Jenner, Royal O. et al.

Patent Trials and Appeals Board

Dec 26, 2019

15007432 - (D) (P.T.A.B. Dec. 26, 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.
15/007,432 01/27/2016 Royal O. Jenner LCB673-CON-2 5217
32915 7590 12/26/2019
PANDUIT CORP.
18900 Panduit Drive
Tinley Park, IL 60487
EXAMINER
PARVEZ, AZM A
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
patents@panduit.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROYAL O. JENNER, TIMOTHY J. HOUGHTON II,
MASUD BOLOURI-SARANSAR, and RONALD A. NORDIN

Appeal 2018-004673
Application 15/007,432
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant, Panduit Corp.,1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1–4, 7–11, and 14. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant is the “applicant” under 37 C.F.R. § 1.42(b). Appellant
identifies itself as the sole real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The Specification
The Specification’s disclosure relates to communication cables that
are configured to reduce alien crosstalk between cables. Spec. ¶¶2–5. In the
prior art, “the use of a mosaic tape (i.e., a plastic tape having discontinuous
metallic shapes on one or both sides of the plastic tape)” has reduced such
alien crosstalk. Id. ¶4. “However, . . . when manufactured using
conventional processes, gaps between metallic shapes of the mosaic tape are
wider than what is generally desired in order to adequately reduce alien
crosstalk.” Id.
The Claims
Claims 1–14 were rejected. Final Act. 1. Thereafter, Appellant filed
an amendment, which the Examiner entered. Amendment After Final (filed
Aug. 1, 2017); Advisory Action (dated Aug. 16, 2017).
The amendment incorporated limitations from dependent claims 5 and
6 into claim 1, added the word “layout” to claim 1, and canceled claims 5
and 6. Amendment After Final (filed Aug. 1, 2017). Similarly, the
amendment incorporated limitations from dependent claims 12 and 13 into
claim 8, added the word “layout” to claim 8, and canceled claims 12 and 13.
Id.
Accordingly, claims 1–4, 7–11, and 14 are the pending claims, all of
which are rejected. Claim 1 is representative and is reproduced below with
emphasis added to the limitation dispositive of this appeal.
1. A communication cable comprising:
a first communication connector and a second
communication connector;
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a plurality of twisted pairs of insulated conductors
extending between said first communication connector and said
second communication connector; and
a laminated film spanning a length and wrapped around
said plurality of twisted pairs, said laminated film including:
an insulating substrate having a first edge extending in a
direction of said length; and
at least one layer of metallic shapes formed from a metal
layer, said metallic shapes being arranged in a random or
pseudo-random layout, at least some of said metallic shapes
being near to said first edge, and at least some of said metallic
shapes that are near to said first edge being nonadjacent with
said first edge.
Appeal Br. 12 (emphasis added).
The Examiner’s Rejection
The rejection before us is claims 1–4, 7–11, and 14, under 35 U.S.C.
§103(a), as unpatentable over WO 2008/157175 Al, published Dec. 24, 2008
(“Nordin”)2 and US 6,168,458 B1, issued Jan. 2, 2001 (“Kraft”). Final Act.
2; Appeal Br. 7.
DISCUSSION
The Examiner relies on Nordin as teaching all of the subject matter of
the rejected claims save “a first communication connector and a second
communication connector.” Final Act. 2–7. For the communication
connectors, the rejection relies on Kraft. Id. at 3, 5.
At dispute here is a different limitation, namely “said metallic shapes
being arranged in a random or pseudo-random layout,” which is recited in

2 Two of the named inventors of the instant Application are the named
inventors of Nordin. See Nordin, [75].
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claims 1 and 8 and incorporated by reference into the remaining, dependent
claims.
Nordin discloses communication cables having layers of crosstalk-
mitigating materials. Nordin ¶1. The Examiner cites paragraph 29 of
Nordin as teaching metallic shapes being arranged in a random or pseudo-
random layout. Ans. 7; see also Final Act. 4, 6 (citing Nordin ¶29 against
similar limitations recited in now-canceled claims 5, 6, 12, and 13).
Paragraph 29 of Nordin states:
Crosstalk-mitigating materials similar to the crosstalk-mitigating
material 21 shown in FIG. 2 can be made using a variety of
different dimensions and shapes for the conductive areas. For
example, according to one embodiment of the present invention,
conductive areas maybe 0.2 inch x 0.3 inch rectangles, with
0.005 inches between rectangles. According to other
embodiments of the present invention, the conductive areas may
be made of different shapes such as regular or irregular polygons,
other irregular shapes, curved closed shapes, isolated regions
formed by conductive material cracks, and/or combinations of
the above. FIG. 3 shows an alternative crosstalk-mitigating
material 28 in which a substrate 22 is overlaid with hexagonal
conductive areas 30. Similarly to the crosstalk-mitigating
material 21, the hexagonal conductive areas 30 result in eddy
currents 26 when acted upon by a magnetic field B.
Nordin ¶29 (emphasis added).
The Examiner finds that “when [these] irregular shapes of conductive
areas [are] formed on the substrate [in Nordin], the layout of the conductive
areas becomes irregular design, arrangement or layout, which examiner
interpret as random layout.” Ans. 8.
Appellant argues that Nordin speaks to the shape of its “conductive
areas” but not to the layout or arrangement that they might form. Appeal
Br. 8; see also Reply Br. 3 (“There is no teaching in paragraph [0029] of
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Nordin as to how the conductive areas themselves are laid out along
crosstalk-mitigating material 21.”).
Appellant has the better position. That Nordin teaches conductive
areas may be made of “irregular shapes” does not foreclose the possibility
that irregularly-shape conductive areas could be arranged non-randomly,
such as in a repeating pattern. Likewise, it does not foreclose the possibility
that such shapes could be arranged randomly. However, such a possibility is
insufficient to sustain the anticipation rejection before us. See, e.g., In re
Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012) (“A reference may
anticipate inherently if a claim limitation that is not expressly disclosed ‘is
necessarily present, or inherent, in the single anticipating reference.’ The
inherent result must inevitably result from the disclosed steps; ‘[i]nherency
. . . may not be established by probabilities or possibilities.’” (citations
omitted, alterations in original)).
Accordingly, we reverse the rejection of claims 1–4, 7–11, and 14.
SUMMARY
Claims
Rejected
35 U.S.C. Basis Affirmed Reversed
1–4, 7–11, 14 § 103(a) Nordin, Kraft 1–4, 7–11, 14

REVERSED