Ex Parte Siripurapu et al

Patent Trial and Appeal Board

Nov 20, 2018

14735794 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/735,794 06/10/2015
77001 7590
ULMER & BERNE LLP
c/o Diane Bell
600 Vine Street
SUITE 2800
Cincinnati, OH 45202
11/23/2018
FIRST NAMED INVENTOR
Srinivas Siripurapu
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.
39795-1005US02 1055
EXAMINER
MURATA, AUSTIN
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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):
ipdocketing@ulmer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SRINIVAS SIRIPURAPU, VITTHAL SAWANT,
SATISH NARA YAN PATIL, and RAJENDRA YASHWANT CHAUDHARI
Appeal2018-000727
Application 14/735,794
Technology Center 1700
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
DEBRA L. DENNETT, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
June 10, 2015 ("Spec."); Final Office Action dated July 15, 2016 ("Final"); Appeal
Brief filed April 20, 2017 ("Appeal Br."); Examiner's Answer dated August 24,
2017 ("Ans."); and Reply Brief filed October 24, 201 7 ("Reply Br.").
Appeal2018-000727
Application 14/735,794
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision
finally rejecting claims 1-5 and 7-23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a method for making a coated, overhead conductor
using a compositional kit, and to a method for making the compositional kit. See
Spec. ,r,r 10-11. According to the Specification, the compositional kit includes first
and second compositions that, when mixed, form a coating composition that can be
applied to a conductor to form a coating that allows the conductor to operate at
lower temperatures. Id. ff 2, 11. The first composition includes a filler, a cross-
linking agent (e.g., reactive agent), and an emissivity agent. Id. ,r 27. The second
composition includes a silicate binder. Id. According to the Specification, "[t]he
inventors have unexpectedly discovered that upon mixing of the two
[compositions], the resulting coating composition can both begin to cure and
exhibit an increase in viscosity over time." Id. "Because high viscosity adversely
affects the coating composition as it is coated onto the bare conductor," the first
and second compositions are kept separate during storage. Id. ,r 3 8. "In certain
embodiments, the coating composition can be used within about 24 hours after
mixing, in certain embodiments within about 12 hours, and in certain embodiments
within about 8 hours." Id. ,r 39.
Claim 1 is representative of the claims on appeal, and is reproduced below:
1. A method for making a compositional kit to form a curable
coating composition, the method comprising:
a. mixing a first composition comprising from about 2% to
about 55% of a filler, by dry weight of the compositional kit, about
2 The Applicants under 37 C.F.R. § 1.46, and, therefore, the Appellants under 35
U.S.C. § 134, are General Cable Technologies Corporation and Novoto Industries.
Appellants identify General Cable Technologies Corporation as the real party in
interest. Appeal Br. 1.
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Application 14/735,794
5% to about 20% of a cross-linking agent, by dry weight of the
compositional kit, and an emissivity agent, the emissivity agent
comprising one or more of gallium oxide, cerium oxide, zirconium
oxide, silicon hexaboride, carbon tetraboride, silicon tetraboride,
silicon carbide, molybdenum disilicide, tungsten disilicide, zirconium
diboride, cupnc chromite, boron carbide, boron silicide, copper
chromium oxide, aluminum nitride, and magnesium oxide; and
b. mixing a second composition comprising a metal silicate
binder, wherein the metal of the metal silicate binder is one of an
alkali earth metal or an alkaline earth metal; and
wherein the first composition and the second composition are
separated.
Appeal Br. 23 (Claims Appendix). Claim 11, the only other independent claim on
appeal, recites "[a] method for making a coated overhead conductor, ...
comprising" providing a kit by separately preparing first and second compositions,
mixing the first and second compositions to form a coating composition, and then
applying the coating composition to a surface of a bare conductor. Id. at 25-26.
Unlike claim 1, claim 11 does not require a specific emissivity agent. See id. at 25.
The Examiner relies on the following references as evidence of
unpatentability:
Karki us 4,123,591 Oct. 31, 1978
Blasko et al. us 4,318,743 Mar. 09, 1982
Babel et al. us 5,885,658 Mar. 23, 1999
Griffith et al. us 5,891,238 Apr. 06, 1999
McCullough et al. US 2005/0178000 Al Aug. 18, 2005
Brace et al. US 2006/0276780 Al Dec. 07, 2006
Riel et al. US 7,179,522 B2 Feb.20,2007
Lawry et al. US 2010/0076719 Al Mar. 25, 2010
Futaeda et al. US 2011/0042471 Al Feb.24,2011
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Application 14/735,794
Guo
Guo
US 2014/0329951 Al
WO 2013/097464 Al
Nov. 06, 2014
Apr. 07, 2013
The claims stand finally rejected under 35 U.S.C. § 103 as follows (see Ans.
