Ex Parte Arzate et al

Patent Trial and Appeal Board

Sep 16, 2013

10898509 (P.T.A.B. Sep. 16, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/898,509 07/22/2004 Fermin Marquez Arzate MX/JFC04-03 4483
7590 09/17/2013
Law Office of Carmen Pili Ekstrom
727 Sunshine Dr.
Los Altos, CA 94024
EXAMINER
ESTRADA, ANGEL R
ART UNIT PAPER NUMBER
2835
MAIL DATE DELIVERY MODE
09/17/2013 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 FERMIN MARQUEZ ARZATE and
VICTOR OSORNIO OSORNIO
____________________

Appeal 2011-004620
Application 10/898,509
Technology Center 2800
____________________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-9 and 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

Appeal 2011-004620
Application 10/898,509
2
The claims are directed to a reinforced overhead multipurpose cable
for outside telecommunications of voice, video, data, and distribution
(VVDD) type (Spec. 1:5-11; Claim 1).
The Examiner maintains the following rejections:
A. The rejection of claims 1-8 under 35 U.S.C. § 102(b) as
anticipated by Arzate1;
B. The rejection of claim 9 under 35 U.S.C. § 103(a) over Arzate in
view of McClean2 alone or over Arzate in view of McClean and
Bartholomew3; and
C. The rejection of claim 20 under 35 U.S.C. § 112, ¶ 1 as lacking
written descriptive support and under 35 U.S.C. § 112, ¶ 2 as indefinite.4
Our opinion regarding each of the rejections follows.

OPINION
A. Anticipation
Claim 1, with the disputed limitations italicized for emphasis, reads as
follows:
Claim 1. A reinforced overhead multipurpose cable for
outside telecommunications, of voice, video, data and
distribution (VVDD) type, comprising:
a multipair construction core;
a plurality of electromagnetic shielding element and
external thermoplastic protection cover, comprising a metal or
non-metal self-supporting reinforcing element which is united

