General Cable Technologies Corporation

Patent Trials and Appeals Board

May 19, 2020

14185429 - (D) (P.T.A.B. May. 19, 2020)

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.
14/185,429 02/20/2014 Sathish K. RANGANATHAN 110938.00448 1017
77001 7590 05/19/2020
ULMER & BERNE LLP
c/o Diane Bell
600 Vine Street
SUITE 2800
Cincinnati, OH 45202
EXAMINER
VARGHESE, ROSHN K
ART UNIT PAPER NUMBER
2896
NOTIFICATION DATE DELIVERY MODE
05/19/2020 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):
ipdocketing@ulmer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATHISH K. RANGANATHAN, VIJAY MHETAR,
CODY R. DAVIS, and SRINIVAS SIRIPURAPU
Appeal 2019-003731
Application 14/185,429
Technology Center 2800
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8, 10, 11, 13–21, and 45. See Final
Act. 5, 17, 22, 23, 24, 26, 27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the assignee of the
present application, General Cable Technologies Corporation. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
“The present disclosure generally relates to a coated overhead
conductor which better radiates heat away, thereby reducing operating
temperature.” Spec. 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An overhead conductor comprising an assembly including
one or more conductive wires, wherein the assembly comprises
an outer surface coated with an electrochemical deposition
coating such that the electrochemical deposition coating contacts
at least one of the one or more conductive wires, the
electrochemical deposition coating comprising:
a first metal oxide, wherein the first metal oxide is not
aluminum oxide;
wherein the electrochemical deposition coating defines a
single outer layer having a thickness of 12 microns to 25
microns; and
wherein the operating temperature of the overhead
conductor is lower than the operating temperature of a bare
conductor by at least 5 °C, when uncoated and the same current
is applied.
Claims Appendix (Appeal Br. 31).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Dorst
Sawada 609
Sawada 851
Inazawa
Gentry
Jang
US 2,650,975
US 5,091,609
US 5,336,851
US 5,372,886
US 5,554,826
US 6,136,434
Sept. 1, 1953
Feb. 25, 1992
Aug. 9, 1994
Dec. 13, 1994
Sept. 10, 1996
Oct. 24, 2000
Johnson
Kamiyama
US 2005/0279527 A1
US 2012/0267141 A1
Dec. 22, 2005
Oct. 25, 2012

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REJECTIONS
The Examiner rejects claims 1, 2, 4–6, 10, 13–15, and 19–21 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dorst and Sawada
609. Final Act. 5.
The Examiner rejects claims 3 and 45 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Dorst, Sawada 609, and Sawada 851.
Final Act. 17.
The Examiner rejects claim 8 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dorst, Sawada 609, and Jang. Final Act. 22.
The Examiner rejects claim 11 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dorst, Sawada 609, and Inazawa. Final Act. 23.
The Examiner rejects claim 16 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dorst, Sawada 609, Sawada 851, and Johnson. Final
Act. 24.2
The Examiner rejects claim 17 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dorst, Sawada 609, and Gentry. Final Act. 26.
The Examiner rejects claim 18 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dorst, Sawada 609, and Kamiyama. Final Act. 27.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced

2 The Examiner does not explicitly list Sawada 851 in the rejection of claim
16. Final Act. 24. Because claim 16 depends from claim 3 which is rejected
based on Dorst, Sawada 609, and Sawada 851 (Final Act. 17), we consider
the omission of Sawada 851 in the rejection of claim 16 as harmless error.
See Final Act. 24 (rejecting claim 16 over Dorst and Sawada “as applied to
claim 3” and in further view of Johnson).
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thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
the Examiner’s § 103 rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Claim 13
In support of the rejection, the Examiner finds that Dorst teaches an
overhead conductor having an electrochemical deposition coating that
defines a single outer layer. Final Act. 6; Ans. 26 (citing Dorst 6:55–58 and
Fig. 1 for an electrochemical deposition process). The Examiner finds that
the “electrochemical deposition coating” recited in claim 1 “does not
represent product structure but only refers to the process by which the
coating is formed” and is not structurally distinguishable from that of Dorst.
Final Act. 8.
Appellant, on the other hand, argues that “it is believed that ‘electrical
deposition’ limits the coating structure” and refers to “Table 2 of the present
disclosure [which] shows that a metal oxide coating applied through
electrochemical deposition outperformed a metal oxide coating that was
applied to a substrate by a brush.” Appeal Br. 23 (asserting that Table 2

