DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claims 1, 8, and 10-11 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to delete the claimed phrases (“coagent(s)”) and (“organic peroxide(s)”). The applicants are also advised replace the claimed phrase “organic peroxides (collectively “curative additive(s)”) into” with the new phrase “organic peroxides, collective “curative additive(s)”, into”.
As to Claim 8: The applicants are advised to replace the claimed phrase “extruding a layer” with the new phrase “extruding an insulating layer”.
As to Claim 10: The applicants are advised to replace the claimed “0.940 g/cm3” with “0.940 g/cm3”.
As to Claim 11: The applicants are advised to replace the claimed “alternatively” with the term “or”.
Appropriate corrections are required.
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.
3. Claims 1-12 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.
As to Claim 1: It recites, among other things, “(is not optional)”. It is not clear whether or not the limitation “is not optional” surrounded by the parenthesis is required by the claim.
As to Claim 6: It recites “adapted to a melt compounding device”. It is not clear whether or not the melt compounding device recited in claim 6 is referring to the same or different melt compounding device recited in claims 1 and 5, on which claim 6 depends from.
As to Claims 10-12: They recite, among other things, “high temperature” (Emphasis added). The claimed term “high” is a relative expression, which can be interpreted subjectively absent any definition or guidance in the specification. The instant specification merely repeats what is already in the claims without further explanation, definition or much guidance (see paragraphs [0028]-[0030] of applicants’ published application, i.e., US PG PUB 2025/0214294). Thus, it is unclear what constitutes “high temperature” recited in claims 10-12.
Moreover, claim 10 also recites “high production speed” (Emphasis added). The present specification merely repeats what is already in the claim without further explanation, definition or guidance (see paragraph [0028] of applicants’ published application, i.e., US PG PUB 2025/0214294). Thus, it is not clear what is included by the relative term “high” in the context of “high production speed”.
Additionally, as to claim 11, it is not clear whether “the additives” are referring to the “curative additives” or other/new additives.
Clarification in the response by applicants will be helpful to better ascertaining the scope of these claims.
It is further noted that since claims 2-5 and 7-9 are either directly or ultimately dependent on claim 1, they are rejected along with claim 1 because they incorporate all the limitations of claim 1, including those that are indefinite for the reasons set forth above.
Accordingly, the scope of these claims is deemed indefinite.
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.
4. Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-6, 10-12 and 14-15 of co-pending U.S. Application No. 18/555,954 (hereinafter referred to as “US Appl. ‘954”; corresponding to US PG PUB 2024/0376275).
The claims of US Appl. ‘954 and the present application are directed to a high-temperature, low-scorch method of making a crosslinkable compound composition comprising injecting one or more crosslinking coagents and curative additives comprising one or more organic peroxides into a melt of an intermediate compound comprising one or more thermoplastic polyolefin polymers and one or more antioxidants, but lacks curative additives. The claims of US Appl. ‘954 also recite the step of mixing the curative additives and the melt of the intermediate compound to make the crosslinkable compound composition as a homogenous mixture of the one or more thermoplastic polyolefins, the antioxidants, and the curative additives. The claims of US Appl. ‘954 further recite that its crosslinkable compound composition has a scorch time (ts1) at 140 °C of at least 63 minutes, alternatively at least 79 minutes (encompassed by the presently claimed at least 50 minutes), reported as the time required at 140°C for an increase of 1 footpound-inch (Ibf-in) or 1.13 deciNewton-meter (dN-m) form minimum torque (“ML”), as determined by moving die rheometer (MDR) testing in accordance with ASTM procedure D5289; and a maximum torque (MH) at 182 °C that is at least 1.67 deciNewton-meter or DN-m; equal to at least 1.70 Ibf-in higher than minimum torque (ML) at 182°C; and MH at 182°C is at least 1.79 dN-m as determined by moving die rheometer (MDR) testing in accordance with ASTM procedure D5289, and a hot creep elongation at 200°C of less than 130% by testing in accordance with ICEA T-28-562a. Moreover, the claims of US Appl. ‘954, like the claims of the present application, recite the melt compounding device defining a conveying pathway therethrough and comprising, in series along the conveying pathway, at least the following zones: a melting/compounding zone configured for heating thermoplastic polyolefins above their melting temperatures and blending antioxidants thereinto and having one or more feed ports for feeding one or more materials into the melting/compounding zone, a mixing zone configured for rapid blending of curative additives into polymer melts and having one or more injection ports located therebetween for injecting one or more materials including the curative additives into the mixing zone, and an output zone for discharging a melt stream of compounded material from the melt compounding device to a post-compounding device; the method comprising: (A) providing the melt of the intermediate compound to, or