Ex parte BROWN et al.

Board of Patent Appeals and Interferences

Sep 3, 1998

08048371 - (D) (B.P.A.I. Sep. 3, 1998)

Application for patent filed April 15, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GEOFFREY D. BROWN, MICHAEL J.
KEOGH, SARI B. SAMUELS
and JEFFREY M. COGEN
_____________
Appeal No. 95-3782
Application 08/048,3711
______________
ON BRIEF
_______________
Before SOFOCLEOUS, HANLON and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 11. Claims 17
and 18 are the only other claims remaining in this application
Appeal No. 95-3782
Application 08/048,371
See 37 CFR § 1.192(c)(5)(1993), now 37 CFR § 1.192(c)(7)(1995).2
2
and the examiner has indicated that these claims are allowed
(brief, page 1).
According to appellants, the invention is directed to an
article of manufacture comprising a plurality of electrical
conductors surrounded by one or more layers of a composition
comprising a polyolefin and a linear or cyclic
organopolysiloxane containing one or more functionalized
hindered amine moieties, with hydrocarbon cable filler grease
within the interstices between the conductors (specification,
page 3, lines 6-15).
Appellants state that the claims stand or fall together
(brief, page 1). Accordingly, we will base our decision on2
independent claim 1, which is illustrative of the subject
matter on appeal and is reproduced below:
1. An article of manufacture comprising (i) a
plurality of electrical conductors, each surrounded by one or
more layers of a composition comprising (a) one or more
polyolefins and bonded thereto or blended therewith, (b) a
linear or cyclic organopolysiloxane containing one or more
functionalized hindered amine moieties; and (ii) hydrocarbon
cable filler grease within the interstices between said
Appeal No. 95-3782
Application 08/048,371
3
surrounded conductors.
The examiner relies upon the following references as
evidence of obviousness:
Eager, Jr. et al. (Eager) 3,745,231 Jul. 10,
1973
Foster et al. (Foster) 4,895,885 Jan. 23,
1990
Appellants rely on the following references to rebut the
examiner’s evidence of obviousness:
ASTM Designation: D 4568-86, “Standard Test Methods for
Evaluating Compatibility between Cable Filling and Flooding
Compounds and Polyolefin Cable Materials,” Annual Book of ASTM
Standards, pp. 666-670, April 1986;
Davis, “A Global Test Method for Long Term Stability of Solid
and Foam Skin Insulation,” Proceedings of the Thirty-Sixth
International Wire and Cable Symposium, pp. 475-476, Nov. 17-
19, 1987.

