Perego, Gabriele

Patent Trials and Appeals Board

Apr 8, 2020

14236777 - (D) (P.T.A.B. Apr. 8, 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.
14/236,777 05/23/2014 Gabriele Perego 09875.0398 5836
22852 7590 04/08/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
04/08/2020 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GABRIELE PEREGO
Appeal 2019-001617
Application 14/236,777
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4–10, and 12–15 under 35 U.S.C.
§ 103(a) as unpatentable over Castellani (US 2004/0038030 A1, pub. Feb.
26, 2004) in view of Pham (WO 2010/076231 A1, pub. July 08, 2010). We
have jurisdiction under 35 U.S.C. § 6(b).

1 An oral hearing was conducted on March 26, 2020. A copy of the hearing
transcript will be made of record when available.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Prysmian S.p.A.
Appeal Brief (“Appeal Br.”) filed June 11, 2018, 1.
Appeal 2019-001617
Application 14/236,777

2
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to an energy cable having a thermoplastic
electrically insulating layer. Spec. 1, Title. In particular, Appellant discloses
a cable having an electrical insulation layer comprising a thermoplastic
polymer material mixed with a dielectric fluid and a nucleating agent. Id. at
4:6–20. Appellant discloses that the nucleating agent addresses the problem
of the formation of morphological defects in such insulation layers, which
can cause a reduction of dielectric strength. Id. at 3:15–24; 4:2–5.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A cable comprising at least one electrical conductor and at
least one electrically insulating layer surrounding said electrical
conductor, wherein the at least one electrically insulating layer
comprises:
(a) a thermoplastic polymer material selected from:
at least one copolymer (i) of propylene with at least one
olefin comonomer selected from ethylene and an a-olefin other
than propylene, said copolymer having a melting point greater
than or equal to 130°C and a melting enthalpy of from 20 J/g to
90 J/g;
a blend of at least one copolymer (i) with at least one
copolymer (ii) of ethylene with at least one a-olefin, said
copolymer (ii) having a melting enthalpy of from 0 J/g to 120
J/g; and a blend of at least one propylene homopolymer with at
least one copolymer (i) or copolymer (ii);
at least one of copolymer (i) and copolymer (ii) being a
heterophasic copolymer;
Appeal 2019-001617
Application 14/236,777

3
(b) at least one dielectric fluid intimately admixed with
the thermoplastic polymer material; and
(c) at least one nucleating agent selected from aromatic
sorbitol acetals of formula (III):
wherein:

R1, R2, R3, R4, and R5, equal or different from each other,
are selected from hydrogen, C1–C4 alkyl, C1–C4 alkoxy, and
C1–C4 alkenyl, or R1 and R2 or R3 and R4 together form a
carbocyclic ring containing up to 6 carbon atoms.
OPINION
The Examiner rejects claims 1, 4–10, and 12–15 under 35 U.S.C.
§ 103(a) as unpatentable over Castellani in view of Pham.3 Appellant does
not argue the claims separately, instead focusing on the limitations of claim
1. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as
representative and dependent claims 4–10 and 12–15 stand or fall with claim
1.
The Examiner finds that Castellani teaches a cable comprising a
propylene-based thermoplastic material and a dielectric fluid substantially as

3 The Examiner relies, without objection, on the US equivalent to Pham (US
2011/0266027 A1, pub. Nov. 03, 2011). We, likewise, refer to the US
equivalent as “Pham.”
Appeal 2019-001617
Application 14/236,777

4
recited in claim 1, except for the inclusion of a nucleating agent. Ans. 4. For
this feature, the Examiner finds that Pham teaches a cable having an
insulating layer comprising a propylene-based thermoplastic material that is
α-nucleated to improve properties such as very low tensile modulus,
significantly improved impact strength, and significantly improved stress
whitening resistance, wherein 1,3:2,4 di(methylbenzylidene) sorbitol is
listed among preferred α-nucleating agents. Id. at 4–5. The Examiner
concludes that it would have been obvious to select a sorbitol-based
nucleating agent as taught in Pham as the processing aid in Castellani for
improving the physical properties of the insulating layer. Id. at 5.
Appellant argues that the Examiner erred in assuming that Pham’s α-
nucleating agent constitutes a processing aid. Appeal Br. 8–9. According to
Appellant, Pham teaches that its α-nucleating agent is not the same as a
processing aid, but are different auxiliary substances used for different
purposes in different amounts. Id. at 9.
Although we find some merit in Appellant’s argument that the
Examiner’s characterization of Pham’s α-nucleating agent as a processing
aid within the meaning of Castellani’s disclosure is incorrect, we are
nonetheless not persuaded that this characterization creates reversible error
in the Examiner’s obviousness rejection. We note that the Examiner cites to
McLeod (US 8,026,305 B2, iss. Sept. 27, 2011), Adur (US 2007/0093605
A1, pub. Apr. 26, 2007), and Lambert (US 2007/0036960 A1, pub. Feb. 15,
2007) in support of this characterization, as well as Appellant’s rebuttal
thereof. Ans. 8; Reply Br. 4–7. However, we need not address the merits of
either the Examiner’s characterization or Appellant’s rebuttal. As the
Examiner finds (id. at 4–5), Pham teaches that the addition of an α-
Appeal 2019-001617
Application 14/236,777

