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 14 and 20 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.
Considering Claim 14: Claim 14 recites a method of use, without any clearly defined method steps for the using of the composition. As such, the claim is indefinite, as the method steps of the process are not clearly defined.
Considering Claim 20: Claim 20 recites a single limitation on the cable, but then ends “or a combination thereof”. It is not clear what the combination could be, as there is a single feature recited in the claim. As such, the claim is indefinite.
Claim Rejections - 35 USC § 102
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, 2, 5-9, 11, and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Diao et al. (IEEE Transactions on Dielectrics and Electrical Insulation Vol. 24, No. 3; June 2017, pg. 1416-1429).
Considering Claims 1, 2, and 19: Diao et al. teaches polymer composition for cable insulation comprising 92.6-94.7 weight percent of polypropylene homopolymer, 5 weight percent of a low density polyethylene, and 0.3 to 2.4 weight percent of a aliphatic modified silicon dioxide nanoparticles (Section 2, Table 1).
Considering Claims 5, 6, and 16-18: Diao et al. teaches the silica as being modified with octyl trimethoxysilane (Figure 1).
Considering Claim 7: Diao et al. teaches polymer composition for cable insulation comprising 92.6-94.7 weight percent of polypropylene homopolymer, 5 weight percent of a low density polyethylene. The styrene copolymer can be present in an amount of 0.0 percent, and thus further limiting the compound does not provide patentability in the embodiment where the styrene copolymer is not present.
Considering Claim 8: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the DS conductivity, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 9: Diao et al. does not teach the composition as being crosslinked.
Considering Claim 11: Diao et al. teaches the composition as being prepared by blending (Section 2).
Considering Claim 15: Diao et al. teaches the composition as being used in the insulation layer of a cable (Abstract).
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.
Claims 3, 4, 12-14, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Diao et al. (IEEE Transactions on Dielectrics and Electrical Insulation Vol. 24, No. 3; June 2017, pg. 1416-1429) as applied to claim 1 above, and further in view of Pallon et al. (WO 2017/149086).
Considering Claims 3 and 4: Diao et al. teaches the composition of claim 1 as shown above.
Diao et al. does not teach the inorganic nanofiller as being aluminum oxide nanoparticles. However, Pallon et al. teaches adding aluminum oxide nanoparticles (39:5-10) to a polyolefin composition for cable insulation. Diao et al. and Pallon et al. are analogous art as they are concerned with the same field of endeavor, namely polyolefin cable insulation. It would have been obvious to a person of ordinary skill in the art to have added the aluminum oxide nanoparticles of Pallon et al. in place of the nanoparticles of Diao et al., and the motivation to do so would have been, as Pallon et al. suggests, to provide good mechanical properties and low conductivity (3:1-4).
Considering Claims 12-14 and 20: Diao et al. teaches the composition as being used for the insulation layer of a high voltage direct current cable (Abstract). Diao et al. does not teach the details of the cable.
However, Pallon et al. teaches a cable comprising a conductor, an inner semiconductor layer, an insulation layer, and an outer semiconductor layer (45:5-9). It would have been obvious to a person of ordinary skill in the art to have used the cable layout of Pallon et al. in the cable of Diao et al., and the motivation to do so would have been, it is a standard layout for a high voltage direct current cable.
Claims 1, 2, 5-9, 11, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Diao et al. (IEEE Transactions on Dielectrics and Electrical Insulation Vol. 24, No. 3; June 2017, pg. 1416-1429) in view of Flaris et al. (JOURNAL OF MATERIALS SCIENCE 28 (1993) 1685-1688).
Considering Claims 1, 2, 7, and 19: Diao et al. teaches polymer composition for cable insulation comprising 92.6-94.7 weight percent of polypropylene homopolymer, 5 weight percent of a low density polyethylene, and 0.3 to 2.4 weight percent of a aliphatic modified silicon dioxide nanoparticles (Section 2, Table 1).
Diao et al. does not teach a styrene block copolymer. However, Flaris et al. teaches adding 10 weight percent of a styrene block copolymer, preferably styrene ethylene butylene styrene to a blend of polypropylene and a low density polyethylene (Table 1). Diao et al. and Flaris et al. are analogous art as they are concerned with the same field of endeavor, namely polypropylene-polyethylene blends. It would have been obvious to a person of ordinary skill in the art to have added the styrene block copolymer of Flaris et al. to the composition of Diao et al., and the motivation to do so would have been, as Flaris et al. suggests, to increase the compatibility between the polypropylene and the low density polyethylene (Abstract).