making the melt of the intermediate compound in, the melting/compounding zone; (B) conveying the melt of the intermediate compound into the mixing zone; (C) injecting, via at least one of the one or more injection ports of the mixing zone, the combination of curative additives comprising the one or more organic peroxides and the one or more multialkenyl crosslinking coagents into the melt of the intermediate compound; and (D) mixing the combination of curative additives and the melt of the intermediate compound in the mixing zone to make the melt of the crosslinkable compound composition comprising the homogeneous mixture, wherein the homogeneous mixture is formed after completion of the injecting step; and (E) conveying the melt of the crosslinkable compound composition to the output zone. Additionally, the claims of the US Appl. ‘954 and the present application recite that the thermoplastic polyolefins are selected from polyethylene and low-density polyethylene having a density of from 0.870-0.940 g/cm3 measured in accordance with ATM D792 and a melt index of 1-20 g/10 minutes as determined in accordance with ASTM D1238, and the crosslinking coagents comprise an alkenyl group-containing monocyclic organosiloxane. Lastly, the claims of US Appl. ‘954, like the present application, recite post-output zone steps adapted to an insulation extrusion machine configured with an annular die for extrusion coating a filament, the post-output zone steps comprising conveying the melt of the crosslinkable compound composition from the output zone of the melt compounding device into the insulation extrusion machine; extruding a layer of the crosslinkable compound composition onto a conductor to make a coated conductor; and curing the crosslinkable compound composition of the insulation layer to make the cable.
However, the claims of US Appl. ‘954 do not mention the melt is at the presently claimed specific temperature of 150.1-180 degrees Celsius.
Nevertheless, the claims of US Appl. ‘954 do recite that the melt is at a temperature of 120-150°C, wherein the temperature of 150°C is close to the presently claimed temperature of 150.1°C. Thus, a prima facie case of obviousness exists where the claimed range and prior art range do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (see also MPEP section 2144.05).
This is a provisional nonstatutory double patenting rejection.
5. On this record, it is noted that there are no prior art rejections of present claims 1-12 at this time.
6. The prior art reference made of record, namely WO 2019/0461491 (hereinafter referred to as “WO ‘149”), and not relied upon is considered pertinent to applicants’ disclosure.
7. The broadest claims are directed to an ultrahigh temperature, low-scorch method of making a crosslinkable compound composition comprising a homogeneous mixture of one or more thermoplastic polyolefins, one or more antioxidants, and a combination of curative additives comprising one or more organic peroxides and one or more multialkenyl crosslinking coagents, the method comprising: providing a melt compounding device sequentially having a solids conveying section, a melting/mixing zone, and an ultrahigh temperature mixing zone, wherein the temperature of the ultrahigh temperature mixing zone is from 150.1° to 180.0° C.; feeding to the melting/mixing zone of the melt compounding device any one of materials (a) to (c): (a) a pellets/coagent(s) premixture made by contacting solid pellets of an intermediate compound, which at the start comprises one or more thermoplastic polyolefins and one or more antioxidants, but lacks peroxides and multialkenyl crosslinking coagents, with one or more multialkenyl crosslinking coagents, or (b) a pellets/coagent(s)/organic peroxide(s) premixture made by contacting solid pellets of an intermediate compound, which at the start comprises one or more thermoplastic polyolefins and one or more antioxidants, but lacks peroxides and multialkenyl crosslinking coagents, with a combination of curative additives comprising one or more multialkenyl crosslinking coagents, one or more organic peroxides or (c) solid pellets of an intermediate compound, which at the start comprises one or more thermoplastic polyolefins and one or more antioxidants, but lacks peroxides and multialkenyl crosslinking coagents, wherein material (c) lacks curative additives; melting and first mixing the one or more thermoplastic polyolefins with the other constituents of the material (a), (b), or (c) for 15 to 35 seconds to yield an initial melted mixture thereof in the melting/mixing zone; moving the initial melt mixture into the ultrahigh temperature mixing zone of the melt compounding device; optionally injecting one or more multialkenyl crosslinking coagents and/or one or more organic peroxides (collectively “curative additive(s)”) into the initial melt in the ultrahigh temperature mixing zone, wherein the injecting of one or more organic peroxides is performed if the material (a) is fed and the injecting of one or more multialkenyl crosslinking coagents and/or one or more organic peroxides is performed if the material (c) is fed; and second mixing the material (a), (b), or (c) and any injected curative additive(s) in the ultrahigh temperature mixing zone for 10 to 20 seconds; and discharging the resulting crosslinkable compound composition from the melt compounding device; wherein the total residence time of the material (a), material (b), or material (c) in the melt compounding device is from 25 to 55 seconds and wherein the total residence time of any injected curative additive(s) in the melt compounding device is from 10 to 30 seconds.
