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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d). The certified copy has been filed in present Application No. 18/969,500, filed on December 5, 2024.
Information Disclosure Statement
The information disclosure statement filed December 5, 2024 has been submitted for consideration by the Office. It has been placed in the application file and the information referred to therein has been considered.
Drawings
The drawings are objected to because Figure 1 lacks the proper cross-hatching which indicates the type of materials, which may be in an invention. Specifically, the cross hatching to indicate the conductor and insulative materials is improper. The applicant should refer to MPEP Section 608.02 for the proper cross-hatching of materials. Correction is required.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
Extensive mechanical and design details of apparatus should not be given.
The abstract of the disclosure is objected to because in lines 4-5, the abstract contains run on sentences, which is improper language for the abstract. The applicant should correct all instances of run on sentences, to provide the abstract with proper language. Correction is required. See MPEP § 608.01(b).
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 1-21 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation an additive being graphene, graphene or graphite nanoplatelets, graphene oxide, reduced graphene oxide and/or graphite in an amount of between 0.05 wt% and 10 wt%, based on the weight of the composition, and the claim also recites preferably between 0.25 wt% and 5 wt % and more preferably between 0.5 wt% and 2 wt%, both of which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 8 recites the broad recitation “the metallic foil has a thickness of from 5 µm to 250 µm, and the claim also recites “preferably from 10 µm to 200 µm”, and “more preferably from 20 µm to 150 µm”, and “more preferably from 25 µm to 100 µm”, and “most preferably from 30 µm to 75 µm”, all of which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In the present instance, claim 20 recites the broad recitation “the metallic foil has a thickness of from 5 µm to 250 µm, and the claim also recites “preferably from 10 µm to 200 µm”, and “more preferably from 20 µm to 150 µm”, and “more preferably from 25 µm to 100 µm”, and “most preferably from 30 µm to 75 µm”, all of which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-7 and 9-19 are depended upon rejected claims and therefore are also rejected.
Claim Objections
Claim 1 is objected to because of the following informalities: In claim 1, line 10, the term “fist” is misspelled. The applicant should replace the term with –first--. Appropriate correction is required.
Treatment of Claims
For the sake of examination, the examiner assumes that the applicant intends to claim the broadest range recited in claims 1, 8, and 20.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1-5, 7-8 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Johanson (Pub Num 2021/0391098) in view of Huo et al (CN Pat Num 103612461, herein referred to as Huo). Johanson discloses a submarine cable (Figs 1-3) that has low cost, light weight dry design, and excellent fatigue properties (Paragraph 11). Specifically with respect to claim 1, Johanson discloses a submarine cable (1, Fig 2) comprising a conductor (2) extending along a centre axis (Paragraph 17), an insulation system (7, 3, 8) including at least a first semiconducting layer (7) provided around the conductor (2), and an insulation layer (3) provided around the first semiconducting layer (7), a laminate water barrier structure (9, 4) provided around the insulation system (7,3, 8), wherein the laminate water barrier structure (9, 4) comprising a metallic foil (4) having a first surface facing towards the centre axis (Fig 2) and a second surface facing away from the centre axis (Fig 2), an adhesive polymer layer (10) is arranged in direct contact with the second surface of the metallic foil (4, Fig 2), wherein the adhesive polymer layer (10) is obtained from a composition including a base polymer (i.e. resin) and graphite (Paragraph 42). With respect to claim 2, Johanson discloses that the laminate water barrier structure (9, 4) is in direct contact with the insulation system (7, 3, 8). With respect to claim 3, Johanson discloses that the laminate water barrier structure (9, 4) has been thermally joined by heat treatment (i.e. metallic layer is laser welded around layer 9, Paragraph 42). With respect to claim 4, Johanson discloses that the adhesive polymer layer (10) may be conductive (i.e. graphite is conductive, Paragraph 42). With respect to claim 5, Johanson discloses that the laminate water barrier structure (9, 4) is a tape wrapped around the insulation system (7, 3, 8, Paragraph 41-42). With respect to claim 7, Johanson discloses that the metallic foil (4) is made of a copper-alloy (i.e. Copper Nickel, Paragraph 42). With respect to claim 8, Johanson discloses that the metallic foil (4) has a thickness of from 5 µm to 250 µm (i.e. 0.01-1mm = 10µm-1000µm, Paragraph 27). With respect to claims 13-14, Johanson discloses that the power cable (Fig 2a) does not comprise a metallic sheath of lead arranged radially outside of the insulation system (7, 3, 8) and is a lead-free power cable (Paragraph 42). With respect to claim 16, Johanson discloses that the laminate water barrier structure (9, 4) has been thermally joined by heat treatment (i.e. metallic layer is laser welded around layer 9, Paragraph 42). With respect to claim 17, Johanson discloses that the adhesive polymer layer (10) may be conductive (i.e. graphite is conductive, Paragraph 42). With respect to claim 18, Johanson discloses that the laminate water barrier structure (9, 4) is a tape wrapped around the insulation system (7, 3, 8, Paragraph 41-42). With respect to claim 19, Johanson discloses that the metallic foil (4) is made of a copper-alloy (i.e. Copper Nickel, Paragraph 42). With respect to claim 20, Johanson discloses that the metallic foil (4) has a thickness of from 5 µm to 250 µm (i.e. 0.01-1mm = 10µm-1000µm, Paragraph 27).
While Johanson discloses that the adhesive polymer layer (10) may comprise graphite (Paragraph 42), Johanson doesn’t necessarily disclose wherein an additive being graphene, graphene or graphite nanoplatelets, graphene oxide, reduced graphene oxide and/or graphite in an amount of between 0.05 wt% and 10 wt% (claim 1), nor the additive of the composition of the adhesive polymer layer being in the form of composites or nanocomposites and/or particles or nanoparticles (claim 11), nor the power cable being a HVDC power cable or a HVAC power cable (claim 15).
Huo teaches a graphene composite semiconducting tape for HVAC power cable (Paragraph 4), thereby improving the shield and homogenization of the electrical field effect of the HVAC cables (Paragraph 6), wherein the conductive additive possesses extraordinary electrical conductivity, excellent mechanical properties and thermal conductivity (Paragraph 66). Specifically, with respect to claim 1, Huo teaches a tape composite layer comprising a substrate, wherein both sides are coated with a semiconductive adhesive layers, wherein the adhesive comprises 0.05 wt% and 10 wt% of graphene power (i.e. 4-8%, Paragraph 7). With respect to claim 11, Huo discloses that the additive of the composition of the adhesive polymer may be in the form of particles (Paragraph 37). With respect to claim 15, Huo discloses that the cable may be a HVAC cable (Paragraph 6).
It would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the adhesive polymer layer comprising graphite of Johanson to comprise the graphene particles configuration as taught by Hu because Hu teaches that such a configuration provides a graphene composite semiconducting tape for HVAC power cable (Paragraph 4), thereby improving the shield and homogenization of the electrical field effect of the HVAC cables (Paragraph 6), wherein the conductive additive possesses extraordinary electrical conductivity, excellent mechanical properties and thermal conductivity (Paragraph 66).
Johanson also doesn’t necessarily disclose the laminate water barrier structure having a water permeability of below 0.05 g / (m2*24 h) (claim 12).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the submarine cable of Johanson to comprise the water permeability being below 0.05 g / (m2*24 h), since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 6, 9-10, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Johanson (Pub Num 2021/0391098) in view of Huo (CN Pat Num 103612461), as applied to claims 1 & 2 above (herein referred to as modified Johanson), further in view of Jorgensen et al (EP Pat Num 4016552, herein referred to as Jorgensen). Modified Johanson discloses a submarine cable (Figs 1-3) that has low cost, light weight dry design, and excellent fatigue properties (Paragraph 11).
While modified Johanson discloses that the cable may comprise an adhesive comprising graphite, modified Johanson doesn’t necessarily disclose the tape being wrapped around the insulation system with an overlap of subsequent windings (claim 6), nor the base polymer of the composition of the adhesive polymer layer being a thermoplastic polymer (claims 9 & 21), nor the base polymer of the composition of the adhesive polymer layer is PVDC, LLDPE, LDPE, EVA, EMAA or EAA (claim 10).
Jorgensen teaches a lead free water barrier tape suited for dynamical submarine high voltage cables, wherein the tape is light weight, fatigue resistant, has excellent water insulating effect, and good capacity (Paragraph 7). Specifically, with respect to claims 6, 9, 10, and 21, Jorgensen teaches a cable (Fig 1a) comprising a conductor (1), an insulation system (2), and a lead free water barrier tape layer (3), wherein the tape layer (3) comprise a base polymer of the composition of an adhesive polymer (6) is a thermoplastic polymer (Ethyl acrylic acid, i.e. EAA, Paragraph 13), wherein the tape ()3) is wrapped around the insulation system (2) with an overlap of subsequent windings (Fig 1a, Paragraph 18).
It would have been obvious to one having ordinary skill in the art of cables at the time the invention was made to modify the lead free water barrier tape layer of modified Johanson to comprise the adhesive being an thermoplastic adhesive polymer made of EAA configuration as taught by Jorgensen because Jorgensen teaches that such a configuration provides a lead free water barrier tape suited for dynamical submarine high voltage cables, wherein the tape is light weight, fatigue resistant, has excellent water insulating effect, and good capacity (Paragraph 7).and since it has been held to be within general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the enclosed PTO-892 form for the citation of pertinent art in the present case, all of which disclose submarine cables comprising water barrier layers surrounded by adhesive layers.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM H MAYO III whose telephone number is (571)272-1978. The examiner can normally be reached on M-Thurs (5:30a-3:00p) Fri 5:30a-2p (w/alternating Fridays off).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani Hayman can be reached on (571) 270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/William H. Mayo III/
William H. Mayo III
Primary Examiner
Art Unit 2847
WHM III
July 31, 2026
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