Considering Claims 5, 6, and 16-18: Diao et al. teaches the silica as being modified with octyl trimethoxysilane (Figure 1).
Considering Claim 8: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the DS conductivity, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 9: Diao et al. does not teach the composition as being crosslinked.
Considering Claim 11: Diao et al. teaches the composition as being prepared by blending (Section 2).
Considering Claim 15: Diao et al. teaches the composition as being used in the insulation layer of a cable (Abstract).
Claims 3, 4, 12-14, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Diao et al. (IEEE Transactions on Dielectrics and Electrical Insulation Vol. 24, No. 3; June 2017, pg. 1416-1429) in view of Flaris et al. (JOURNAL OF MATERIALS SCIENCE 28 (1993) 1685-1688) as applied to claim 1 above, and further in view of Pallon et al. (WO 2017/149086).
Considering Claims 3 and 4: Diao et al. and Flaris et al. collectively teach the composition of claim 1 as shown above.
Diao et al. does not teach the inorganic nanofiller as being aluminum oxide nanoparticles. However, Pallon et al. teaches adding aluminum oxide nanoparticles (39:5-10) to a polyolefin composition for cable insulation. Diao et al. and Pallon et al. are analogous art as they are concerned with the same field of endeavor, namely polyolefin cable insulation. It would have been obvious to a person of ordinary skill in the art to have added the aluminum oxide nanoparticles of Pallon et al. in place of the nanoparticles of Diao et al., and the motivation to do so would have been, as Pallon et al. suggests, to provide good mechanical properties and low conductivity (3:1-4).
Considering Claims 12-14 and 20: Diao et al. teaches the composition as being used for the insulation layer of a high voltage direct current cable (Abstract). Diao et al. does not teach the details of the cable.
However, Pallon et al. teaches a cable comprising a conductor, an inner semiconductor layer, an insulation layer, and an outer semiconductor layer (45:5-9). It would have been obvious to a person of ordinary skill in the art to have used the cable layout of Pallon et al. in the cable of Diao et al., and the motivation to do so would have been, it is a standard layout for a high voltage direct current cable.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dabbak et al. (Energies 2018, 11, 1448) in view of Pallon et al. (WO 2017/149086).
Considering Claims 1-6, 9, 10, and 16-19: Dabbak et al. teaches a polypropylene composition for a cable insulation layer comprising 70 weight percent of low density polyethylene and 30 weight percent of polypropylene (pg. 3).
Dabbak et al. does not teach the inorganic nanofiller as being aluminum oxide nanoparticles. However, Pallon et al. teaches adding 0.1 to 9 weight percent of inorganic particles (Table 2) that can be aluminum oxide nanoparticles (39:5-10) to a polyolefin composition for cable insulation. The nanoparticles are modified with octyl trimethoxysilane (42:11-14). Dabbak et al. and Pallon et al. are analogous art as they are concerned with the same field of endeavor, namely polyolefin cable insulation. It would have been obvious to a person of ordinary skill in the art to have added the aluminum oxide nanoparticles of Pallon et al. to the composition of Dabbak et al., and the motivation to do so would have been, as Pallon et al. suggests, to provide good mechanical properties and low conductivity (3:1-4).
Considering Claim 7: Dabbak et al. teaches a polypropylene composition for a cable insulation layer comprising 70 weight percent of low density polyethylene and 30 weight percent of polypropylene (pg. 3). The styrene copolymer can be present in an amount of 0.0 percent, and thus further limiting the compound does not provide patentability in the embodiment where the styrene copolymer is not present.
Considering Claim 8: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the DS conductivity, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 11: Dabbak et al. teaches blending the composition (pg. 3).
Considering Claims 12-14 and 20: Dabbak et al. teaches the composition as being used for the insulation layer of a high voltage direct current cable (Abstract). Dabbak et al. does not teach the details of the cable.
