Ex Parte Kummer et al

Patent Trial and Appeal Board

Feb 15, 2018

12478913 (P.T.A.B. Feb. 15, 2018)

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.
12/478,913 06/05/2009 RANDY KUMMER 60309.0026USU1/SW-07-0578 1374
70289 7590 02/20/2018
MFRfTTANT fr 001TT D KS
EXAMINER
Merchant & Gould P.C. NGUYEN, DONGHAI D
P.O. BOX 2903
MINNEAPOLIS, MN 55402 ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDY KUMMER and PATRICIA L. BRIDGES
Appeal 2017-002611
Application 12/478,913
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Randy Kummer and Patricia L. Bridges (“Appellants”)1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision in the Final Action (dated June 8,
2015, hereinafter “Final Act.”) rejecting under 35 U.S.C. § 103(a) claims 1—23 as
being unpatentable over Power Cable Installation Guide of Southwire Company
(2005) (hereinafter “Southwire”) and Castelli et al. (US 4,342,880, issued Aug. 3,
1982, hereinafter “Castelli”).2 We have jurisdiction over this appeal under
1 Appellants’ Appeal Brief (filed Jan. 28, 2016, hereinafter “Appeal Br.”) identifies
Southwire Company LLC as the real party in interest. Appeal Br. 2.
2 The rejection of claims 1—23 under 35 U.S.C. § 102(b) as anticipated by Castelli
is withdrawn by the Examiner. Examiner’s Answer 4 (dated Aug. 29, 2016,
Appeal 2017-002611
Application 12/478,913
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants’ invention relates to “power cables . . . and the performance of
jacketed cables in low temperature applications.” Spec. para. 5.
Claims 1, 9, and 17 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A method of transmitting power in a low temperature climate,
the method comprising:
installing a jacketed power cable in the low temperature
climate; and
using the jacketed power cable to transmit power;
wherein the jacketed power cable passes an Underwriters
Laboratories or Canadian Standards Association FT4 Vertical Flame
Test and passes an Underwriters Laboratories or Canadian Standards
Association cold impact test at -40° C, and
wherein the jacketed power cable contains at least three shield
layers and does not contain a layer of armor.
ANALYSIS
Claims 1—5, 8—13, and 16—23
Appellants argue the rejection under 35 U.S.C. § 103(a) of claims 1—5, 8—13,
and 16—23 together as a group. See Appeal Br. 16—17. Therefore, in accordance
with 37 C.F.R. 41.37(c)(l)(iv), we select claim 1 as the representative claim to
hereinafter “Ans.”). Although the Examiner refers to “claims 1—13,” we view this
as a mere typographical error. See id.
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Application 12/478,913
decide the appeal, with claims 2—5, 8—13, and 16—23 standing or falling with claim
1.
The Examiner finds that “Southwire discloses a method of transmitting
power in a low temperature climate” including, inter alia, “installing a jacketed
power cable in the low temperature climate (see Pages 2-30); and using the
jacketed power cable to transmit power (see 35-42).” Ans. 2. However, the
Examiner finds that “Southwire does not disclose the jacketed power cable having
characteristics as claimed.” Id. Nonetheless, the Examiner finds that, because “the
cable of Castelli. . . has all the structures i.e., layers and material of each layer
same as . . . [Appellants’] cable, it [also] has the same characteristics as claimed.”
Id.', see also Non-Final Action 3 (dated Nov. 21, 2014, hereinafter “Non-Final
Act.”). Thus, the Examiner concludes that it would have been obvious for a person
of ordinary skill in the art “to modify the invention of Southwire by utilizing the
electrical cable of Castelli... to meet the requirement of the desired application
and/or environment.” Ans. 3; see also Non-Final Act. 3.
Appellants argue that “Castelli does not cure the deficiencies of Southwire;
the features of flame resistance (the cable passes a FT4 flame test) and cold impact
strength (the cable passes a cold impact test at -40 °C) are neither disclosed nor
suggested anywhere in Castelli.'1'’ Appeal Br. 17. Appellants further contend that
the structure of Castelli’s jacketed cable does not inherently possess the claimed
characteristics as evidenced in Appellants’ Table II on page 13 of the
Specification, which shows Examples 1 and 3 as passing the flame test, but not
passing the cold impact test. Reply Brief 3 (dated Oct. 13, 2016, hereinafter
“Reply Br.”).
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Appeal 2017-002611
Application 12/478,913
We agree with the Examiner that Castelli’s jacketed power cable discloses
“at least three shield layers (12-16) and does not contain a layer of armor as
claimed.” Ans. 4. For example, Appellants’ Specification describes medium
voltage power cable 10 as containing core conductor 20 (copper), conductor shield
30 (semi-conductive thermoset), insulation 40 (ethylene-propylene-rubber,
hereinafter “EPR”), and insulation shield 50 (semi-conductive thermoset). Spec,
para 21, Fig. 1A. Similarly, Castelli discloses medium voltage cable 10 including
conductor core 11, inner semi-conductive screen 12 (cross-linked polymer with
carbon black), insulation layer 13 (EPR), and outer semi-conductive screen 14
(rubber mixture with carbon black).3 Castelli, col. 3,11. 30-54, Figure.
Furthermore, both Appellants’ Specification and Castelli show a power cable
without a layer of armor. Compare Spec., Fig. 1A, with Castelli, Figure.
As such, because the construction of Castelli’s jacketed power cable is so
similar to the jacketed power cable of claim 1, we agree that the Examiner is on
solid ground in finding sufficient structural similarity such that the recited
characteristics presumably would also be present in Castelli. Thus, the Examiner
