ABB HV Cables (Switzerland) GmbH

Patent Trials and Appeals Board

Oct 23, 2020

15106011 - (D) (P.T.A.B. Oct. 23, 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.
15/106,011 06/17/2016 Peter Sunnegårdh 07224 - P0031A 1010
131672 7590 10/23/2020
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
PAGHADAL, PARESH H
ART UNIT PAPER NUMBER
2847
MAIL DATE DELIVERY MODE
10/23/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PETER SUNNEGÅRDH, MARC JEROENSE,
ANDERS GUSTAFSSON, PÄR LILJA, PER-OLA HAGSTRAND,
VILLGOT ENGLUND, ANNIKA SMEDBERG, ULF NILSSON,
JOHAN ANDERSSON, VIRGINIE ERIKSSON,
JONAS JUNGQVIST, and JONNY BRUN
____________________

Appeal 2020-002851
Application 15/106,011
Technology Center 2800
____________________

Before ROBERT E. NAPPI, CARL W. WHITEHEAD JR., and
SHARON FENICK, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 9. Oral arguments were heard on October
14, 2020. A transcript of the hearing will be added to the record in due
course. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, ABB HV Cables (Switzerland) GmbH is
the real party in interest. Appeal Br. 2.
Appeal 2020-002851
Application 15/106,011
2
CLAIMED SUBJECT MATTER
The claims are directed to a transmission cable comprising a
conductor extending along a longitudinal axis, which is circumferentially
covered by an insulation layer of an extruded insulation material, whereby
the transmission cable passes the electrical type test as specified in Cigré
TB496. Abstract. Claim 1 is reproduced below.
1. A transmission cable comprising:
a conductor or a bundle of conductors extending along a
longitudinal axis, the conductor or the bundle of conductors is
circumferentially covered by an insulation layer comprising an
extruded insulation material, wherein the extruded insulation
material comprises a crosslinked polymer composition, which
is obtained by crosslinking a polymer composition, the polymer
composition comprises an LDPE, peroxide, and sulphur
containing antioxidant,
wherein the crosslinked polymer composition has an
Oxidation Induction Time, determined according to ASTM-
D3895, ISO/CD 11357 and EN 728 using a Differential
Scanning Calorimeter (DSC), which Oxidation Induction Time
corresponds to Z minutes, and comprises an amount of peroxide
by-products which corresponds to W ppm determined
according to BTM2222 using HPLC, wherein
Z1 ≤ Z ≤ Z2, W1 ≤ W ≤ W2, and
W ≤ p – 270 * Z, wherein
Z1 is 0, Z2 is 60, W1 is 0 and W2, is 9500, and p is 18500
and wherein the crosslinked polymer composition does not
comprise 2,4-diphenyl-4-methyl-1-pentene, such that the
transmission cable is configured to pass the electrical type test
as specified in Cigré TB496, whereby the rated voltage U0 is
450 kV or more.

Appeal 2020-002851
Application 15/106,011
3
REJECTIONS
The Examiner rejected claims 1 through 9 under 35 U.S.C. § 112(b),
as being indefinite. Final Act. 3–5. 2
The Examiner rejected claims 1, 3 through 7, and 9 under 35 U.S.C.
§ 102(a)(1) as anticipated over Keogh (US 6,180,706 B1; iss. Jan. 30, 2001).
Final Act. 5–10.3
The Examiner rejected claim 2 under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Keogh and Jeker (US 2014/0083739 A1;
pub. Mar. 27, 2014). Final Act. 11–13.
ANALYSIS
At the outset we note that the Final Action contains an objection to the
Specification, which Appellant has argued is in error. See Final Act. 2,
Appeal Br. 5–8. These arguments are directed to a petitionable issue and not
an appealable issue. See In re Schneider, 481 F.2d 1350, 1356–57 (CCPA
1973) and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also Manual
of Patent Examining Procedure (“MPEP”) § 1002.02(c), item 3(g) and
§ 1201 (9th ed., rev. 10.2019, June 2020). Thus, the relief sought by
Appellant would have been properly presented by a petition to the Director
under 37 C.F.R. § 1.181 instead of by appeal to this Board. Accordingly, we
have not considered the propriety of the objection and have only considered
the Appellant’s arguments as they are relied upon in arguing the
indefiniteness rejection of claim 1.

2 Throughout this Decision we refer to the Appeal Brief filed September 13,
2019 (“Appeal Br.”); Reply Brief filed March 5, 2020 (“Reply Br.”); Final
Office Action mailed February 7, 2019 (“Final Act.”); and the Examiner’s
Answer mailed January 8, 2020 (“Ans.”).
3 We note page 5 of the Final Action contains a typographical error and
identifies claim 2 as included in the anticipation rejection.
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Application 15/106,011
4
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of claims 1, 3 through 7, and 9 under 35 U.S.C.
§ 112(b), of claims 1, 3 through 7, and 9 under 35 U.S.C. § 102(a)(1) and
claim 2 under 35 U.S.C. § 103. However, Appellant’s arguments have not
persuaded us of error in the Examiner’s rejection of claims 2 and 8 under 35
U.S.C. § 112(b).
Rejection based upon 35 U.S.C. § 112(b)
The Examiner rejects claims 1 through 9 as failing to particularly
point out and distinctly claim the subject matter because “X and W have
multiple definitions, furthermore, what is ‘p’ is not define[d], and how or
why p having particular value is not defined in Equation ‘W≤p–270*Z’, the
outcome or resultant properties such conductivity or tested voltage Uo
cannot be define[d].” Final Act. 4. Further, the Examiner rejects claim 8 as
it recites the value of p as equal to 16000, which is in contradiction with
claim 1 which recites p as equal to 18500. Id. Additionally, the Examiner
rejects claim 2 as the recitation of “an inner electrical conductor” lacks
antecedent basis (as claim 1 from which it depends recites a conductor
bundle) and the recitation of “the first layer of polymer based electrical
insulator” lacks antecedent basis (as claim 1 from which it depends recite a
layer of electrical insulation layer). Id.4

4 Appellant notes the Final Action appears to contain a typographical error,
identifying claim 9 as rejected and not claim 2 as claim 9 does not recite the
limitations identified in the rejection but claim 2 does. Appeal Br. 8–9; see
also Ans. 6–7.
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Application 15/106,011
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Appellant argues the Examiner’s 35 U.S.C. § 112(b) rejection of
claim 1 by relying upon their arguments directed to the objection to the
Specification. Appeal Br. 8. In the arguments directed to the objection to
the Specification, Appellant argues:
Contrary to the Examiner’s interpretation, a skilled
artisan would not view the criteria for Was being two equations
within an equation system, such that one would choose a W
value within the range of W1 to W2, insert such value into the
“W ≤ p-270*Z” equation to calculate a value for Z, and then
see if the calculated Z is within the range of Z1 to Z2. This is
not the case. As discussed above, the Specification teaches that
the values for oxidation induction time (Z) and the amount of
peroxide by-products (W) are both measured (e.g., using
Differential Scanning Calorimeter and high performance liquid
chromatography). Once Z and W have been determined, one
would check to see whether the measured values meet the three
distinct criteria in order to determine if a crosslinked polymer
composition is inside or outside the claimed scope.
Appeal Br. 7.
The Examiner responds to Appellant’s arguments stating that the
ranges defined by the claim are not consistent with the equation. Ans. 4–5.
The Examiner reasons “for example[], Z is 0 minutes applied to equation W
= P-270*Z, W is 18500ppm which out of range of W between 0 to 9500
ppm; W is 0 ppm applied to equation W = p-270*Z, Z is 68.51 and out of
the range of 0 to 60.” Id. at 4 (emphasis omitted).