5
nucleating agent improves various physical properties of the thermoplastic
composition. Pham ¶ 32. The Examiner’s additional evidentiary references
cited in response to Appellant’s arguments also confirm the beneficial
effects of adding a nucleating agent to thermoplastic compositions,
especially propylene-based compositions which do not self-nucleate.
McLeod 1:13–21; Adur ¶¶ 8–15, 24; Lambert ¶ 3. Thus, regardless of the
merits of Appellant’s argument here, there remains a sufficient basis to
conclude that it would have been obvious to one of ordinary skill in the art to
modify Castellani’s propylene-based thermoplastic composition to include
an aromatic sorbital acetal α-nucleating agent in order to improve certain
physical properties of the composition.
Appellant next argues that Pham does not teach that its nucleating
agents will improve other polymer compositions generally, let alone
Castellani’s specific composition. Appeal Br. 10. Instead, Appellant
contends that Pham’s property improvements are limited to the compositions
disclosed therein, namely a polypropylene (A), an elastomeric copolymer
derived from propylene and ethylene and/or a C4–C20 α-olefin (E), and a
polar ethylene polymer (C). Id. at 11. Appellant asserts that Pham explicitly
states that certain property improvements can only be obtained in
compositions including A, E, and C polymers. Id. Therefore, Appellant
contends that an ordinary artisan would reasonably conclude that whatever
benefits attributable to Pham’s nucleating agent are limited to such
compositions. Id. Since Castellani does not contemplate use of a C polymer,
Appellant urges that there can be no prima facie case of obviousness to
modify Castellani’s composition with Pham’s nucleating agent. Id. at 12.
Appeal 2019-001617
Application 14/236,777

6
Appellant’s argument is not persuasive of reversible error. Although
Appellant contends that the Examiner misrepresents Pham’s teachings
(Reply Br. 7–8), we disagree. As Appellant asserts, Pham discloses that its
polymer composition has superior properties compared with prior art
products, and that improvements in certain properties can only be
accomplished for its disclosed composition. Pham ¶¶ 10, 31. However, as
the Examiner finds, Pham teaches that adding a nucleating agent provides
further improvement in these properties, quite apart from Pham’s specific
composition. Pham ¶ 32. Thus, Pham does not limit this further
improvement derived from adding a nucleating agent to the recited
composition only. Indeed, the ordinary artisan would have been aware of the
benefits derived from nucleating agents added to propylene-based
compositions generally, as evidenced by the Examiner’s cited evidentiary
references. As such, the ordinary artisan would have reasonably expected
that addition of Pham’s nucleating agent to Castellani’s composition,
another propylene-based thermoplastic composition, would provide a similar
improvement in the composition’s physical properties. In re Dillon, 919 F.2d
692 (Fed.Cir.1990) (en banc) (“[S]tructural similarity between claimed and
prior art subject matter, proved by combining references or otherwise, where
the prior art gives reason or motivation to make the claimed compositions,
creates a prima facie case of obviousness.”).
Appellant next argues that there is no reasonable expectation of
success in the proposed modification of Castellani’s composition with
Pham’s nucleating agent. Appeal Br. 12–14. In this regard, Appellant asserts
that Castellani teaches a thermoplastic polymer material in admixture with a
dielectric fluid having high compatibility, thereby preventing migration of
Appeal 2019-001617
Application 14/236,777

7
the dielectric fluid. Id. at 12. But Appellant urges that Castellani achieves
such high compatibility without a nucleating agent. Id. at 13. On the other
hand, Appellant asserts that if Pham teaches some alleged benefits of adding
a nucleating agent, it does so in a composition without a dielectric fluid. Id.
Appellant, therefore, contends that adding a nucleating agent to Castellani’s
composition would cause unforeseeable consequences regarding
compatibility. Id.
Appellant further contends that Martin (C.P. Martin et al., On
Morphology, Molecular Composition and Breakdown Behaviour in Semi-
Crystalline Polymers, 2003 Annual Report Conference on Electrical
Insulation and Dielectric Phenomena 309–12, IEEE, 2006) suggests that it is
more reasonable to expect failure from the addition of a nucleating agent.
Appeal Br. 13–14. Appellant asserts that Martin teaches that clarified
(nucleating agent added) and unclarified Novolen® (propylene/ethylene
copolymer) compositions have identical mean breakdown strength. Id. at 13.
Thus, Appellant argues that there no evidence of a reasonable expectation of
success in modifying Castellani’s composition as the Examiner proposes. Id.
Appellant’s arguments regarding reasonable expectation of success
are not persuasive of reversible error. With regard to compatibility between
the polymer material and the dielectric fluid, we note that Appellant
acknowledges that Castellani teaches high compatibility. Appellant fails to
direct our attention to any evidence, or provide persuasive technical
reasoning, that the addition of a nucleating agent would somehow impair
this high compatibility so as to eliminate any reasonable expectation of
success. Further, we note that Martin teaches that the “crystallization
conditions have a significant effect on electrical strength although the effect
Appeal 2019-001617
Application 14/236,777