However, Pallon et al. teaches a cable comprising a conductor, an inner semiconductor layer, an insulation layer, and an outer semiconductor layer (45:5-9). It would have been obvious to a person of ordinary skill in the art to have used the cable layout of Pallon et al. in the cable of Dabbak et al., and the motivation to do so would have been, it is a standard layout for a high voltage direct current cable.
Considering Claim 15: Dabbak et al. teaches the composition as being used in the insulation layer of a cable (pg. 1).
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Dabbak et al. (Energies 2018, 11, 1448) in view of Flaris et al. (JOURNAL OF MATERIALS SCIENCE 28 (1993) 1685-1688) and Pallon et al. (WO 2017/149086).
Considering Claims 1-7, 9, 10, and 16-19: Dabbak et al. teaches a polypropylene composition for a cable insulation layer comprising 70 weight percent of low density polyethylene and 30 weight percent of polypropylene (pg. 3).
Dabbak et al. does not teach a styrene block copolymer. However, Flaris et al. teaches adding 10 weight percent of a styrene block copolymer, preferably styrene ethylene butylene styrene to a blend of polypropylene and a low density polyethylene (Table 1). Dabbak et al. and Flaris et al. are analogous art as they are concerned with the same field of endeavor, namely polypropylene-polyethylene blends. It would have been obvious to a person of ordinary skill in the art to have added the styrene block copolymer of Flaris et al. to the composition of Dabbak et al., and the motivation to do so would have been, as Flaris et al. suggests, to increase the compatibility between the polypropylene and the low density polyethylene (Abstract).
Dabbak et al. does not teach the inorganic nanofiller as being aluminum oxide nanoparticles. However, Pallon et al. teaches adding 0.1 to 9 weight percent of inorganic particles (Table 2) that can be aluminum oxide nanoparticles (39:5-10) to a polyolefin composition for cable insulation. The nanoparticles are modified with octyl trimethoxysilane (42:11-14). Dabbak et al. and Pallon et al. are analogous art as they are concerned with the same field of endeavor, namely polyolefin cable insulation. It would have been obvious to a person of ordinary skill in the art to have added the aluminum oxide nanoparticles of Pallon et al. to the composition of Dabbak et al., and the motivation to do so would have been, as Pallon et al. suggests, to provide good mechanical properties and low conductivity (3:1-4).
Considering Claim 8: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the DS conductivity, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 11: Dabbak et al. teaches blending the composition (pg. 3).
Considering Claims 12-14 and 20: Dabbak et al. teaches the composition as being used for the insulation layer of a high voltage direct current cable (Abstract). Dabbak et al. does not teach the details of the cable.
However, Pallon et al. teaches a cable comprising a conductor, an inner semiconductor layer, an insulation layer, and an outer semiconductor layer (45:5-9). It would have been obvious to a person of ordinary skill in the art to have used the cable layout of Pallon et al. in the cable of Dabbak et al., and the motivation to do so would have been, it is a standard layout for a high voltage direct current cable.
Considering Claim 15: Dabbak et al. teaches the composition as being used in the insulation layer of a cable (pg. 1).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/271,318 (reference application) in view of Pallon et al. (WO 2017/149086). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1-7, 9, 10, and 16-19: Claim 1 of Application ‘318 teaches a polymer composition comprising 55 to 73 weight percent of low density polyethylene, 23 to 35 weight percent of polypropylene, and 3 to 8 weight percent of a styrene ethylene butylene styrene block copolymer.
Application ‘318 does not teach the inorganic nanofiller as being aluminum oxide nanoparticles. However, Pallon et al. teaches adding 0.1 to 9 weight percent of inorganic particles (Table 2) that can be aluminum oxide nanoparticles (39:5-10) to a polyolefin composition for cable insulation. The nanoparticles are modified with octyl trimethoxysilane (42:11-14). Application ‘318 and Pallon et al. are analogous art as they are concerned with the same field of endeavor, namely polyolefin cable insulation. It would have been obvious to a person of ordinary skill in the art to have added the aluminum oxide nanoparticles of Pallon et al. to the composition of Application ‘318, and the motivation to do so would have been, as Pallon et al. suggests, to provide good mechanical properties and low conductivity (3:1-4).
Considering Claim 8: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the DS conductivity, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 11: Claim 17 of Application ‘318 teaches blending the components.
Considering Claims 12-15 and 20: Claim 15 of Application ‘318 teaches a cable with the claimed layers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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