Cody R. Davis et al.

Patent Trials and Appeals Board

Aug 20, 2019

14701220 - (D) (P.T.A.B. Aug. 20, 2019)

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.
14/701,220 04/30/2015 Cody R. DAVIS 39795-1026US06 1068
77001 7590 08/20/2019
ULMER & BERNE LLP
c/o Diane Bell
600 Vine Street
SUITE 2800
Cincinnati, OH 45202
EXAMINER
LOPEZ, RICARDO E.
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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 CODY R. DAVIS, SATHISH KUMAR RANGANATHAN,
RYAN ANDERSEN, VIJAY MHETAR, WILLIAM S. TEMPLE,
SRINIVAS SIRIPURAPU, GORDON BAKER,
JAMES FREESTONE, and DENNIS L. DOSS
____________

Appeal 2019-000244
Application 14/701,220
Technology Center 1700
____________

Before BRIAN D. RANGE, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 17–202. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant is the applicant, General Cable Technologies Corporation,
which, according to the Appeal Brief, is also the real party in interest.
Appeal Brief filed April 13, 2018 (“App. Br.”), 1.
2 Final Office Action entered July 13, 2017 (“Final Act.”), 1.
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STATEMENT OF THE CASE
Appellant claims an overhead conductor. Independent claim 17
illustrates the subject matter on appeal, and is reproduced below with
emphasis added to highlight contested subject matter:
17. An overhead conductor comprising:
a bare conductor, and
a coating layer being substantially inorganic and dried,
and comprising from about 20% to about 60%, by dry weight,
of a binder, and a heat radiating agent, and having a solar
absorptivity coefficient of about 0.4 or greater; and the binder
comprises a silicate,
wherein the coating layer coats the bare conductor;
wherein when tested in accordance with ANSI Cl 19.4-
2004, the operating temperature of the overhead conductor is
lower than the operating temperature of the bare conductor
when uncoated and the same current is applied;
wherein the overhead conductor passes the Mandrel
Bend Test after heat aging at 325 °C for 1 day.