is correct to shift the burden to Appellants to prove Castelli does not possess the
characteristics of claim 1. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“[Wjhen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of showing
that they are not.”).
Furthermore, we are not persuaded that Castelli’s jacketed power cable does
not possess the characteristics of claim 1, because Appellants’ Examples 1 and 3
3 We understand that a cross-linked polymer or rubber mixture and carbon
black constitutes a semi-conductive thermoset.
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Appeal 2017-002611
Application 12/478,913
did not pass the cold impact test. See Reply Br. 3. Appellants’ Specification
describes the jacketed power cable of Examples 1 and 3 as including “an outermost
layer of a jacketing composition around a core conductor and other intermediate
layers,” where the jacketing composition includes PVC, flame retardant and fillers,
plasticizer, and heat stabilizer plus lubricant in various proportions. Spec, paras.
30, 31. The Specification further describes flame retardants as reducing impact
strength at low temperatures. Id. at para. 24. Hence, a person of ordinary skill in
the art would readily recognize that Examples 1 and 3 might not have passed the
cold impact test because of the concentration of flame-retardants in the jacketing
composition. An artisan must be presumed to know something about the art apart
from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). In this case, the structure of the jacketed power cable of claim 1 does not
require flame-retardants. Limitations not appearing in the claims cannot be relied
upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Claim 1
merely requires a jacketed power cable that “contains at least three shield layers
and does not contain a layer of armor” (see Appeal Br. 20), which, as discussed
supra, is similar to the structure of Castelli’s jacketed power cable. Accordingly,
Appellants’ arguments are not persuasive to prove Castelli’s jacketed power cable
does not possess the characteristics of claim 1.
In conclusion, for the foregoing reasons, we sustain the rejection under
35 U.S.C. § 103(a) of independent claim 1 as unpatentable over Southwire and
Castelli. Claims 2—5, 8—13, and 16—23 fall with claim 1.
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Application 12/478,913
Claims 6, 7, 14, and 15
Claims 6 and 14 add the limitation that “the cable jacketing material further
comprises at least one flame retardant additive.” Appeal Br. 21, 22. Claims 7 and
15 depend from claims 6 and 14, respectively. Id.
The Examiner finds that the combined teachings of Southwire and Castelli
discloses a flame retardant additive and that it would have been an obvious matter
of design choice to choose a specific type. Non-Final Act. 4. According to the
Examiner, Castelli discloses “chlorine, chlorinated polymer” as the flame retardant
additive. Ans. 3.
Appellants argue that Castelli’s disclosure of chlorinated polyethylene does
not constitute a disclosure of a flame retardant additive, as recited in claims 6 and
14. Reply Br. 3. According to Appellants, the Specification describes the
jacketing material as containing a polymer component, such as chlorinated
polyethylene or polyvinyl chloride and a flame retardant additive. Id. (citing Spec,
paras. 13, 16). Thus, Appellants conclude that “Castelli is completely devoid of a
flame retardant additive.”
We are not persuaded by Appellants’ arguments for the following reasons.
Castelli discloses an outer layer material composition as including nitrile rubber,
EPR, and various additives. Castelli, col. 3,1. 65—col. 4,1. 3. One of the additives
disclosed by Castelli is chlorinated polyethylene. Id., Table 1, col. 4,1. 30.
Although we appreciate Appellants’ position that the Specification describes
chlorinated polyethylene as the polymer used to make the jacketing material,
nonetheless, the Specification also describes the use of “halogenated materials
containing . . . chlorine” as flame retardant additives. Spec, paras. 13, 16. The
lack of an express disclosure of a particular claim element does not defeat a
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Appeal 2017-002611
Application 12/478,913
rejection under 35 U.S.C. § 103(a), and such a requirement would essentially
defeat the purpose of 35 U.S.C. § 103(a). We must attribute skill to the
hypothetical person described in 35 U.S.C. § 103(a). In re Sovish, 769 F.2d 738,
742 (Fed. Cir. 1985). Here, a person of ordinary skill in the art would have readily
recognized that chlorinated polyethylene constitutes a “halogenated material[]
containing . . . chlorine,” and, thus, constitutes a flame retardant material.4
As such, we agree with the Examiner that Castelli discloses a “chlorine,
chlorinated polymer,” namely, chlorinated polyethylene, as the flame retardant
additive. Ans. 3. Therefore, we sustain the rejection under 35 U.S.C. § 103(a) of
claims 6 and 14 as unpatentable over Southwire and Castelli.
Appellants do not separately argue claims 7 and 15. See Appeal Br. 16;
Reply Br. 3. Accordingly, for the same reasons discussed supra, we likewise
sustain the rejection of claims 7 and 15 over the combined teachings of Southwire
and Castelli.
SUMMARY
The Examiner’s decision to reject claims 1—23 under 35 U.S.C.
§ 103(a) as unpatentable over Southwire and Castelli is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
4 For example, Hasegawa et al. (US 4,671,896, issued June 9, 1987, hereinafter
“Hasegawa”) discloses “a highly flame-retardant resin containing a halogen such
as chlorine . . . e.g. . . . chlorinated polyethylene.” Hasegawa, col. 1,11. 10-14.
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