3 Appellant does not separately argue for claims 2–6, 8, 10, 11, 13–21, and
45 and they stand or fall with claim 1. See Appeal Br. 21–30; see also
37 C.F.R. § 41.37(c)(1)(vii).
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serves to “illustrate that the electrochemical deposition process is expected
to impart distinctive structural characteristics to the overhead conductor”).
Appellant’s argument is unpersuasive for various reasons. From the
outset, Table 2 of the Specification provides only “Titanium Oxide” (applied
by electrochemical deposition) as the coating of the inventive example.
Table 2 does not provide that the method of applying the coating results in a
structural difference. In any event, the recited “electrochemical deposition
coating” is not limited to titanium oxide. The Examiner’s finding remains
undisputed that Dorst discloses various oxide coatings including titanium
oxide. Compare Final Act. 6, with Appeal Br. 23. The Examiner’s finding
that Dorst describes an electrochemical deposition process is likewise
unchallenged. Compare Final Act. 2 (citing Dorst 6:55–58, Fig. 1), with
Appeal Br. 23–24; compare Ans. 26 (finding and citing the same), with
Reply Br. 1–5.
Moreover, the Specification does not support Appellant’s argument.
The Specification provides that “[e]lectrochemical deposition of a metal
oxide is one method for coating the surface of an overhead conductor.”
Spec. 4 (cited as written description support at Appeal Br. 2). The
Specification goes on to provide an embodiment of the electrochemical
deposition coating method. Id. The Specification does not provide that a
coating applied by electrochemical deposition – as opposed to a different
method – results in a structural difference. Appellant cites Table 2 of the
Specification which compares a coating of sodium silicate and zinc oxide
with a titanium oxide coating but Appellant does not explain why the
structural differences in the two coatings are solely due to the difference in
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coating methods – as opposed to different starting materials. See Appeal Br.
23.
Lastly, whether Table 2 of the Specification shows that the titanium
oxide coating applied by electrochemical deposition “outperformed” other
examples as asserted by Appellant does not show that the recited
“electrochemical deposition coating” is structurally distinct from the prior
art. To the extent that Appellant attempts to show unexpected results,
Appellant’s argument – solely based on a titanium oxide coating – is
incommensurate in scope with the claim language.
Appellant next argues that Dorst does not teach or suggest “a single
outer layer having a thickness of 12 microns to 25 microns” as recited in
claim 1. Appeal Br. 24. We are not persuaded by this argument which does
not address the Examiner’s finding – that Sawada 609 (instead of Dorst)
teaches a conductor having an electrochemical deposition coating as a single
outer layer with a thickness of 15 micrometers. Final Act. 7.
Appellant’s argument that Sawada 609 “fails to disclose an
electrochemical deposition coating defining a single outer layer” is similarly
unpersuasive because it does not address the Examiner’s findings in support
of the rejection. Appeal Br. 24 (emphasis omitted). The Examiner cites
Dorst – instead of Sawada 609 – in support of the prior art teaching of the
recited “single outer layer.” Final Act. 6 (citing Dorst Fig. 2). As the
Examiner points out, claim 1 reciting “comprising” is an open-ended claim
and does not preclude additional layers from the coating. Ans. 28.
Appellant’s argument that Sawada 609 describes a dual layer coating
(Appeal Br. 25–27) is also unpersuasive because all of the features of
Sawada 609 need not be bodily incorporated into Dorst and the skilled
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artisan is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgment. See
Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Appellant argues that Sawada 609 teaches away from the recited single outer
layer but does not explain why Sawada 609 “suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” See In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994). The record before us does not show that Sawada
609 suggests that a single layer coating would not be operative. See Appeal
Br. 26 (only asserting, without evidence, that “one of ordinary skill in the art
would not look to the teachings of Sawada ‘609 for properties that are to be
attributed to a single outer layer”).
Appellant also appears to argue that the Examiner misconstrues the
recited “single outer layer.” Appeal Br. 28–29. Although it is unclear what
Appellant’s proposed definition is, the record supports the Examiner’s
finding that both Dorst and Sawada 609 teach a coating having a single outer
layer. More specifically, the Examiner cites coating 41 of Dorst as the
recited “single outer layer” which Appellant does not dispute. Compare
Final Act. 6, with Appeal Br. 22–30. The Examiner also cites and annotates
Sawada 609 Fig. 2 for the teaching. Ans. 33. As the Examiner points out, an
“outer layer” is a relative term and claim 1 does not require the “outer layer”
to be the “outermost” layer. Final Act. 4. Nor does the recited “single outer
layer” limit the open-ended claim 1 from having additional layers. “In the
patent claim context[,] the term ‘comprising’ is well understood to mean
‘including but not limited to’.” CIAS, Inc. v. Alliance Gaming Corp., 504
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F.3d 1356, 1360 (Fed. Cir. 2007). We are therefore not persuaded that the
Examiner reversibly erred in this aspect of the obviousness analysis.
Appellant’s remaining arguments state no more than the additional
references (such as Sawada 851, Jang, etc.) do not “remedy the deficiencies”
of Dorst and Sawada 609. Appeal Br. 29–30. No reversible error has been
identified with regard to the Examiner’s findings based on these additional
references.
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 2, 4–6,
10, 13–15,
19–21
103(a) Dorst, Sawada 609 1, 2, 4–6,
10, 13–15,
19–21

3, 45 103(a) Dorst, Sawada 609,
Sawada 851
3, 45
8 103(a) Dorst, Sawada 609,
Jang
8
11 103(a) Dorst, Sawada 609,
Inazawa
11
16 103(a) Dorst, Sawada 609,
Sawada 851, Johnson
16
17 103(a) Dorst, Sawada 609,
Gentry
17
18 103(a) Dorst, Sawada 609,
Kamiyama
18
Overall
Outcome:
103(a)   1–6, 8, 10,
11, 13–21,
45

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED