (2), an insulation system having an inner semiconducting layer (4) arranged around the conductor, an insulation layer (6) arranged around the inner semiconducting layer, and an outer semiconducting layer (8), a metallic water-blocking layer (14) arranged around the insulation system, and a bedding layer (10) arranged between the outer semiconducting layer and the metallic water-blocking layer (re-claim 1). Nielsen et al. also discloses that the bedding layer includes one or more polymers (re-claim 2); each polymer is an elastomer which is EPDM (page 4, line 7) (re-claims 3, 4, and 16); the bedding layer is semiconducting (page 3, line 15) (re-claims 7 and 19); the metallic layer includes copper (page 7, line 51) (re-claims 8 and 20); the metallic layer is longitudinally welded (page 9, line17-18) (re-claim 9); the metallic layer is corrugated (page 7, line 51) (re-claim 10), the outer semiconducting layer includes a polymeric material (page 6, lines 9-15) (re-claim 12); the bedding layer (10) is in direct contact with the outer semiconducting layer and with the metallic layer (re-claim 13).
It is noted that since the power cable of Nielsen et al. comprises structure and material as claimed, it is a dynamic submarine power cable; the static friction coefficient between an outer surface of the bedding layer and the metallic water-blocking layer is at least 0.4; and the static friction coefficient between an inner surface of the bedding layer and the outer semiconducting layer is at least 0.4 (re-claim 1).
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.
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.
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 1-4, 6-11, 13, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cristofani et al. (2021/0210253) in view of Nielsen et al.
Cristofani et al. discloses a submarine power cable comprising a conductor (115); an insulation system having an inner semiconducting layer (120) arranged around the conductor, an insulation layer (125) arranged around the inner semiconducting layer, and an outer semiconducting layer (130); a metallic water-blocking layer (140) arranged around the insulation system; and a bedding layer (135) arranged between the outer semiconducting layer and the metallic water-blocking layer (re-claim 1). Cristofani et al. also discloses that the bedding layer is formed of one or more tape layers ([0038]) (re-claims 6 and 18); the bedding layer is semiconducting ([0038]) (re-claims 7 and 19); the metallic layer (140) includes copper ([0041]) (re-claims 8 and 20); the metallic layer is longitudinally welded ([0041]) (re-claim 9); the metallic layer is corrugated ([0041]) (re-claim 10); the metallic layer is smooth ([0041]) (re-claim 11); the bedding layer is in direct contact with the outer semiconducting layer and with the metallic layer (re-claim 13).
Cristofani et al. does not disclose the static friction coefficient between the outer surface of the bedding layer and the metallic water-blocking layer is at least 0.4; and the static friction coefficient between the inner surface of the bedding layer and the outer semiconducting layer is at least 0.4 (re-claim 1).
As disclosed in application’s disclosure, see pre-publication [0012] and [0017], to obtain such static friction coefficients, the bedding layer is EPDM and the metallic layer includes copper.
Cristofani et al. discloses the metallic layer including copper, but does not disclose the bedding layer is EPDM. Nielsen et al. discloses a power cable comprising a bedding layer (10) including one or more polymers being an elastomer which is EPDM (page 4, line 7) (re-claims 2-4). It would have been obvious to one skilled in the art to use EPDM for the bedding of Cristofani et al. since such material is soft and resilient and has good properties for mechanically protecting the cable elements (Nielsen, page 4, lines 8-10).
It is noted that since the modified cable of Cristofani et al. comprises structure and material as claimed, it is a dynamic submarine power cable; the static friction coefficient between the outer surface of the bedding layer and the metallic water-blocking layer is at least 0.4; and the static friction coefficient between the inner surface of the bedding layer and the outer semiconducting layer is at least 0.4 (re-claim 1).
Claims 5 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Cristofani et al. in view of Nielsen et al. as applied to claims 1 and 2 above, and further in view of Wilson et al. (2024/0136089).
Cristofani et al. and Nielsen et al. disclose the invention substantially as claimed including the bedding layer including a plurality of layers. Cristofani et al. and Nielsen et al. do not disclose the static friction coefficient between each layer being at least 0.4.
Wilson et al. teaches a semiconducting tape (having two semiconducting layers bonded to opposing surfaces of a fabric) having a coefficient of static friction of at least 0.4 ([0020]). It would have been obvious to one skilled in the art to provide each of the plurality of layers in the bedding layer of Cristofani et al. with a coefficient of static friction of at least 0.4 as taught by Wilson et al. to improve the manufacturing process (Wilson, [0008]). It is noted that in the modified cable of Cristofani et al., the static friction coefficient between each layer is at least 0.40.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Nielsen et al. in view of Manabe et al. (10056171).
Nielsen et al. discloses a dynamic submarine power cable as claimed in claim 14, see the 102 rejection with respect to claim 1.
Nielsen et al. does not disclose the cable being connected to a floating structure which is a floating wind turbine structure. Manabe et al. discloses an offshore windfarm system (Fig. 1) comprising a submarine power cable connected to a floating structure which is a floating wind turbine structure. It would have been obvious to one skilled in the art to connect the cable of Nielsen et al. to a floating structure of an offshore windfarm system taught by Manabe et al. to provide an electrical transmission therefrom since the cable of Nielsen et al. has improved mechanical and electrical properties.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 14 have been considered but are moot in view of new ground of rejection.
Applicant argues that applicant’s invention specifically utilizes high friction to solve a problem unique to dynamic fatigue in floating structures, a problem not addressed by Wilson. Examiner would disagree. It has been held that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the teaching to do so is found in the references themselves, Wilson [0008]. Examiner’s reason to combine does not have to be the same as that of the applicant.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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, Imani N Hayman can be reached at 571-270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841
Prosecution Insights