Ex Parte Rengert

Patent Trial and Appeal Board

Jul 11, 2018

14821401 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/821,401 08/07/2015
109412 7590 07/13/2018
Panasonic Avionics Corporation
26200 Enterprise Way
Lake Forest, CA 92630
FIRST NAMED INVENTOR
James Rengert
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
017NP 7562
EXAMINER
!MAS, VLADIMIR
ART UNIT PAPER NUMBER
2831
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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
following e-mail address(es):
brian.furrer@panasonic.aero
emily.walsh@panasonic.aero
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES RENGERT
Appeal2017-008934
Application 14/821,401 1
Technology Center 2800
Before LINDA M. GAUDETTE, MONTE T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejections of claims 1-20. App. Br. 2.
We have jurisdiction. 35 U.S.C. § 6.
We affirm-in-part.
SUBJECT MATTER
The subject matter on appeal concerns cables used in vehicular
entertainment systems, and methods of producing such cables. Spec. ,r,r 2, 8.
1 Appellant is the Applicant, Panasonic Avionics Corporation, and is
identified as the real party in interest. App. Br. 2.
Appeal2017-008934
Application 14/821,401
Appellant's Figure 1 is illustrative of the appealed subject matter.
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Flu 1
Figure 1 illustrated above depicts a cross-sectional diagram of a cable
assembly according to the invention. Spec. ,r 24.
Independent claim 1 is also illustrative:
1. A cable [ 1 OJ for communicating electrical signals, the cable
compnsmg:
an outer sheath [12] comprised of a polymeric material including an
electrically conductive substance mixed with the polymeric
material and causing the outer sheath to be electrically
semiconductive, the outer sheath including a length and an
interior;
a plurality of insulated wires [ 16] extending through the interior of
the outer sheath along the length thereof, each insulated wire
including an electrically conductive core [18] surrounded by an
electrically non-conductive material [20]; and
a sheath ground wire [22] disposed within the interior of the outer
sheath and extending along the length thereof, the sheath ground
wire including an electrically conductive core [24] in direct
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Application 14/821,401
electrical contact with the interior of the outer sheath [12] at a
plurality of locations.
App. Br. 17.
REJECTIONS
The Examiner rejects the claims under 35 U.S.C. § 103 as
unpatentable as follows:
I. Claims 1-7 and 16-19 over Herrin2 in view of Cleveland; 3
II. Claim 20 over Herrin in view of Cleveland and Wang; 4 and
III. Claims 8-15 over Herrin in view of Cleveland and
Thalheimer. 5
OPINION
We consider the claims separately to the extent they are so argued by
Appellant.
Claims 1-15
In arguing the rejections of claims 1-15, Appellant focuses on
limitations common to independent claims 1 and 8. See App. Br. 6-13.
Thus, we select claim 1 as representative of claims 2-7 (subject to ground of
rejection I) and claim 8 as representative of claims 9-15 (subject to ground
of rejection III) and decide the rejection of claims 2-7 and claims 9-15 on
the basis of claim I and claim 8, respectively. 37 C.F.R. § 4I.37(c)(l)(iv).
We have considered Appellant's arguments (App. Br. 6-13; Reply Br. 2-5)
2 Herrin, US 7,880,089 Bl, issued Feb. 1, 2011.
3 Cleveland et al., US 4,454,379, issued June 12, 1984.
4 Wang, US 7,956,290 B2, issued June 7, 2011.
5 Thalheimer et al., US 7,399,198 B2, issued July 15, 2008.
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Application 14/821,401
and are unpersuaded that Appellant has identified reversible error in the
rejections of claims 1-15. In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir.
2011 ). Therefore, we sustain the Examiner's rejections of claims 1-15
based on the findings of fact, conclusions of law, and rebuttals to arguments
set forth in the Final Action and in the Answer. We add the following.
We first note that the majority of Appellant's arguments reflect a
misunderstanding of the underlying basis for the Examiner's rejection.
Specifically, Appellant's arguments rest on a theory of replacing the outer
metallic sheath of Herrin with the semiconductive tape of Cleveland. App.
Br. 7-12; Reply Br. 2--4. A careful review of the rejection, however, reveals
that the Examiner does not rely on such a theory as Appellant's arguments
suggest. Here, the Examiner finds that Herrin discloses each limitation
recited in claim 1 but for the structural components of the outer sheath.
Final Act. 2-3. The Examiner relies on the disclosure of Cleveland for this
limitation, and then concludes that it would have been obvious to the skilled
artisan "to provide Herrin's outer sheath with Cleveland's [] film." Id. at 3
( emphasis added). See also id. at 8-9 ( explaining that "both Herrin and
Cleveland relate[] to [the] cable assembly field, specifically [the] structure of
cable cord protection and could be combined to solve the problem"
( emphasis added)). We furthermore note that the rejection itself does not
even use the term "replace" with respect to the outer sheath limitation. Final
