PRYSMIAN S.P.A.

Patent Trials and Appeals Board

Apr 10, 2020

14899898 - (D) (P.T.A.B. Apr. 10, 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.
14/899,898 12/18/2015 Gabriele PEREGO 09875.0411 6603
22852 7590 04/10/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
MAYO III, WILLIAM H
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
04/10/2020 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 and PAOLO LIBOI
________________

Appeal 2018-009057
Application 14/899,898
Technology Center 2800
________________

Before ROBERT E. NAPPI, DENISE M. POTHIER, and
JASON V. MORGAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 13–24, which constitute all the claims
pending in this application. Claims 1–12 have been cancelled. An oral
hearing was held March 10, 2020. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

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 PRYSMIAN
S.P.A. Appeal Br. 1.
Appeal 2018-009057
Application 14/899,898

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Summary of the disclosure
Appellant’s claimed subject matter relates to a “method for
manufacturing an electrical cable.” Abstract.
Illustrative claim (key limitations emphasized)
13. A method for manufacturing a power cable comprising:
providing at least one core comprising an electrical conductor;
arranging at least one copper sheath around the at least one
core, said arranging the copper sheath comprising:
providing at least one copper foil having two opposite
first edges;
bending the copper foil around the core until the first
edges of the copper foil are contacted to each other;
welding the first edges of the copper foil to each other to
form a corresponding welded joint; and
deposing a copper coating on the copper foil and the
welded joint, wherein said deposing the copper coating is
carried out by a thermal spray process.
The Examiner’s rejections and cited references
The Examiner rejects claims 13, 14, and 19–24 under 35 U.S.C. § 103
as being unpatentable over Deighton et al. (US 2010/0044068 A1; published
Feb. 25, 2010) (“Deighton”) and Oishi (US 2010/0297464 A1; published
Nov. 25, 2010). Final Act. 4–6.
The Examiner rejects claims 15–18 under 35 U.S.C. § 103 as being
unpatentable over Deighton, Oishi, and Dembowski et al. (US 2009/
0068495 A1; published Mar. 12, 2009) (“Dembowski”). Final Act. 6–7.
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Application 14/899,898

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ANALYSIS
In rejecting claim 13 as obvious, the Examiner finds that Deighton
teaches manufacturing a multi-core cable (Final Act. 4 (citing, e.g., Deighton
Figs. 1–3, ¶¶ 6, 12, 21)), but that Deighton does not “specifically disclose
the method comprising depositing a copper coating on the copper foil at the
welded joint, wherein depositing the copper coating is carried out by a
thermal spray process” (see id. at 5). Thus, the Examiner relies on Oishi’s
disclosures related to welding and thermal spraying to teach or suggest
modifying Deighton’s manufacturing process to include “deposing a copper
coating on the copper foil and the welded joint, wherein said deposing the
copper coating is carried out by a thermal spray process.” See id. (citing
Oishi ¶¶ 5, 6, 43, 44, 137, 139); see also Ans. 14 (further citing Oishi ¶ 8).
Appellant contends the Examiner erred because “Oishi teaches that its
melt-solidified substances, whether made by welding or thermal spraying,
are free from micro-defects when the melt solidified substance is formed
with its allegedly novel copper alloy compositions,” and thus, “Oishi clearly
does not teach or suggest that there is a need or any other rationale, let alone
any expected capability, to improve an existing welded structure by
deposing a thermal sprayed layer.” Appeal Br. 11. That is, Appellant argues
“Oishi treats welding and thermal spraying as separate processes that are
not used in combination.” Id. at 12. Appellant also argues that “Oishi clearly
indicates that the welded structure is a different structure from thermally
sprayed structure. And, that the welding is a different process from
thermally spraying.” Id. at 13. In particular, “Oishi discusses the industrial
applicability of its copper alloys to melt-solidified parts of four types, which
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Application 14/899,898

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are then divided with welded products discussed in paragraphs 138–139 and
thermal sprayed products and others in paragraphs 140–141.” Id.
Appellant’s arguments are supported by Oishi’s separate
categorization of weld products and thermal sprayed. See Oishi ¶¶ 138–41.
Moreover, as Appellant correctly notes, “Oishi at ¶¶ 138–139 lists ‘cladding
tube for undersea cable’ as an example of a ‘welded product,’ but provides
different examples of ‘thermally sprayed products’ at ¶¶ 140–141.” Appeal
Br. 15 (emphasis added).
The example products Oishi provides for “Lining Products, Build-Up
Welded Products, Thermal Sprayed Products, or the Parts or Constructional
Material Thereof” (Oishi ¶ 140 (emphasis added)) are:
Sliding parts for hydraulic pump, sliding parts for motor,
cylinder block, piston shoe, bush, bush sleeve, thrust metal,
repairing material for ship driving equipment, gear teeth, pump
impeller, bearing, shaft, build-up welded part to prevent scoring
in press mold, build-up welded steel for chemical plant and ship
parts, rolling piston, parts for footing [or] basic pile joining.
Id. ¶ 141. The Examiner does not show that any of the products Oishi
identifies as thermal sprayed products are similar to the copper tubular layer
of Deighton (i.e., to a copper foil with a welded joint).
The Examiner finds that “[c]ladding, as understood in the art, is a
layer of material formed on a surface in order to provide the interior
component ([i.e.,] welded joint) with protection from external elements and
prevention corr[o]sion.” Ans. 14. We agree with Appellant, however, that
the Examiner fails to show “Oishi discloses applying a cladding tube for
undersea cable via thermal spraying onto an existing copper welded joint.”
Reply Br. 4 (emphasis added).
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Application 14/899,898

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Furthermore, Deighton’s copper tubular layer 40 is a “barrier reducing
the hydrogen diffusion from the outside to the inside of the multicore low
voltage electric cable 20[, as] well as protecting the cable from hydrogen
ingress” that is “over sheathed by a protective polymer sheath 26.” Deighton
¶ 21. Deighton forms copper tubular layer 40 using overlapping copper tape
that is bonded to protective polymer sheath 26 in a single step using a
copolymer coating “which melts during the extrusion of the protective
polymer sheath 26.” Id. at 22. The Examiner’s findings fail to show that it
would have been obvious—or even possible—to interrupt this single step in
Deighton to depose a copper coating, carried out by a thermal spray process,
between the protective polymer sheath 26 and the welded joint of the copper
tape.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103
rejection of claim 13, or claims 14 and 19–21, which depend from claim 13
and contain the disputed recitations.
The Examiner fails to show that Dembowski, which is related to
“repairing, reconditioning, and/or re-metalizing the weld seam in steel
electrical conduit” (Dembowski Abstract)—rather than in a power cable—
cures the noted deficiency of Deighton and Oishi (see Final Act. 6–7).
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103 rejection of
claims 15–18, which depend from claim 13.
Independent claim 22 is directed to a power cable that includes a
“copper sheath havening a welded joint” and “a thermal sprayed copper
coating on at least the welded joint.” For the reasons discussed above, we do
not sustain the Examiner’s 35 U.S.C. § 103 rejection of claim 22, or claims
23 and 24, which depend from claim 22.
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Application 14/899,898

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CONCLUSION
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
13, 14, 19–24 103 Deighton, Oishi 13, 14, 19–24
15–18 103 Deighton, Oishi,
Dembowski
15–18
Overall
Outcome
13–24
REVERSED