Ex Parte Sevier

Patent Trial and Appeal Board

Sep 28, 2018

14044520 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/044,520 10/02/2013
7663 7590 09/28/2018
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
FIRST NAMED INVENTOR
David Sevier
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RUBAD-004A 1078
EXAMINER
SALVA TORE, LYNDA
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
09/28/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SEVIER
Appeal2018-000610
Application 14/044,520
Technology Center 1700
Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 14--23, which constitute all the claims pending in
this application. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In explaining our Decision, we refer to the Specification filed October 2,
2013 ("Spec."); Final Office Action dated September 19, 2016 ("Final
Act."); Advisory Action dated March 16, 2017 ("Adv. Act."); Appeal Brief
filed April 11, 2017 ("Appeal Br."); Examiner's Answer dated September
15, 2017 ("Ans."); and Reply Brief filed October 25, 2017 ("Reply Br.").
2 Appellant is Applicant Rubadue Wire Co., which, according to the Appeal
Brief, is also identified as the real party in interest. Appeal Br. 3.
3 Claims 1-13 have been cancelled. Appeal Br. 5, 19.
Appeal2018-000610
Application 14/044,520
The Claimed Invention
Appellant's disclosure relates to self-bonding conductive wire and, in
particular, to the use of polyester polyether block copolymers in
self-bonding wire, and methods of making and using such wire. Spec. 1;
Abstract. Claim 14 is illustrative of the claimed subject matter on appeal
and is reproduced below from the Claims Appendix to the Appeal Brief
(Appeal Br. 19) (key disputed claim language italicized and bolded):
14. A method of using a self-bonding conductive wire,
comprising the steps of:
providing a wire comprising a conductor and a
covering disposed over the conductor, the covering
comprising a polyester polyether block copolymer;
configuring the wire into desired configuration
wherein at least a first portion of the covering is placed in
physical contact with at least a second portion of the
covermg_;
applying sufficient energy to the first and second
portions of the covering to cause the first and second
portions of the covering to thermoplastically deform
and self-bond with one another; and
reducing the energy applied to the covering to
cause the first and second portions of the covering to
resolidify and fuse into a continuous structure.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Satsuka et al., us 4,945,191 July 31, 1990
(hereinafter "Satsuka")
Hu US 2006/0102380 Al May 18, 2006
Ni US 2012/0308819 Al Dec. 6, 2012
Sumitomo Elec. Indus. Ltd. GB 1513036 June 1, 1978
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Application 14/044,520
(hereinafter "GB '036")
The Rejections
On appeal, the Examiner maintains (Ans. 2) the following rejections:
1. Claims 14--17, 20, and 23 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Satsuka ("Rejection 1"). Final Act. 3.
2. Claims 18 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Satsuka as applied to claim 14 in view of Hu
("Rejection 2"). Final Act. 4.
3. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Satsuka as applied to claim 14 in view of GB '036
("Rejection 3"). Final Act. 4.
OPINION
Re;ection 1
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we reverse the Examiner's
Rejection 1 for principally the same reasons provided by Appellant in the
Appeal Brief and Reply Brief. We add the following.
The Examiner determines that Satsuka discloses all of the steps of
claim 14 and thus, concludes that the reference anticipates the claimed
method. Final Act. 3--4 (citing Satsuka, Abstract, col. 3, 11. 15-20, col. 5, 11.
40--45, col. 7, 11. 14--25, Figs. 1-3). Regarding the recitations "applying
sufficient energy to the first and second portions of the covering to cause the
first and second portions of the covering to thermoplastically deform and
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Application 14/044,520
self-bond with one another" and "reducing the energy applied to the
covering to cause the first and second portions of the covering to resolidify
and fuse into a continuous structure," the Examiner relies on column 5 of
Satsuka and, in particular, finds that Satsuka discloses using heat-setting to
impart curl or coil to the wire. Id. at 3 ( citing Satsuka, col. 5, 11. 40-45).
Based on Satsuka' s disclosure, the Examiner states that "it is expected that
heat would be applied during normal usage" of the wire and the "heat would
naturally cause the outer sheath to deform the wire into a coil or curl." Id. at
3--4. The Examiner also states that once the heat is removed or lowered, the
wire's outer sheath would necessarily "heat-set" the wire such that the shape
of the coil or curl is maintained. Id. at 3.
Appellant argues that the Examiner's rejection of claim 14 should be
reversed because Satsuka does not disclose the "applying sufficient energy
to the first and second portions of the covering to cause the first and second
portions of the covering to thermoplastically deform and self-bond with one
another" and "reducing the energy applied to the covering to cause the first
and second portions of the covering to resolidify and fuse into a continuous
structure" steps of the claim. Appeal Br. 14. In particular, Appellant argues
that none of the portions of Satsuka relied upon by the Examiner expressly
or inherently disclose applying energy (e.g., heat) sufficient to cause the first