8
of the clarifying [, i.e., nucleating] additive is less certain.” Martin 309,
Abstract. Moreover, although Martin reported no difference in breakdown
strength for quenched clarified and unclarified Novolen® compositions,
Martin did not report any failure in the clarified compositions nor did Martin
report on any other properties affected by the clarifying (nucleating) agent.
Thus, Martin, at worst, fails to address the reasonableness of any expectation
that adding a nucleating agent to Castellani’s composition would provide
improved physical properties, other than breakdown strength, as Pham
suggests.
Appellant next argues that the claimed composition including
aromatic sorbitol acetals of claim 1 demonstrate unexpected results. Appeal
Br. 14–16. Appellant directs our attention to Examples 1 and 2 in the
Specification and Compositions A and B in the Parris Declaration
(Declaration under 37 C.F.R. § 1.132 of Donald R. Parris filed May 3,
2016). Id. at 14. Appellant asserts that Example 2, using an aromatic sorbitol
acetal of formula (III) of claim 1, achieved a 20% increase in dielectric
breakdown strength over Example 1 which had no nucleating agent. Id. at
15. Appellant also asserts that Composition B, using amorphous silica as a
nucleating agent, increased dielectric breakdown strength by only 4.5%. Id.
Appellant notes that the Parris Declaration explains that the increase in
dielectric breakdown strength for the claimed nucleating agent, i.e., 20%,
was unexpected given the increase of only 4.5% for amorphous silica as the
nucleating agent. Id. In this regard, Appellant notes that Pham teaches that
amorphous silica is an equivalent nucleating agent to the sorbitol nucleators.
Id. at 16.
Appeal 2019-001617
Application 14/236,777

9
The Examiner responds that “the use of aromatic sorbitol acetal as the
nucleating agent to improve properties of polypropylene compositions
directed to coatings for cables was known in the art prior to the filing of the
instant invention.” Ans. 12. As Appellant contends (Appeal Br. 14), the
Examiner does not directly dispute the conclusion of the Parris Declaration
that the increase in dielectric breakdown strength for the claimed nucleating
agent, i.e., 20%, was unexpected given the increase of only 4.5% for
amorphous silica as the nucleating agent.
The burden of establishing that unexpected results support a
conclusion of nonobviousness rests with the Appellant. In re Huang, 100
F.3d 135, 139 (Fed. Cir. 1996). “[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). “[I]t is not enough to show that results are
obtained which differ from those obtained in the prior art: that difference
must be shown to be an unexpected difference.” See In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (emphasis in original). Additionally, the relied-
upon results must be commensurate in scope with the claims. See In re
Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003). “Establishing that one
(or a small number of) species gives unexpected results is inadequate proof,
for ‘it is the view of [the CCPA] that objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.’” See In re Greenfield, 571 F.2d 1185, 1189 (CCPA
1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, “it is
well settled that unexpected results must be established by factual evidence.
‘Mere argument or conclusory statements in the specification does not
Appeal 2019-001617
Application 14/236,777

10
suffice.’” See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”).
Here, Appellant’s evidence is inadequate to establish unexpected
results for the claimed invention. Appellant only presents a single example
of a specific thermoplastic polymer material, a single dielectric fluid, and a
single aromatic sorbitol acetal of formula (III) of claim 1. In addition,
Appellant only compared the achieved improvement in dielectric breakdown
strength of this specific nucleator to one other nucleator, amorphous silica.
Pham lists a number of suitable inorganic and organic nucleators (Pham
¶ 153), but appears to prefer organic nucleators including aromatic sorbitol
acetals (id. ¶ 160). Appellant fails to present any evidence or persuasive
technical reasoning establishing that the results presented somehow extend
to all other thermoplastic polymer materials, dielectric fluids, and aromatic
sorbitol acetals of formula (III), as compared to other nucleators listed in
and, in particular preferred by, Pham. Thus, Appellant’s evidence is not
commensurate in scope with the claims, nor reasonably comparative to the
closest prior art such that the difference is shown to be unexpected. In this
regard, we note that the Parris Declaration, though stating that the difference
of 4.5% increase versus 20% increase was unexpected, fails to explain in
any detail why such a difference in improved results was unexpected.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 1, 4–10, and 12–15 over Castellani in view of Pham.
Appeal 2019-001617
Application 14/236,777

11
CONCLUSION
The Examiner’s rejection of claims 1, 4–10, and 12–15 under 35
U.S.C. § 103(a) as unpatentable over Castellani in view of Pham is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–10, 12–
15
103(a) Castellani, Pham 1, 4–10, 12–15

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