Douglas B. Gundel

Patent Trials and Appeals Board

Sep 24, 2019

14442744 - (D) (P.T.A.B. Sep. 24, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/442,744 05/14/2015 Douglas B. Gundel 67653US004 3347
32692 7590 09/24/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
NGUYEN, CHAU N
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
09/24/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte DOUGLAS B. GUNDEL
_______________
Appeal 2018-005218
Application 14/442,744
Technology Center 2800
_______________
Before MARK NAGUMO, GEORGE C. BEST, and
JANE E. INGLESE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 8–14, and 17–20 of Application
14/442,744. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real parties in interest as 3M
Company and 3M Innovative Properties Co. Appeal Br. 2.
Appeal 2018-005218
Application 14/442,744
2
BACKGROUND
The ’744 Application describes cables designed for use external to a
metal enclosure. Spec. 1. In particular, the Specification describes cables
that include a plurality of separate individual conductor sets extending along
a length of the cable. Id. Each conductor set includes two or more insulated
conductors and a pair of shielding films disposed on opposite sides of the
conductor set; each shielding film includes a cover portion and pinched
portions. Id. The shielding films are arranged so that their cover portions
substantially surround the conductor set. Id. The pinched portions of the
shielding films are located on either side of the conductor set and extend
along the length of the cable. Id.
Claim 1 is representative of the ’744 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A cable comprising:
a plurality of separate individual conductor sets, each
conductor set extending along a length of the cable and
comprising:
two insulated conductors;
first and second conductive shielding films disposed on
opposite first and second sides of the conductor set, the first and
second conductive shielding films including cover portions and
pinched portions arranged such that, in transverse cross-section,
the cover portions of the first and second shielding films in
combination substantially surround the conductor set, and the
pinched portions of the first and second shielding films in
combination formed pinched portions of the conductor set on
each side of the conductor set, each pinched portion comprising
an edge extending along the length of the cable; and
an insulating jacket surrounding the plurality of the
conductor sets.
Appeal Br. 8.
Appeal 2018-005218
Application 14/442,744
3
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 5, 8, 9, and 11–14 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kebabjian2
and Prudhon.3 Final Act. 2.
2. Claims 1–3 and 11–14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kebabjian and Gundel.4
Final Act. 4.
3. Claims 10 and 17–20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kebabjian, Prudhon, and
Laudenslager.5 Final Act. 6.
DISCUSSION
Rejection 1. For reasons that will become apparent, we limit our
discussion of this rejection to claim 1, which is the only independent claim
subject to this rejection.
“[W]hen determining the patentability of a claimed invention which
combines two known elements, the question is whether there is something in
the prior art as a whole to suggest the desirability, and thus the obviousness,
of making the combination.” In re Rouffet, 149 F.3d 1350, 1355–56 (Fed.
Cir. 1998) (citations, internal quote marks, and brackets omitted). In making
an obviousness rejection, an examiner must identify where the prior art