2; Final 2-11):
1. claims 1-5, 7, 8, and 10 over Guo and Futaeda, alone or in
combination with Blasko;
2. claim 9 over Guo, Futaeda, and Griffith, alone or in combination with
Blasko;
3. claims 11, 12, 15-17, 19, 20, and 23 over Guo, Babel and Lawry,
alone or in combination with Blasko;
4. claim 13 over Guo, Babel, Lawry, and Karki, alone or in combination
with Blasko;
5. claims 14 and 21 over Guo, Babel, Lawry, and McCullough, alone or
in combination with Blasko;
6. claim 18 over Guo, Babel, Lawry, and Brace, alone or in combination
with Blasko; and
7. claim 22 over Guo, Babel, Lawry, and Riel, alone or in combination
with Blasko.
Appellants' arguments in support of patentability of dependent claims 2-5
and 7-10 and of dependent claims 12-23 are based on limitations recited in
independent claims 1 and 11, respectively. See generally Appeal Br. 15-22.
Rejections of claims 1-5 and 7-10 (Grounds 1 and 2)
The Examiner finds Guo discloses or suggests mixing the components of the
first and second compositions, with the exception of the claimed emissivity agent.
Final 2. The Examiner finds one of ordinary skill in the art would have included an
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Application 14/735,794
emissivity agent in Guo's mixture of components based on Fuetada's teaching that
IR emitting substances provide climate control functionality. Id. at 2-3. The
Examiner acknowledges Guo does not form two different compositions that are
separated. Id. at 3. The Examiner argues, however, that a change in the sequence of
adding components to a mixture is prima facie obvious absent a showing of
unexpected results. Id.; see In re Burhans, 154 F.2d 690 (CCPA 1946).
In the alternative, the Examiner relies on Blasko for a teaching of a method
of making a similar coating composition by combining a portion ( 150 grams) of
the total quantity of potassium silicate with a metal hydroxide hardening agent and
adding filler and pigment materials to form a first composition, then adding the
remaining portion (200 grams) of the potassium silicate, i.e., a second composition,
to obtain the final coating composition. See Final 3--4; Blasko 6:51-7:23. The
Examiner finds one of ordinary skill in the art would have modified Guo' s method
to add silicate as the final component in forming the coating composition based on
Blasko's disclosure that such order of addition is a known alternative. Final 4.
Appellants argue Specification paragraph 27 and Table 2 evidence
unexpected results are achieved by the claimed method: "[I]t has been
unexpectedly discovered that upon mixing of the first and second compositions,
the resulting coating composition will begin to cure and exhibit an increase in
viscosity over time." Appeal Br. 1 7; see also Reply Br. 3. Appellants argue Guo,
alone or in combination with Blasko, fails to "teach or suggest keeping the first and
second compositions separate." Appeal Br. 17; see also Reply Br. 3. Appellants
assert that Blasko teaches away from the claimed method because Blasko' s first
composition already includes a metal silicate. Appeal Br. 18.
We agree with the Examiner that Appellants' arguments are not persuasive
of reversible error because they are not commensurate in scope with the claims.
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See Ans. 2-5. As explained by the Examiner, use of the term "comprising" to
introduce the components of each of the first and second compositions means that
each of the compositions may include components other than those explicitly
recited. Id. at 4. In other words, the claims do not preclude the addition of a silicate
to the first composition. This interpretation of claim 1 is supported by the
Specification's explicit disclosure that other additives may be included in the first
and second compositions. See Spec. ,r 33. Blasko, therefore, does not teach away
from the method as claimed.
As also explained by the Examiner, the claim 1 phrase "wherein the first
composition and the second composition are separated" does not require separation
of the first and second compositions for any particular time period. Ans. 4--5.
Again, use of the term "comprising" to introduce the method steps means claim 1
is not limited to the explicitly-recited steps. As drafted, therefore, claim 1 does not
preclude a subsequent step of mixing the two compositions immediately following
the steps of forming those compositions. This interpretation of claim 1 is consistent
with the Specification's disclosure that keeping the first and second compositions
separate is not a requirement (see Spec. ,r 27 ("The two-parts ... can be kept
separate until use." ( emphasis added))), and that the coating composition may be
applied successfully to a substrate up to 24 hours after combining the first and
second compositions (see Spec. ,r 39 supra p. 2). Likewise, Specification Table 2
evidences that the particular composition described in Example 1 could be applied
successfully as a coating up to 8 hours after mixing the first and second
compositions. See Spec. ,r 73. Thus, we agree with the Examiner that the testing
described in the Specification is not persuasive evidence of unexpected results in
the claimed method. See Ans. 2.