The claimed ultrahigh temperature, low scorch is defined at paragraphs [0014] and [0033] of applicants’ published application, i.e., US PG PUB 2025/0214294.
Moreover, present claim 6 recites “rapid blending” which is defined at paragraph [0044] of applicants’ published application, i.e., US PG PUB 2025/0214294 as mixing all the constituents of the crosslinkable compound composition in less than 60 seconds.
Specifically, WO ‘149 only discloses a method for preparing crosslinked insulation layers of medium to extra-high voltage power cables from using polyolefin compositions via an one-unit operation continuous extrusion configured with an injector for adding a high temperature decomposing peroxide (Paragraphs [0001]-[0004] and [0007]). However, it does not specifically mention the claimed steps of providing a melt compounding device sequentially having a solids conveying section, a melting/mixing zone, and an ultrahigh temperature mixing zone, wherein the temperature of the ultrahigh temperature mixing zone is from 150.1° to 180.0° C.; feeding to the melting/mixing zone of the melt compounding device any one of materials (a) to (c): (a) a pellets/coagent(s) premixture made by contacting solid pellets of an intermediate compound, which at the start comprises one or more thermoplastic polyolefins and one or more antioxidants, but lacks peroxides and multialkenyl crosslinking coagents, with one or more multialkenyl crosslinking coagents, or (b) a pellets/coagent(s)/organic peroxide(s) premixture made by contacting solid pellets of an intermediate compound, which at the start comprises one or more thermoplastic polyolefins and one or more antioxidants, but lacks peroxides and multialkenyl crosslinking coagents, with a combination of curative additives comprising one or more multialkenyl crosslinking coagents, one or more organic peroxides or (c) solid pellets of an intermediate compound, which at the start comprises one or more thermoplastic polyolefins and one or more antioxidants, but lacks peroxides and multialkenyl crosslinking coagents, wherein material (c) lacks curative additives; melting and first mixing the one or more thermoplastic polyolefins with the other constituents of the material (a), (b), or (c) for 15 to 35 seconds to yield an initial melted mixture thereof in the melting/mixing zone; moving the initial melt mixture into the ultrahigh temperature mixing zone of the melt compounding device; optionally injecting one or more multialkenyl crosslinking coagents and/or one or more organic peroxides (collectively “curative additive(s)”) into the initial melt in the ultrahigh temperature mixing zone, wherein the injecting of one or more organic peroxides is performed if the material (a) is fed and the injecting of one or more multialkenyl crosslinking coagents and/or one or more organic peroxides is performed if the material (c) is fed; and second mixing the material (a), (b), or (c) and any injected curative additive(s) in the ultrahigh temperature mixing zone for 10 to 20 seconds; and discharging the resulting crosslinkable compound composition from the melt compounding device; wherein the total residence time of the material (a), material (b), or material (c) in the melt compounding device is from 25 to 55 seconds and wherein the total residence time of any injected curative additive(s) in the melt compounding device is from 10 to 30 seconds.
Correspondence
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants 09/26/2024.
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