Claims 1-11 stand rejected under 35 U.S.C. § 103 as
unpatentable over Eager in view of Foster. We affirm this
rejection for reasons which follow.
OPINION
The article of manufacture recited in appealed claim 1
Appeal No. 95-3782
Application 08/048,371
4
requires a plurality of conductors surrounded by layers of
polyolefin bonded or blended with a linear or cyclic
organopolysiloxane containing one or more functionalized
hindered amine moieties, with hydrocarbon cable filler grease
within the interstices between the conductors.
Eager discloses communication cables where the insulated
conductors are protected from water by filling in the
interstitial space among the conductors with a water repellant
filler material comprising a grease, most often petrolatum
blended with polyethylene (column 1, lines 15-24). Eager
teaches that there is a problem with these type of
communication cables when they are exposed to high
temperatures (column 1, lines 25-34 and 39-40). Eager
attempts to solve this problem by crosslinking the
polyethylene through irradiation (column 1, lines 46-59).
Eager discloses that a preferred filling material consists of
a mixture of petrolatum, low molecular weight polyethylene and
an antioxidant (column 4, lines 9-13). Appellants and the
examiner agree that Eager does not disclose or teach the
hindered amine polysiloxane required by appealed claim 1
(answer, page 3, and brief, page 2).
Appeal No. 95-3782
Application 08/048,371
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The examiner applies Foster for the disclosure of a
polysiloxane having pendent, sterically-hindered heterocyclic
moieties attached to the siloxane chain (answer, page 3). The
examiner states that the basic structure of the siloxane
monomer in appealed claim 2 is disclosed by Foster in claim 1
(id.). The examiner further finds that Foster teaches this
siloxane is used as an antioxidant and is added to polyolefins
to stabilize them against light, heat or other forms of
degradation (answer, page 4). The examiner concludes that it
would have been obvious to use Foster’s polysiloxane with
Eager’s polyethylene cable composition in order to stabilize
the polyethylene in the presence of heat, light or other forms
of degradation (id.).
Appellants do not contest that Foster discloses the same
polysiloxane additive as required by the appealed claims
(brief, page 2). However, appellants argue that a person of
ordinary skill in the art would not be led to the Foster
reference for several reasons (brief, page 4). Appellants
submit that the artisan who wishes to stabilize a grease
filled cable would not be interested in the Foster
Appeal No. 95-3782
Application 08/048,371
6
polysiloxane for its light stabilizing effect since these
types of cables are buried underground. Appellants submit two
references (ASTM D 4568-86 and Davis, as Appendices II and
III, respectively, attached to the brief) to support this
contention. Appellants further submit that the artisan would
thus look to the heat stabilizing effect of the polysiloxane
of Foster but this effect is either not material (the
Yellowness Index reports color changes which are immaterial if
the cable is buried in the ground) or neglible (the melt flow
ratio is not affected by the polysiloxane of Foster in Example
2). Therefore appellants conclude that there is no reason why
a person of ordinary skill in the art, on reading the Foster
reference, would consider Foster’s polysiloxanes to be
useful as stabilizers in the grease filled cable of Eager
(page 3 of the brief).
Appellants’ arguments are not well taken. Foster
discloses a problem in common with Eager, namely, the
instability or degradation of synthetic organic polymers on
exposure to light, atmospheric conditions and elevated
temperatures (column 1, lines 19-22). Foster teaches that it
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Application 08/048,371
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is known in the industry to add light stabilizers, heat
stabilizers, and antioxidants to stabilize these organic
polymers (column 1, lines 25-30). Appellants state that the
polyorganosiloxane of Foster stabilizes olefin polymers
against “light and heat” (brief, page 2, citing Foster, column
1, lines 59-64). However, as noted by the examiner on page 4,
line 1, of the answer, Foster also teaches that his disclosed
polysiloxanes “are herein used as additives in olefin polymers
either as antioxidants and/or heat stabilizers and/or light
stabilizers.” (column 7, lines 61-65). Eager specifically
calls for an antioxidant in his preferred filling material
composition (column 4, lines 9-13). Thus we agree with the
examiner that it would have been well within the ordinary
skill in the art to use the polysiloxane of Foster in the
grease filled cable composition of Eager for its known
antioxidant properties with olefin compositions. Appellants
only address the reasons why one of ordinary skill in the art
would not be interested in the polysiloxane of Foster for its
light and heat stabilizing effects when used in the grease
filled cable composition of Eager.
Appeal No. 95-3782
Application 08/048,371
This is the same evidence that was submitted by Keogh in a declaration under3
37 CFR § 1.132 dated June 6, 1994 (attachment to Paper No. 6). Since this evidence and
conclusions are set forth by appellants in the brief (see also paragraph 8 on page 3 of
the brief), we will not address the declaration specifically.
8
Appellants submit evidence (see Appendix II and III) to3
show that light degradation is not a consideration in grease
filled cable compositions (Eager also teaches that most of the
cable is designed to be buried, except for the above-ground
pedestals, see column 1, lines 25-32). However, appellants’
arguments regarding the heat stability of Foster are not
convincing. Appellants argue that the Yellowness Index used
by Foster is immaterial to underground cable compositions but
present no evidence to support this contention (brief,
paragraph 6 (ii), page 3). Foster discloses that the
Yellowness Index was determined after aging at 60EC. for 4
weeks (column 10, lines 5-7) and that “the colors were
compared to determine the heat stability properties of the
various blends.” (column 10, lines 52-54). There is no
evidence to determine whether the color change represents
actual degradation of the olefin polymer or, as appellants
urge, a mere aesthetic change in the surface color. There are
numerous teachings in Foster of the improved heat stability by
Appeal No. 95-3782
Application 08/048,371
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use of the disclosed polysiloxane and appellants do not
present objective evidence that one of ordinary skill in the
art would not “look to the heat stabilizing effect” of the
polysiloxane in Foster (see the brief, page 3), especially
given the problem recognition in the art of stability of
polyethylene to high temperatures (see Eager, column 1, lines
25-45, and Foster, column 1, lines 18-22).
For the foregoing reasons, we find that the examiner has
established a prima facie case of obviousness in view of the
disclosure and teachings of Eager and Foster. Based on the
totality of the record, with due consideration to the evidence
and arguments of appellants, we find that a preponderance of
the evidence weighs in favor of obviousness within the meaning
of 35 U.S.C. § 103. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Accordingly, the
examiner’s rejection of claims 1 through 11 under 35 U.S.C. §
103 as unpatentable over Eager in view of Foster is affirmed.
OTHER ISSUES
Appeal No. 95-3782
Application 08/048,371
10
The examiner has indicated the allowability of claims 17
and 18, directed to the same article of manufacture as set
forth in claims 1 and 2, respectively, but with the addition
of component (b), which is 1,2-bis(3,5-di-tert-butyl-4-
hydroxy-hydrocinnamoyl)hydrazine. The specification discloses
this component (b) as another antioxidant (page 19, lines 3-
9).
It is well known to use antioxidants in grease filled
cable compositions (see Eager, column 4, lines 9-13). It is
also well known to use antioxidants to stabilize polyolefins,
including the use of mixtures of stabilizers to obtain the
desired protection (Foster, column 1, lines 25-28 and 42-45).
Upon return of this application to the examiner, the
examiner and appellants should determine if component (b) of
claims 17 and 18 is a well known antioxidant and whether these
claims contain patentable subject matter in light of this
determination and the above noted disclosures of the prior art
of record.
Appeal No. 95-3782
Application 08/048,371
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ADRIENE L. HANLON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 95-3782
Application 08/048,371
12
Union Carbide Chemicals &
Plastics Company, Inc.
Law Department E205
39 Old Ridgebury Road
Danbury, CT 06817-09001