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 § 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.
Claim(s) 1-8 and 11-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kimura et al. (US 2014/0200297).
Regarding claims 1-2, 5-8, and 13-14; Kimura et al. teaches, in a preferred embodiment, a crosslinked composition and method of making the crosslinked composition, wherein the composition comprises 100 parts by weight of an ethylene/alpha-olefin/nonconjugated polyene random copolymer that has been modified with 5 parts by weight of dimethylpolysiloxane to provide at least one Si‒H group on the polymer (ethylene/alpha-olefin/silane interpolymer), 100 parts by weight of carbon black (filler), and 60 parts by weight of Diana process oil (paraffinic oil; plasticizer) [0051-0052; Ex 1]. Then, 5 parts by weight (to provide 0.5 Si--H group per aliphatic unsaturated group in Keltan 2340A) of dimethylpolysiloxane containing a Si--H group at one end and a trimethylsiloxy group at the other end (crosslinking coagent) and having a degree of polymerization of 30 and an amount (to provide 5 ppm of platinum based on Keltan 2340A) of chloroplatinic acid/1,3-divinyl-1,1,3,3-tetramethyldisiloxane complex were added and milled. The resulting mixture is designated Composition 1 [0052, Ex1]. Then, 100 parts by weight of this composition were mixed with 2 parts by weight of a peroxide vulcanizer and heated to a temperature of 165° C (thermally treating) to form a test sheet (article) [0058]. The amount of peroxide used is about 2% by weight of the composition.
Regarding claims 3 and 11; Kimura et al. teaches that the silane is present in the interpolymer of Example 1 described above in an amount of about 5% by weight (as calculated by Examiner).
Regarding claims 4 and 12; Kimura et al. teaches the weight ratio of the olefin/silane interpolymer (100 parts) to the filler and plasticizer (100 parts carbon black and 60 parts parrafinic oil) is 1.6 (as calculated by Examiner).
Regarding claim 15; Kimura et al. teaches that the composition is used to make shaped rubber articles [0049].
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.
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 7, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al. (US 2018/0142080), in view of Asanuma et al. (EP 0349155).
Regarding claim 7, Sun et al. teaches a crosslinkable polymeric composition comprising from 50% to 98.9% by weight of an ethylene-based polymer, from 0.1% to less than 1.1% by weight of an organic peroxide, and from 0.3% to 3% by weight of a polyallyl crosslinking coagent [0031]. The composition is compounded at a temperature ranging from 100 to 200° C (thermally treated) [0038]. The ethylene-based polymer can be an ethylene/alpha-olefin interpolymer [0018]. Sun et al. teaches the composition may further comprise fillers and plasticizers [0035].
Sun et al. does not teach that silane is derived from a silane monomer of instant Formula I. However, Asanuma et al. teaches crosslinked polyolefins [p2, lines3-4] comprising alkenylsilane compounds having one or more Si‒H linkages such as vinylsilane, allylsilane, butenylsilane, and pentenylsilane (meet the bounds of Formula 1) [p3, lines15-25]. Example 1 teaches a polyolefin containing 1.8% by weight of vinylsilane units [p5, lines46-47]. Sun et al. and Asanuma et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of crosslinked polyolefin compositions. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add an alkenylsilane, as taught by Asanuma et al., to the ethylene/alpha-olefin interpolymer, as taught by Sun et al., and would have been motivated to do so in order to improve the physical properties of polyolefins and more particularly to provide a process for producing crosslinked polyolefins in which no molecular weight reduction occurs due to degradation of the polymer backbone.
Regarding claim 10; Asanuma et al. teaches more broadly that the alkenylsilane has the formula (I)
H2C=CH‒(CH2)n–SiHpR(3-p)
wherein n is 0 or an integer from 1 to 12, p is an integer from 1 to 3, and R is a hydrocarbon residue having from 1 to 12 carbon atoms [p2, lines50-55]. Structure (s1) meets this formula where n is 0, p is 1, and R is methyl. Structures (s2) through (s6) can also be met by this formula by simply changing the value of n.
Regarding claims 11 and 12, Sun et al. teaches compositions in Table 2 which provide a weight ratio of peroxide to polyolefin of about 0.01 (calculated by Examiner). Even though this is a weight ratio and not a mole ratio, for examination purposes, it will be assumed that they are similar. Therefore, claim 12 is met. As for claim 11, a ratio of greater than or equal to 0.5 is not taught by Sun et al. However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II.A. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to optimize the ratio between the polyolefin and the peroxide through routine experimentation and would have been motivated to do so in order to ensure the desired level of crosslinking of the composition.
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 1-3, 5-11, and 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-10, and 15 of copending Application No. 18/719488 (reference application), in view of Kimura et al. (US 2014/0200297). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to the same art specific subject matter, namely a process to form a crosslinked composition and the composition thereof. The essential difference between the instant application and the copending application is that the instant application further comprises an additive component comprising a filler and a plasticizer. Kimura et al. teaches, a crosslinked composition and method of making the crosslinked composition, wherein the composition comprises an ethylene/alpha-olefin/nonconjugated polyene random copolymer that has been modified with dimethylpolysiloxane to provide at least one Si‒H group on the polymer (ethylene/alpha-olefin/silane interpolymer), carbon black (filler), Diana process oil (paraffinic oil; plasticizer) [0051-0052; Ex 1]. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the filler and the plasticizer, as taught by Kimura et al., to the process to form a crosslinked composition and composition thereof, and would have been motivated to do so in order to achieve desired properties of the crosslinked product.
This is a provisional nonstatutory double patenting rejection.
Claims 1-2, 5-8, and 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-9, 11-12, 16, and 20 of copending Application No. 18719393 (reference application), in view of Kimura et al. (US 2014/0200297). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to the same art specific subject matter, namely a process to form a crosslinked composition and the composition thereof. The essential difference between the instant application and the copending application is that the instant application further comprises an additive component comprising a filler and a plasticizer. Kimura et al. teaches, a crosslinked composition and method of making the crosslinked composition, wherein the composition comprises an ethylene/alpha-olefin/nonconjugated polyene random copolymer that has been modified with dimethylpolysiloxane to provide at least one Si‒H group on the polymer (ethylene/alpha-olefin/silane interpolymer), carbon black (filler), Diana process oil (paraffinic oil; plasticizer), and dimethylpolysiloxane containing a Si--H group at one end and a trimethylsiloxy group at the other end (crosslinking coagent) [0051-0052; Ex 1]. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the filler, plasticizer, and crosslinking coagent, as taught by Kimura et al., to the process to form a crosslinked composition and composition thereof, and would have been motivated to do so in order to achieve desired properties of the crosslinked product.
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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