Ex Parte Morrow et al

Board of Patent Appeals and Interferences

Apr 27, 2010

10830754 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JASON N. MORROW,
ROBERT M. WARD, JR.,
ZEB L. KALE, MICHAEL R. BAILEY,
CHRISTOPHER GEMME, GEORGE BOLLINGER,
and SCOTT LUMLEY
____________

Appeal 2009-006647
Application 10/830,754
Technology Center 1700
____________

Decided: April 27, 2010
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 35 and 41-56. We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.
Appeal 2009-006647
Application 10/830,754

2
Appellants claim a method of making toneable conduit which
comprises extruding a polymer melt around a continuous electrically
conductive wire in order to thereby form an elongate polymeric tube with
the wire embedded in the tube wall (claim 35).
Representative claim 35, the sole independent claim on appeal, reads
as follows:
35. A method of making toneable conduit, comprising:

advancing a continuous wire;

extruding a polymer melt around the advancing wire in the form of an
elongate polymeric tube having a wall with an interior surface and an
exterior surface such that the wire is embedded in the wall of the elongate
polymeric tube; and

cooling the polymer melt to form the elongate polymeric tube;

wherein the continuous wire is electrically conductive and capable of
transmitting a toning signal to allow the conduit to be detected by toning
equipment; and

wherein the continuous wire has a tensile strength sufficient to permit
the continuous wire to be torn out of the cooled polymeric tube to allow the
conduit and wire to be coupled.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Peterson 3,086,557 Apr. 23, 1963
Zoghby 4,817,673 Apr. 4, 1989
Carroll 5,061,823 Oct. 29, 1991

Appeal 2009-006647
Application 10/830,754

3
Under 35 U.S.C. § 103(a), the Examiner rejects claims 35, 41, 42, and
44-55 over Zoghby in view of Carroll and rejects claims 43 and 56 over
these references and further in view of Peterson.
In rejecting independent claim 35, the Examiner acknowledges that
Zoghby's method embeds yarn, rather than the electrically conductive wire
of claim 35, in a polymeric tube wall but concludes that it would have been
obvious "to use Carroll's electrically conductive wire in Zoghby's molding
process because copper clad steel wire provides high flexibility and
minimum spring-back properties to the conduit" (Ans. ¶ bridging 3-4). In
further support of this obviousness conclusion, the Examiner states that
"using the wire of Carroll in the tube of Zoghby would impart the
advantages taught by Carroll (e.g., good crush, kink, and torque resistance,
see Carroll: Abstract; Column 4, lines 13-15) to the tube of Zoghby" (Ans.
8).
Appellants point out that Zoghby relates to a reinforced fuse tube for
an explosive signal transmission device whereas Carroll relates to a coaxial
cable and argue that there is no motivation or logical reason for one of
ordinary skill in the art to modify Zoghby's fuse tube based on the coaxial
cable teachings of Carroll (Br. 13-16). We agree.
As both the Examiner and Appellants understand, Zoghby teaches that
the reinforcing element or yarn of the fuse tube "can be made from any
flexible, high tenacity, low elongation material" and that "[p]referably a
nonconductive material is used" (col. 4, ll. 27-29). Significantly, the
Examiner has made no finding in this record that Carroll's electrically
conductive wire possesses the reinforcing material properties disclosed by
Zoghby such as high tenacity and low elongation. Without such properties,
Appeal 2009-006647
Application 10/830,754

4
Carroll's wire would not have been considered by an artisan as a suitable
reinforcing element for Zoghby's fuse tube.
As indicated above, the Examiner believes an artisan would have used
Carroll's wire as Zoghby's reinforcing element in order to obtain properties
and advantages taught by Carroll such as minimum spring-back, crush, kink,
and torque resistance. This belief lacks merit for two reasons. First, these
properties and advantages are disclosed by Carroll with respect to the
coaxial cable (col. 2, ll. 7-16, col. 4, ll. 12-15) rather than the electrically
conductive wire per se. Second, and more importantly, although these
properties and advantages are relevant to the coaxial cable of Carroll, they
have no apparent relevance whatsoever to Zoghby's fuse tube. In the
absence of such relevance, such properties and advantages would not have
motivated an artisan to use Carroll's wire as the reinforcing element in the
fuse tube of Zoghby.
For the above stated reasons, we cannot sustain the Examiner's § 103
rejections of independent claim 35 and dependent claims 41-56.
The decision of the Examiner is reversed.
REVERSED

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