1 Arzate et al., US 6,495,762 B2, patented Dec. 17, 2002.
2 McClean et al., US 3,297,814, patented Jan. 10, 1967.
3 Bartholomew, US 3,581,523, patented June 1, 1971.
4 The rejection of claims 1-9, and one ground of the rejection of claim 20,
under 35 U.S.C. § 112, ¶ 2 has been withdrawn (Ans. 9-10).
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to the cable in the external integrated cover of the cable but
separated from the core of transmission pair sections;
a plastic tape helicoidally and longitudinally arranged to
unite the individual arrays of pair sectors forming the core;
a plastic wrapping tape covering concentrically said
assembled core;
a rupture thread longitudinally projecting along the cable;
and adjacent to an aluminum wrapping tape of said cable;
the aluminum wrapping tape tubularly arranged as
electromagnetic shielding element;
an outer insulating cover comprising low and medium
density polyolefins;
the core being dry and free from fillings, or containing
swellable powder placed in the interstices of the core, such that
the conductance, capacitance or the resistance of the insulation
is not affected.
(Claims App’x at Br. 31.)
According to Appellants, claim 1 recites “a reinforced overhead cable
with a self supporting element and having a core which is dry and free
from fillings, or containing swellable powder” and, “[i]n contrast, Arzate
does not disclose the elements of the present invention as arranged in the
claim.” (Br. 14). According to Appellants, “Arzate discloses an
underground cable having a core which has fillings and swellable powder,”
and “[f]urthermore, Arzate does not disclose a self supporting metal
element.” (id.; see also Br. 16-19.) Appellants also argue that Arzate does
not enable the formation of a cable that is dry and free from fillings (Br. 17-
18).
However, Arzate, in addition to teaching underground cables, teaches
overhead cables for air installation having a mechanical support element
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(Arzate, col. 2, ll. 9-14). Arzate also discloses that the cables are classified
into two types: (1) dry core cables, which contain no filling material; and
(2) filled core cables having a filling material known as jelly, and a flooding
compound (Arzate, col. 3, ll. 6-17). Arzate’s list of basic parts constituting
the cable also lists the dry core or filled core options (col. 3, l. 58 to col. 4, l.
13). The manufacturing process describes forming the cable and, where
necessary, adds the words “[i]n case of filled cables” when describing the
additional steps required to form the filled core embodiment (col. 4, ll. 15-
63).
A reference is presumed to be enabling and therefore, once the
examiner establishes that the reference teaches each and every limitation of
the claimed invention, the burden shifts to the applicants to prove the
reference is not enabling. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir.
1990); In re Sasse, 629 F.2d 675, 681 (CCPA 1980). In fact, “[t]he
invention disclosed in a patent is presumed to be operative [and enabled]
because the patent enjoys a statutory presumption of validity.” In re Spence,
261 F.2d 244, 246 (CCPA 1958).
In the instant case, a preponderance of the evidence indicates that the
disclosure of using the cable in two modes, i.e., on the ground or in the air,
coupled with the disclosure that there are two types of cables, i.e., filled and
unfilled, put the ordinary artisan in possession of an unfilled overhead cable.
The fact that Arzate more specifically describes the additional steps of
forming the filled underground-type cable (col. 4, ll. 15-63) does not provide
convincing evidence that the alternative embodiment of forming an unfilled
cable is not enabled, especially in the instant case where one would merely
omit the steps described with the modifier “in case of filled cables.”
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With respect to claims 2-8, Appellants merely reproduce the language
of each claim and state that “these limitations [the limitations of claim 1
addressed above] together with each of the additional limitations specifically
recited in each of the dependent claims demonstrate that the presently
claimed invention does not anticipate the cited prior art [sic].” (Br. 15.)
Appellants have not advanced a sufficiently specific argument addressing
the Examiner’s findings with respect to the dependent claims that gives rise
to separate issues for review. Therefore, we sustain the rejection of claims
2-8 for the reasons presented above in discussing the rejection of claim 1.
B. Obviousness
Claim 9 requires that the self-supporting reinforcing element of claim
1 comprise “carbon steel formed by one or a plurality of twisted filament
metal elements which are united and externally extruded in a sheath
comprising polyolefins, alternately united to the main sheath of the cable,
the said filament providing flexibility to the cable when it is necessary to
increase the breaking load because of the weight of the cable itself.”
The Examiner rejects claim 9 on two grounds: (1) as obvious over the
combination of Arzate and McClean; and (2) as obvious over the
combination of Arzate, McClean, and Bartholomew.
The Examiner acknowledges that Arzate does not disclose the details
of the self-supporting reinforcing element used in the air installed cable of
that reference, but finds that McClean teaches a self-supporting reinforcing
element meeting the requirements of claim 9 as shown in Figures 1 and 2
(Ans. 7). The Examiner concludes that it would haven obvious to use
McClean’s self-supporting reinforcing element as the self-supporting
reinforcing element of Arzate to provide supportability of the cable (id.).
The Examiner further finds that carbon steel is a well-known type of steel
Appeal 2011-004620
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used in the electrical arts (id.). The Examiner provides Bartholomew as
evidence with regard to the carbon steel finding (Ans. 8).
Appellants contend that there would have been no motivation or
suggestion to combine the teachings of the references to arrive at the
claimed invention (Br. 21-29).
McClean discloses that cables that do not have sufficient tensile
strength for self-support, when overhead mounted, are hung from a steel
cable called a messenger (McClean, col. 1, ll. 13-20). McClean’s messenger
wire 3 is made up of twisted filament elements united in a sheath of, for
instance, polyolefin (polyethylene) (McClean, col. 2, ll. 25-34; Figs. 1-2).
Arzate describes an overhead (air installed) cable that is to have a
mechanical support element that can be metallic.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
A preponderance of the evidence indicates that using a steel support
element of twisted filaments and covered by polyolefin to support the weight
of an overhead cable made in accordance with the teachings of Arzate would
have been merely the combination of familiar elements according to known
methods to yield the predictable result of adequately supporting Arzate’s
overhead cable.
Moreover, Appellants have not convinced us that the use of carbon
steel, a well-known type of steel, for the steel support would have been
beyond the capabilities of the ordinary artisan.
We sustain both obviousness rejections.
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C. Rejections under 35 U.S.C. § 112, ¶¶ 1 and 2
Appellants do not dispute the basis for the rejection of claim 20 for
lack of written description and indefiniteness, but instead agree to amend the
claim to insert the word “or”, which the Examiner determined was missing
from the clause “the core being dry, free from fillings, [or] containing
swellable powder.”
Therefore, we summarily sustain the rejection of claim 20 on the
grounds of lack of written descriptive support under 35 U.S.C. § 112, ¶ 1
and indefiniteness under 35 U.S.C. § 112, ¶ 2.
We add that many other aspects of the claims appear indefinite and/or
lacking written descriptive support in the original Specification. For
instance, claim 1 requires “a plurality of electromagnetic shielding element
[sic]”, but the Specification only discloses one element that acts as an
electromagnetic shield: the aluminum wrapping tape 16 shown in original
Figure 1. Claim 1 further recites an aluminum wrapping tape; therefore, it is
unclear what element is the “plurality of electromagnetic shielding element.”
Appellants cite drawing reference numeral 23 and their Specification at page
10, lines 20-24 in the Summary of Claimed Subject Matter (Br. 2), as the
“plurality of electromagnetic shielding element,” but reference numeral 23 is
disclosed in the Specification as the wall of the aluminum wrapping tape
(Spec. 9:15-19) and depicted as the same element as the aluminum wrapping
tape in the original figures (Spec. 10:20-24; compare original Fig. 1 with
Figs 3 and 4).
Claim 1 also recites an “external thermoplastic protection cover,
comprising a metal or non-metal self-supporting reinforcing element.”
However, the Specification does not disclose the self-supporting reinforcing
element as part of an external thermoplastic protection cover; the reinforcing
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element 24 is extruded with an integral cover 25 and is, therefore, covered
by the cover 25 as shown in Figures 1-4, it is not part of the cover.
There is no antecedent basis for numerous terms such as “the external
integrated cover,” “the core of transmission pair sections,” and “the
individual arrays of pair sectors.” The word “sections” also appears to be a
typo of “sectors.”
Moreover, claim 1 does not differentiate between the “external
thermoplastic protection cover,” “the external integrated cover,” and the
“outer insulating cover” in a way that allows the ordinary artisan to
determine which cover, i.e., the integral cover 25, the cable sheath 17 (also
called the external cover 17), or insulation 19 (also called polyolefinic
material plastic layer 19), is being referenced.
It is also unclear whether claim 1 requires the core to be free from
swellable powder or allows the core to contain swellable powder in the
alternative to being dry and free from fillings.
The above is not an exhaustive list of the clarity and/or support
problems of the claims, but merely examples. Because we are affirming the
Examiner’s rejections, we do not make new grounds of rejection at this time.
However, in the event of further prosecution, the Examiner should consider
whether the claims are adequately supported and definite.

CONCLUSION
We sustain the Examiner’s rejections.

DECISION
The Examiner’s decision is affirmed.

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Application 10/898,509
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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)(1).

AFFIRMED
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