13084693 (P.T.A.B. Sep. 25, 2017)

Ex Parte Lambert

Patent Trial and Appeal BoardSep 25, 2017

13084693 (P.T.A.B. Sep. 25, 2017)

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. Wilolamb 1 1600 EXAMINER AVERICK, LAWRENCE ART UNIT PAPER NUMBER 3726 MAIL DATE DELIVERY MODE 13/084,693 04/12/2011 82343 7590 09/25/2017 Scott P. Zimmerman, PLLC - Others P.O. Box 3822 Cary, NC 27519 Walter L. Lambert 09/25/2017 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 WALTER L. LAMBERT Appeal 2015-006166 Application 13/084,693 Technology Center 3700 Before: JOHN C. KERINS, WILLIAM A. CAPP, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35U.S.C. § 134 from a final rejection of claims 1—14 and 21—26. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on September 20, 2017. We reverse. CLAIMED SUBJECT MATTER The claims are directed to a parallel wire cable. Claims 1, 8, and 21 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A manufacture, comprising: Appeal 2015-006166 Application 13/084,693 a plurality of wires arranged in a bundle as an electrical cable, each wire in the plurality of wires parallel to every other wire in the bundle, and the each wire in the plurality of wires individually pulled to a tension value. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Claims 1—14 are provisionally1 rejected under 35 U.S.C. § 101 for nonstatutory double patenting over claims 1—14 of Appellant’s copending Application No. 13/946,133. Claims 1—4 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Marchetti and Campbell. Claims 5—9, 12, 13, and 21—262 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Marchetti, Campbell, and Percheron. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Marchetti, Campbell, Percheron, and Blanchard. 1 Ans. 4. 2 The non-inclusion of claims 21—26 in the initial listing of the rejection is an inadvertent error, as the claims are substantively addressed in the body of the rejection. REFERENCES Campbell Blanchard Percheron Marchetti US 3,083,817 Apr. 2, 1963 US 3,153,696 Oct. 20, 1964 US 5,083,469 Jan. 28, 1992 US 6,944,550 B2 Sep. 13, 2005 REJECTIONS 2 Appeal 2015-006166 Application 13/084,693 OPINION Double Patenting Rejection We conclude that it is premature to address the Examiner’s provisional rejection of claims 1—14 for nonstatutory double patenting. Ex parte Moncla, No. 2009-006448, 3 (BPAI June 22, 2010). We leave it to the Examiner to determine whether the double patenting rejections are still proper. 35 U.S.C. § 103(a) Rejections The Examiner finds that Marchetti teaches all of the features of claim 1, except the cable being an electrical cable. Final Act. 4. In particular, the Examiner finds that the terms “wires and strands are used interchangeably in the [Marchetti] patent.” Id. at 13. Therefore, Marchetti’s reference to a “strand” is equivalent to the claim’s reference to “each wire.” The Examiner finds that Campbell teaches a similar cable made of steel wire and that as steel is electrically conductive “it would have been obvious ... to provide ‘Marchetti with a wire rope of steel as taught by ‘Campbell in order to provide a structural cable of that is electrically conductive.” Id. at 4—5. Appellant’s Specification states that “[a] strand, in the art of structural cable, is defined as a group of multiple wires.” Spec. 115. Accordingly, Appellant argues that the Examiner’s position concerning the meaning of the term “strand” is unsupported by Marchetti (Appeal Br. 6—12), contrary to the 3 Appeal 2015-006166 Application 13/084,693 teachings of Campbell3 {id. at 7) and contrary to the meaning as understood by those of skill in the art {id. at 12—14). As noted above, the Examiner found that Marchetti uses the terms “wires and strands . . . interchangeably.” Final Act. 13. In support of this finding, the Examiner cites the abstract of Marchetti, as well as, column 10, lines 8—22 and lines 10-25. Final Act. 11, 13; Ans. 7—8, 10-11. However, these sections of Marchetti do not support the Examiner’s finding of the interchangeability of the terms “wire” and “strand.” The abstract makes no reference to wires, and column 10, which includes the only reference to a “wire” in Marchetti, refers to “an INVAR® wire” used as part of a measurement system which is completely separate from the cable and strands relied upon by the Examiner in the rejection. Marchetti col. 10:9— 20; see also Appeal Br. 9—12. Marchetti also references the book “‘Cable Structures’ by H. Max Irvine, published in 1981 by The MIT Press Series in Structural Mechanics,” (Marchetti col. 8:10-12), which Appellant states “is considered the authoritative text for cable structures” (Appeal Br. 13). Appellant highlights numerous quotes from the book arguing that one of skill in the structural cable arts would understand that “cables would consist of several strands, each [strand] containing many wires.” Id. at 14 (quoting Cable Structures 61). We determine that Appellant’s evidence supports their position that one of skill in the structural cable arts would understand the term “strand” to 3 Campbell defines a strand as “a combination of steel wires arranged around a central, or king wire, in one or more helically wound layers, each layer of wires having a specific lay length.” Campbell col. 1:26—30. 4 Appeal 2015-006166 Application 13/084,693 require a group of multiple wires. As the primary references deal with structural cable and the Examiner’s stated combination of Marchetti and Campbell results in “a structural cable of that is electrically conductive,” we do not sustain the obvious rejections as they rely on the unsupported finding that a “strand” in the structural cable arts can be made up of only a single wire. DECISION We do not reach the Examiner’s decision to reject claims 1—14 under nonstatutory double patenting. The Examiner’s rejection of claims 1—14 and 21—26 is reversed. REVERSED 5