App. Br. 17 (Claims Appendix) (emphasis added).
Similar to claim 17, independent claim 19 recites, in pertinent part, an
overhead conductor comprising a bare conductor coated with a dried coating
layer that includes a binder comprising a silicate and a heat radiating agent,
which passes the Mandrel Bend Test after heat aging at 325ºC for 1 day.
Appellant’s Specification explains that the Mandrel Bend Test involves
placing coated aluminum substrates (samples) in an air circulating oven
maintained at a temperature of 325ºC for 1 day, placing the samples at a
temperature of 21ºC for 24 hours, bending the samples on a cylindrical
mandrel having a diameter of 10 inches or less, and observing the coatings
for visible cracks. Spec. ¶ 80, 92. The Specification indicates that a sample
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passes the Mandrel Bend Test if no visible cracks are observed in the coating
after the bending operation. Spec. ¶ 92.
The Examiner maintains the rejection of claims 17–20 under 35
U.S.C. § 103(a) as unpatentable over Sutcliffe et al. (US 4,407,062, issued
October 4, 1983) in view of Winterhalter (US 2009/0114420 Al, published
May 7, 2009) in the Examiner’s Answer entered August 10, 2018 (“Ans.”).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 17–20 under 35 U.S.C. § 103(a), for the reasons set forth in the
Appeal Brief and below.
The Examiner finds that Sutcliffe discloses a method of coating wires
containing the components of an intermetallic superconductive compound in
which “the coating is flexible at room temperature but has good insulating
properties after heat treatment.” Final Act. 3 (citing Sutcliffe Abst.). The
Examiner finds that Sutcliffe discloses that the coating comprises a mixture
of sodium silicate, chalk, and China Clay (heat radiating agent) that react on
heat treatment (or firing) to form an insulating ceramic, but the coating is
flexible when merely dried. Id. The Examiner finds that “Sutcliffe does not
specifically recognize that the insulated conductor is an overhead
conductor,” but the Examiner finds that Winterhalter discloses an overhead
transmission and distribution conductor comprising a core and a surrounding
electrical conductor used to transmit and distribute high voltage power.
Final Act. 3 (citing Winterhalter ¶¶ 39, 40).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to “use[] Sutcliffe’s
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inorganic coating as the outer cladding in Winterhalter’s overhead
conductor,” and “it would have been within the immediate purview of one of
ordinary skill in the art to conclude that the step of firing [or heat treating the
coating] is not necessary for the intended purpose [of the proposed
combination], which is providing a flexible coating as the outer cladding in
Winterhalter’s overhead conductor.” Ans. 10.
On the record before us, however, for reasons expressed by Appellant
(App. Br. 15, Reply Br. 4–6) and discussed below, the Examiner does not
articulate reasoning having rational underpinning as to why one of ordinary
skill in the art would have combined the relied-upon disclosures of Sutcliffe
and Winterhalter to arrive at an overhead conductor as recited in claims 17
and 19.
Sutcliffe explains in the Background of the Invention section of the
reference that conventional methods for manufacturing intermetallic
superconducting wire involve producing a precursor superconducting wire
comprising filaments of an element of an intermetallic compound embedded
in a matrix of carrier metal that includes the remaining components of the
intermetallic compound, and heating the precursor wire to react the
components of the intermetallic compound to form superconducting wire.
Col. 1, ll. 6–19. Sutcliffe also explains in the Background of the Invention
that two conventional methods exist for producing electromagnetic coils
(magnets) comprised of such intermetallic superconducting wire. Col. 1, ll.
20–28. According to Sutcliffe, the first method involves reacting the
precursor wire, and then winding the reacted wire into a coil (“react and
wind”), while the second method involves first winding the green or
unreacted precursor wire into a coil, and then reacting the wire (“wind and
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react”). Id.
Sutcliffe describes a conventional method for insulating intermetallic
superconducting wire applicable to the react and wind method that involves
reacting the precursor wire, winding the reacted wire into a coil, and then
applying an electrical insulant to the wire. Col. 1, ll. 29–42. Sutcliffe
explains that before Sutcliffe’s invention, it was not possible to produce a
metallic coil comprised of insulated intermetallic superconductive wire by
the wind and react method, because there was no known coating that was
flexible enough after being applied and dried to withstand being wound into
a coil, while being insulating after subsequent heat treatment. Col. 1, ll. 52–
60. Sutcliffe explains that its invention provides a coating that permits
production of metallic coils (or magnets) comprised of insulated
intermetallic superconducting wire using the react and wind method because
Sutcliffe’s coating “is flexible in the coated and dried state but [] is
insulating in the reacted or heat treated state.” Col. 1, l. 61–col. 2, l. 53.
Sutcliffe discloses that the coating of Sutcliffe’s invention comprises a
mixture of sodium silicate, China Clay, and calcium carbonate (chalk), and
explains that when the mixture is heated to a temperature in excess of 500ºC,
the silicate, China Clay, and calcium carbonate react to form an insulating
ceramic. Col. 1, ll. 66–col. 2, ll. 19. Sutcliffe discloses producing an
electromagnet by applying the coating to a wire, drying the coating “to form
a flexible coating,” winding the coated wire around a magnet former, and
heating the wound wire to cause a reaction to occur between the sodium
silicate, chalk, and China Clay that transforms the coating into an insulating
ceramic. Col. 2, ll. 44–53; col. 3, ll. 21–27, 31–66. Sutcliffe discloses that
the ceramic coating electrically insulates adjacent strands of the wire in the
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electromagnet. Col. 2, ll. 44–53.
Winterhalter discloses overhead transmission and distribution
conductor 100 used to transmit and distribute high voltage power. ¶ 39; Fig.
4. Winterhalter discloses that conductor 100 is typically strung between
electrical poles and towers. Id. Winterhalter discloses that conductor 100
comprises core 10 that includes inner core component 12, intermediate
cladding component 14 surrounding inner core component 12, and outer
cladding component 16 surrounding intermediate cladding component 14.
¶¶ 13, 17, 23, 39, 40; Fig. 3. Winterhalter discloses that protective coating
18 extends around outer cladding component 16, and electrical conductor
102 surrounds outer cladding component 16. ¶¶ 40. Winterhalter discloses
that outer cladding component 16 comprises a plurality of glass-based
stranded members, such as boron free E-glass stranded members or S-glass,
in a resin matrix. ¶¶ 13, 16.
Sutcliffe thus discloses applying a flexible coating to the outer surface
of an intermetallic superconductive wire, wrapping the wire into a coil, and
curing the coating to form a ceramic that insulates adjacent portions of the
wire, while Winterhalter discloses outer cladding component 16 of
conductor core 10, which is formed of glass-based stranded members in a
resin matrix, and is surrounded by electrical conductor 102. The Examiner
does not provide an explanation grounded in sound technical reasoning as to
why one of ordinary skill in the art would have found Sutcliffe’s coating
composition, which serves as an electrical insulator only when cured, to be
useful as outer cladding component 16 of Winterhalter’s overhead
transmission and distribution conductor 100, in view of the disparate
functions of these components, and the dissimilarity in the materials from
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which the components are formed—uncured ceramic versus glass-based
stranded members in a resin matrix.
More specifically, the Examiner does not provide a reason having
rational underpinning as to why one of ordinary skill in the art would have
found Sutcliffe’s coating, designed to provide flexibility to allow a coated
intermetallic superconductive wire to be wound into a coil, which can then
be transformed by heating into a ceramic that insulates adjacent portions of
the wound wire, useful as an element of the core of an overhead
transmission and distribution conductor as disclosed in Winterhalter, which
is not wound to form a coil, but is instead strung between electrical poles
and towers. Nor does the Examiner explain why one of ordinary skill in the
art would have used Sutcliffe’s coating composition, which is positioned
external to a conductor to insulate adjacent portions of the conductor after
curing, as outer cladding component 16 of Winterhalter’s overhead
conductor 100, which is positioned internal to electrical conductor 102.
Furthermore, as Appellant points out (Reply Br. 5–6), even if the
Examiner proposes applying Sutcliffe’s uncured coating composition to the
external surface of Winterhalter’s electrical conductor 102, the Examiner
still does not provide a reason having rational underpinning as to why one of
ordinary skill in the art would have found it useful to apply a coating having
the flexibility to allow a wire to which the coating is applied to be wound
into a coil—but that does not function as an insulator—to the outer surface
of Winterhalter’s electrical conductor 102, which is not wound into a coil.
Accordingly, on the record before us, the Examiner does not establish
that one of ordinary skill in the art would have been led to combine the
relied-upon disclosures of Subcliffe and Winterhalter to arrive at an
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overhead conductor comprising a bare conductor coated with a dried coating
layer that includes a binder comprising a silicate and a heat radiating agent,
and passes the Mandrel Bend Test after heat aging at 325ºC for 1 day, as
required by claims 17 and 19.
Consequently, we do not sustain the Examiner’s rejection of claims 17
and 19, and claims 18 and 20, which depend from claims 17 and 19, under
U.S.C. § 103(a).
We do not reach Appellant’s declaration evidence (Appeal Br. 9–10)
because the Examiner did not establish a prima facie case of obviousness.

DECISION
We reverse the Examiner’s rejection of claims 17–20 under 35 U.S.C.
§ 103(a).
REVERSED