and second portions of the wire's covering to "thermoplastically deform and
self-bond with one another" and, upon reducing the energy applied (e.g.,
after cooling), the first and second portions of the wire's covering would
"resolidify and fuse into a continuous structure." Id. at 16. See also Reply
Br. 6-8.
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Application 14/044,520
The weight of the evidence supports Appellant's argument. To serve
as an anticipatory reference, "the reference must disclose each and every
element of the claimed invention, whether it does so explicitly or
inherently." In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We agree
with Appellant that the portions of Satsuka upon which the Examiner relies
(see Ans. 3--4) do not explicitly or inherently disclose either of the disputed
claim limitations.
According to the Appellant's Specification, "self-bonding is achieved
by softening or melting the coating and then allowing the coating to
resolidify and fuse." Spec. 1, ,r 8. The Specification further provides that
the "softening or melting may be performed by application of heat,
electricity, or a suitable solvent." Id.; see also id. at 6, ,r 31 (disclosing that
"energy may be applied to the self-bonding outer coating 18, causing the
polyester polyether block copolymer to thermoplastically deform and self-
bond"); id. ,r 32 ( describing an embodiment wherein "a user may place a
formed coil 12 into an oven for a period of time suitable for the self-bonding
outer coating 18 to self-bond").
As Appellant correctly points out (Appeal Br. 12-13), although
Satsuka discusses "crystalline copolyesters with a melting point of 180° C"
and generally discloses "that the workability when the curl is being formed
and the heat-setting properties of these materials are excellent" (Satsuka, col.
5, 11. 36--43), there is no teaching that any heat applied during Satsuka's
process would be sufficient to thermoplastically deform and actually self-
bond the portions of the wire covering with one another, as required by the
claim. As Appellant notes (Appeal Br. 16), Satsuka describes applying a
heat treatment to the curled cord structures at temperatures ranging from
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Application 14/044,520
140° C to 150° C, which are lower than the melting temperature of at least
180° C of the covering material. See Satsuka, col. 10, 1. 67---col. 11, 1. 1
(disclosing that the cord was "heat-treated at 140° C. for 30 minutes"), col.
11, 1. 68---col. 12, 1. 2 ( disclosing that "curling was imparted to the cord by
it[] being heated at 150° C. for 30 minutes").
As Appellant notes (Reply Br. 7-8), although Satsuka may teach the
use of heat-setting to impart curl or coil to the wire, the reference does not
teach that Satsuka' s heat treatment of the outer sheath would be sufficient to
necessarily result in adjacent coils self-bonding, which, upon cooling, would
necessarily cause the adjacent coils to resolidify and fuse into a continuous
structure.
As Appellant also notes (Reply Br. 7), the fact that Satsuka may teach
or imply that the shape of curled cord would be maintained upon removal of
the heat does not teach or imply that adjacent portions of the wire covering
are necessarily fused into a solid continuous structure, as required by the
claims.
Satsuka's disclosure that "the materials do not damage the
stretchability of the curled cord" (Satsuka, col. 5, 11. 43--44) also seems to
suggest that the adjacent coils of the curled cord are not necessarily fused
into a solid continuous structure insofar as they maintain some degree of
stretchability.
The Examiner does not direct us to sufficient evidence in the record to
support the finding that the application of heat in Satsuka would be
sufficient to necessarily cause self-bonding or that the heat applied during
normal usage in Satsuka's process would have been reasonably expected to
cause self-bonding. The Examiner's assertion that "it is expected that heat
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would be applied during normal usage" (Ans. 3--4) is conclusory and,
without more, insufficient to sustain the Examiner's rejection. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (holding "rejections ... cannot be
sustained by mere conclusory statements").
We, therefore, do not sustain the Examiner's rejection of claim 14 nor
the Examiner's finding that Satsuka anticipates the claim. Because the
remaining claims subject to this rejection each depend from claim 14, we
also do not sustain the Examiner's rejection of these claims.
Accordingly, we reverse the Examiner's rejection of claims 14--17,
20, and 23 under 35 U.S.C. § 102(b) as being anticipated by Satsuka.
Reiections 2 and 3
The foregoing deficiencies-and the absence of evidence that the
missing steps would have been suggested to the person having ordinary skill
in the art- in the Examiner's analysis and conclusion regarding the Satsuka
reference are not remedied by the Examiner's findings regarding the
additional references or combination of references cited in support of the
second ground of rejection (Rejection 2, stated above) and third ground of
rejection (Rejection 3, stated above).
Accordingly, we also reverse the Examiner's Rejections 2 and 3,
stated above.
DECISION/ORDER
The Examiner's rejections of claims 14--23 are reversed.
It is ordered that the Examiner's decision is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED
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