Ex Parte SevierDownload PDFPatent Trials and Appeals BoardSep 28, 201814044520 - (D) (P.T.A.B. Sep. 28, 2018) Copy Citation 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 2 Appeal2018-000610 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 3 Appeal2018-000610 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. 4 Appeal2018-000610 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 5 Appeal2018-000610 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 6 Appeal2018-000610 Application 14/044,520 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. 7 Appeal2018-000610 Application 14/044,520 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 8 Copy with citationCopy as parenthetical citation