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In sum, we are not convinced of reversible error in the Examiner's
conclusion of obviousness as to claims 1-5 and 7-10 for the reasons stated in the
Final Office Action, the Answer, and above.
Rejections of claims 11-23 (Grounds 3-7)
The Examiner relies on Guo and Blasko as discussed above. Final 5-7. The
Examiner finds the pigments of Guo are emissivity agents. Final 6. The Examiner
finds these references disclose applying a coating composition (inorganic paint) to
a substrate, but do not identify explicitly application of the composition to an
overhead conductor. Id. at 7. The Examiner cites Babel as evidence that the Guo
and Blasko inorganic paints can be applied as thermal control paints and would
have the property of low solar absorbance with high infrared emittance. Id. ( citing
Babel 4:47---65, Abstract). The Examiner finds the ordinary artisan would have
used Guo's paint on the surface of an overhead conductor based on Lawry's
disclosure that thermal rating of an overhead conductor can be improved by
controlling the emissivity and absorptivity of the surface of the conductor. Id.
( citing Lawry ,r 4, Fig. 1 ).
To the extent Appellants advance the same arguments in support of
patentability discussed above in connection with the rejections of claims 1-5 and
7-10 (see, e.g., Appeal Br. 17 (referring to both claims 1 and 11 in discussing the
first ground of rejection); id. at 20), these arguments are likewise unpersuasive in
showing reversible error in the Examiner's rejections of claims 11-23.
Appellants argue the Examiner erred in finding the ordinary artisan would
have had a reason to apply Guo' s coating composition to an overhead conductor.
More specifically, Appellants contend Babel teaches away from using inorganic
(ceramic) white paint thermal control coatings and Lawry merely describes an
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instrument for measuring emissivity and absorptivity. Appeal Br. 20-21; see also
Reply Br. 4. Appellants argue the Examiner has not shown that the ordinary artisan
would have had a reasonable expectation of success in using the compositions of
Guo and Blasko to thermally control an aluminum overhead conductor. Appeal Br.
21; see also Reply Br. 5.
The Examiner has addressed these arguments in detail in the Answer. Ans.
5-8. We find the Examiner's position to be reasonable and supported by the
evidence cited by the Examiner in support of the rejections. See Final 5-11. We
agree with the Examiner that Appellants' arguments are unpersuasive of reversible
error in the Examiner's conclusion of obviousness as to claims 11-23 for the
reasons stated in the Answer. See Ans. 5-8. We add that, in general, Appellants'
arguments are unpersuasive because they are directed to the individual teachings of
the references and fail to address the Examiner's findings as to the understanding
of the ordinary artisan upon review of the combined teachings of the references. In
addition, a number of Appellants' arguments are based solely on attorney
argument. See, e.g., Appeal Br. 21 ("The compositions of Guo and Blasko contain
additional components compared to the compositions of Babel including
crosslinking agents and large quantities of filler, either of which could interfere
with the desired thermal properties. And because Guo discloses pigments, which
can be any color, instead of 'emissivity agents,' one of ordinary skill in the art
would not consider the dry paints of Guo to be thermal coating compositions.").
Arguments of counsel cannot take the place of factually-supported, objective
evidence. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).
In sum, we are not convinced of reversible error in the Examiner's
conclusion of obviousness as to claims 11-23 for the reasons stated in the Final
Office Action, the Answer, and above.
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Application 14/735,794
Claims
R.e·ectea
1-5, 7, 8, § 103
and 10
9 § 103
11, 12, § 103
15-17,
19, 20,
and23
13 § 103
14,21 § 103
18 § 103
22 § 103
Summary
Order
Guo and Futaeda, alone 1-5, 7, 8,
and in combination with and 10
Blasko
Guo, Futaeda, Blasko, 9
and Griffith, alone and
in combination with
Blasko
Guo, Babel and Lawry, 11, 12, 15-
alone and in 17, 19, 20,
combination with and23
Blasko
Guo, Babel, Lawry, and 13
Karki alone and in
combination with
Blasko
Guo, Babel, Lawry, and 14,21
McCullough, alone and
in combination with
Blasko
Guo, Babel, Lawry, and 18
Brace, alone and in
combination with
Blasko
Guo, Babel, Lawry, and 22
Riel, alone and in
combination with
Blasko
1-5 and 7-
23
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
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Appeal2018-000727
Application 14/735,794
AFFIRMED
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