Act. 2--4. Therefore, we agree with the Examiner (Ans. 4--5) that the
rejection does not rely on a replacement theory, but rather proposes making
a composite of the outer sheaths disclosed in Herrin and Cleveland. Each of
Appellant's arguments premised on a theory not relied on in the rejection
does not address, and thus fails to identify error in, the rejection.
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Application 14/821,401
To the extent we even consider Appellant's Reply Brief argument
(Reply Br. 4--5) regarding the addition of Cleveland's film to Herrin's cable
assembly, 6 this argument is unpersuasive. Appellant provides a modified
Figure 2 of Herrin with Cleveland's semi-conductive film contained on the
outside of Herrin's outer sheath 20, and argues that the combined references
would not meet the claimed limitation requiring the ground wire to be in
"direct electrical contact with the interior of the outer sheath at a plurality
of locations." Reply Br. 5. However, Appellant has not explained how, in
their modified Herrin Figure 2, ground wire 18 - which is in direct contact
with interior surface 24 of metallic outer sheath 20 - fails to meet the
recited limitation. We emphasize here that Herrin's "metal sheath 20 is
formed of a metal strip such as, for example, aluminum" (Herrin 2: 50-51 ),
and that aluminum is disclosed as one possible "electrically conductive
substance" contained within the claimed outer sheath (Spec. ,r 35).
Moreover, we note that "[ c ]ombining the teachings of references does not
involve an ability to combine their specific structures." In re Nievelt, 482
F.2d 965,968 (CCPA 1973). Here, Appellant has not explained why
modified Figure 2 of Herrin as set forth in the Reply Brief is the only
6 Appellant has not shown good cause why this argument could not have
been raised in the Appeal Brief. See 37 C.F.R. § 41.37 (c)(l)(iv) ("Except as
provided for in§§ 41.41, 41.47, and 41.52, any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal."). See also 37 C.F.R. § 41.41(b)(2) ("Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner's answer, including
any designated new ground of rejection, will not be considered by the Board
for purposes of the present appeal, unless good cause is shown.").
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Application 14/821,401
possible configuration that combines the teachings of the prior art relied on
by the Examiner.
Appellant argues the Examiner failed to provide a suitable rationale
in the Final Rejection for combining the Herrin and Cleveland references.
App. Br. 7-11. However, Appellant does not contest the motivation to
combine the teachings of these references that is clearly articulated by the
Examiner in the Answer (Ans. 4). See Reply Br., generally.
Because Appellant fails to identify reversible error in the Examiner's
rejections of independent claims 1 and 8, we sustain the rejections of these
claims, as well as the rejections of dependent claims 2-7 and 9-15, which
were not separately argued.
Claims 16-20
Independent claim 16 is directed to a method of making a cable and
requires, inter alia, the extrusion of the cable's polymeric and electrically
conductive outer sheath around a plurality of interior electrically insulated
wires and a ground wire. App. Br. 20.
Appellant challenges the rejection of claim 16 by contending that
"[ t ]he Examiner points to absolutely no teaching or suggestion for extruding
a semiconductive outer sheath over the bundled wires of the Herrin cable."
App. Br. 14--15.
We agree with Appellant. The Final Rejection provides no fact
finding that Herrin, Cleveland, or Wang discloses an extrusion step for the
outer sheath, much less a suitable rationale why the ordinary skilled artisan
would have been motivated to use an extrusion step as claimed. See Final
Act. 2-5. The Examiner's statements in the Answer are likewise insufficient
to establish a prima facie case of obviousness as to claim 16. Ans. 5---6.
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Specifically, we do not agree with the Examiner's reliance on an uncited
dictionary definition to support a determination that "applying force" falls
within the broadest reasonable construction of the claim term "extruding."
See id. at 5. The Examiner does not explain persuasively how applying
force when using Herrin's helical winding technique carried out by an
armoring machine (Herrin 4: 19--21) evinces extrusion according to the
claims - particularly when the Specification discloses neither an armoring
machine nor helical winding, but rather discloses an extruder machine which
extrudes a melt through a die. Spec. ,r,r 55-58, Fig. 5. Thus, on this record,
we agree with Appellant (Reply Br. 6) that the skilled artisan would not
consider Herrin's helical winding technique to be an extrusion step as set
forth in claim 16.
For these reasons, the rejections of claim 16 and claims 17-20
dependent therefrom, are not sustained.
DECISION
The Examiner's decision to reject claims 1-15 is affirmed.
The Examiner's decision to reject claims 16-20 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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