2 US 6,452,107 B1, issued September 17, 2002.
3 US 6,043,434, issued March 28, 2000.
4 WO 2010/148157 A1, published December 23, 2010.
5 US 8,143,522 B2, issued March 27, 2012.
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Application 14/442,744
4
suggests the desirability of making the combination. This identification must
be explicit. “[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
In rejecting claim 1, the Examiner found that
It would have been obvious to one skilled in the art to
modify the shield (18) of Kebabjian to comprise first and
second shielding films with cover portions and pinched portions
as taught by Prudhon since it has been held that constructing a
formerly integral structure into various elements involves only
routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177,
179[ (Bd. Pat. Interf. 1969)].
Final Act. 3; see also Answer 4–5.
This is not an adequate reason to combine the teachings of Kebabjian
and Prudhon and arrive at a conclusion of obviousness.
First, the statement does not articulate a reason to make the proposed
combination that demonstrates that it would have been regarded as desirable
to do so. At most, the Examiner’s finding demonstrates that a person of
ordinary skill in the art would have had a reasonable expectation of success
in making the proposed combination. This is not a sufficient reason to
combine references. A finding that something may be done is not equivalent
to a finding that that thing is desirable to do. It is the latter finding that is
required in an obviousness analysis. See Rouffet, 149 F.3d at 1355–56.
Second, the Examiner’s finding is not supported as a matter of law.
The case the Examiner relies upon, Nerwin v. Erlichman, does not hold that
“constructing a formerly integral structure into various elements involves
only routine skill in the art.” As we have previously explained, the
Examiner’s reliance on Nerwin to establish that “it is per se obvious to
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Application 14/442,744
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separate a single component into two components is misplaced.” Ex parte
Van Deer Meer, Appeal 2012-011581, 2014 WL 1320885, at *2 (PTAB
March 20, 2014) (citing Ex parte Kawano, Appeal 2011-002048, 2013 WL
603839, at *4 (PTAB February 14, 2013)); see also Ex parte Grilliot,
Appeal 2011-000164, 2013 WL 1121948, at *2 (PTAB March 7, 2013); Ex
parte Van Oort, Appeal 2011-001632, 2013 WL 1289460, at*4–*5 (PTAB
March 25, 2013); Ex parte Gruden, Appeal 97-1147, 1997 WL 1883962, at
*3 (BPAI 1997) (“The examiner’s reliance on and citation of Nerwin v.
Erlichman, 168 USPQ 177, 179 (Bd. Pat. Int. 1969), which according to the
examiner held that ‘constructing a formerly integral structure in various
elements involves only routine skill in the art,’ appears to us to be
misplaced. We find no such ‘holding’ in Nerwin v. Erlichman.”).
Because the Examiner has not identified a sufficient reason for a
person of ordinary skill in the art to have made the modification proposed in
the rejection, we are constrained to reverse the rejection of claim 1. Thus, we
also reverse the rejection of claims 2, 5, 8, 9, and 11–14.
Rejection 2. The Examiner rejected claims 1–3 and 11–14 as
unpatentable over the combination of Kebabjian and Gundel. Final Act. 4–6.
For reasons that will become apparent, we limit our discussion to the
rejection of claim 1.
In rejecting claim 1, the Examiner found that
[i]t would have been obvious to one skilled in the art to modify
the shield (18) of Kebabjian to comprise first and second
shielding films with cover portions and pinched portions as
taught by Gundel since it has been held that constructing a
formerly integral structure into various elements involves only
routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177,
179.
Id. at 5–6.
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Application 14/442,744
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This is the same statement of reasons to combine the teachings of two
references that the Examiner made with respect to Kebabjian and Prudhon in
Rejection 1. As we discussed above, this is not a sufficient statement of a
reason to combine two references. We, therefore, reverse the rejection of
claim 1 as unpatentable over the combination of Kebabjian and Gundel for
the same reasons we reversed the rejection of claim 1 in Rejection 1.
Accordingly, we also reverse the rejection of claims 2, 3, and 11–14 as
unpatentable over the combination of Kebabjian and Gundel.
Rejection 3. The Examiner rejected claims 10 and 17–20 as
unpatentable over the combination of Kebabjian, Prudhon, and
Laudenslager. Final Act. 6–8.
This rejection relies upon the rejection of claim 1 as unpatentable over
the combination of Kebabjian and Prudhon. Id. at 6. Because we have
reversed this rejection, we also reverse the rejection of claims 10 and 17–20
as unpatentable over the combination of Kebabjian, Prudhon, and
Laudenslager.
CONCLUSION
In summary:
Claims
Rejected Basis Affirmed Reversed
1, 2, 5, 8, 9, and
11–14
§ 103(a)
Kebabjian
Prudhon
1, 2, 5, 8, 9, and 11–14
1–3 and 11–14
§ 103(a)
Kebabjian
Gundel
1–3 and 11–14
Appeal 2018-005218
Application 14/442,744
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Claims
Rejected Basis Affirmed Reversed
10 and 17–20
§ 103(a)
Kebabjian
Prudhon
Laudenslager
10 and 17–20
Overall Outcome 1–3, 5, 8–14, and 17–20
REVERSED