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Application 15/106,011
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Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. The Examiner’s rejection is based upon applying the ranges of
Oxide Induction Time (Z) as being between 0–60 and an amount of peroxide
by-product (W) between 0 and 900 to the formula relating the value of W
and Z (W ≤ p–270 * Z). Ans. 4–5. We do not consider this to be a
reasonable interpretation, rather we consider the proper interpretation is that
there are three ranges that the determined values of Z (Oxidation Induction
Time) and W (amount of peroxide by-products in ppm) must meet, the
absolute rages 0 ≤ Z ≤ 60; 0 ≤ W ≤ 900; and the range set by relation
between the two W = p – 270 * Z (where constant p has a value of 18500).
As such, we consider the claim to be definite and do not sustain the
Examiner’s rejection of claim 1 and claims 3 through 7 and 9 similarly
rejected.
With respect to the Examiner’s rejection of claims 2 and 8, and
Appellant asserts that an amendment was submitted dated May 6, 2019 to
address and resolve the issues with these claims. Appeal Br. 8.
The Examiner identifies the after final amendment May 6, 2019 was
not entered. See Ans. 6, and Adv. Act. (dated June 14, 2019).
As Appellant has not identified any error in the Examiner’s rejection
of claims 2 and 8, we sustain the Examiner’s rejection of these claims under
35 U.S.C. § 112(b).

Rejection of claims 1, 3 through 7, and 9 under 35 U.S.C. § 102(a)(1)
Appellant presents several arguments directed to the Examiner’s
anticipation rejection of independent claim 1. Appeal Br. 10–12; Reply Br.
5–9. The dispositive issue presented by these arguments is whether the
Examiner shown that Keogh teaches a crosslinked polymer which has a
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Oxidation Induction time within the range of 0 to 60 minutes determined in
accordance with ASTM-D3895, ISO/CD 11357 and EN 728 using a
Differential Scanning Calorimeter as claimed.
The Examiner in the Final Action finds that Keogh teaches an organic
peroxide of between 3000 ppm and 5000 ppm. Final Act. 6. The Examiner
uses these values for W in the equation W=p-270*Z and determines Keogh
teaches the Oxidation Induction time, Z, is about 50 which falls within the
claimed range. Final Act. 7. Further the Examiner states that “Keogh
discloses the claimed structure, therefore properties, effect, and/or test
dependent on structure and/or material are intrinsic.” Id. at 7 (emphasis
omitted).
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. The Examiner has not demonstrated that the crosslinked polymer
of Keogh has an Oxidation Induction Time, which, when determined
applying the claimed standard using a differential scaling calorimeter, falls
within the claimed range. The Examiner’s analysis misapplies the equation
W = p – 270 * Z. Final Act. 7 As discussed above, the equation W = p –
270 * Z in claim 1 is defining a range set by the relation of the determined
values of Oxidation Induction Time and the determined amount of peroxide
by-products. The claimed formula is not reciting how to calculate the
Oxidation Induction Time. Thus, the Examiner by applying the formula to
calculate the Oxidation Induction Time does not show that the polymer of
Keogh meets the claimed range as this formula is not the claimed manner of
determining the Oxide Induction Time.5 Accordingly, we do not sustain the

5 We additionally note that the Examiner’s analysis uses Keogh’s teaching of
an amount of peroxide for the value W in the formula and not the amount of
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Examiner’s anticipation rejection of claim 1 and dependent claims 3 through
7 and 9.
Rejection of claim 2 under 35 U.S.C. § 103
Claim 2 depends upon claim 1, and the Examiner’s rejection of claim
2 relies upon the teachings of Keogh to teach the limitation of claim 1. Final
Act. 11. The Examiner has not shown, nor do we find that the additional
cited teachings of Jeker make up for the deficiencies noted above with
respect to the rejection of claim 1. Final Act. 12. Accordingly, we do not
sustain the Examiner’s obviousness rejection of claim 2 for the same reasons
as claim 1.

CONCLUSION
In summary:
Claim
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9 112(b) Indefiniteness 2, 8 1, 3–7, 9
1, 3–7, 9 102(a)(1) Keogh 1, 3–7, 9
2 103 Keogh, Jeker 2
Overall
Outcome
2, 8 1, 3–7, 9
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) (2018).

peroxide by-products as claimed by Appellant. Further, the Examiner has
not shown how the amount of peroxide correlates to the amount of peroxide
by-products.
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Application 15/106,011
9
AFFIRMED-IN-PART