Ex Parte Brown et al

Patent Trial and Appeal Board

Dec 7, 2017

13840905 (P.T.A.B. Dec. 7, 2017)

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.
13/840,905 03/15/2013 Scott M. BROWN 39795-1038US01 5825
77001 7590
ULMER & BERNE LLP
c/o Diane Bell
600 Vine Street
SUITE 2800
Cincinnati, OH 45202
EXAMINER
NGUYEN, CHAU N
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
12/11/2017 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 SCOTT M. BROWN, STEPHEN A. THWAITES, and
SRINIVAS SIRIPURAPU
Appeal 2017-003159
Application 13/840,905
Technology Center 2800
Before MICHAEL P. COLAIANNI, CHRISTOPHER L. OGDEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3—7, and 9-14.3 We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
1 In this Decision, we refer to the Specification filed March 15, 2013
(“Spec.”), the Non-Final Office Action mailed October 1, 2015 (“Non-Final
Act.”), the Appeal Brief filed May 2, 2016 (“Appeal Br.”), the Examiner’s
Answer mailed October 11, 2016 (“Ans.”), and the Reply Brief filed
December 12, 2016 (“Reply Br.”).
2 Appellant is the Applicant, General Cable Technologies Corporation,
which, according to the Appeal Brief, is the real party in interest. Appeal
Br. 14.
3 Claims 15, 17, and 18 are withdrawn from consideration as directed to a
non-elected invention. Non-Final Office Action mailed December 31, 2014.
Appeal 2017-003159
Application 13/840,905
The subject matter on appeal relates to a foamed thermoplastic
polymer separator for cabling. Spec. 11. Claim 1, reproduced from the
Claims Appendix of the Appeal Brief, is illustrative of the claims on appeal.
1. A cable separator, comprising:
a preshaped body having a longitudinal length,
wherein said preshaped body is substantially entirely formed
of a foamed thermoplastic polymer selected from the group
consisting of polyphenylenesulfide, poly(aryletherketone),
poly(etheretherketone), and blends thereof; and
wherein the preshaped body is halogen-free.
Appeal Br. 14 (Claims App.)
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1, 4—7, and 10-14 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Wiebelhaus et al. (US 2009/0236120 Al,
published September 24, 2009) (“Wiebelhaus”) in view of Nogami et al.4
(JP 2007-197568 A, published August 9, 2007) (“Nogami”); and
Rejection 2: Claims 3 and 9 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Wiebelhaus in view of Nogami and Ashida et al.
(US 2005/0255741 Al, published November 17, 2005) (“Ashida”).
DISCUSSION
We will focus on representative independent claim 1 because it
contains the argued limitations that also are present in independent claim 7.
4 We rely upon and cite to the English-language translation of the abstract
that is of record in this application.
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Appeal 2017-003159
Application 13/840,905
The Examiner finds that Wiebelhaus disclose a cable separator that
includes all of claim 1 ’s limitations except the foamed material being
polyphenylenesulfide. Non-Final Act. 3.
The Examiner finds that Nogami discloses a preshaped body (foamed
sheet 3) that has a longitudinal length, which is a substantially flat member
(a sheet), and which is formed of foamed polyphenylenesulfide. Nogami
Abstract. Based on that disclosure, the Examiner finds that one of ordinary
skill in the art would have been led to use foamed polyphenylenesulfide, an
even and excellent foamed body that can prevent deformation, as taught by
Nogami, for the separator of Wiebelhaus. Non-Final Act. 4.
Appellant argues that the Examiner has failed to provide articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. Appeal Br. 10. Specifically, Appellant argues that the
Examiner failed to demonstrate that polyphenylenesulfide as disclosed in
Nogami is common to the cabling art. Id. 9.
Appellant’s arguments are persuasive of reversible error. The
Examiner bears the initial burden of presenting a prima facie case
establishing the non-patentability of the rejected claims. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). Setting forth a prima facie case of
obviousness requires establishing that the applied prior art would have
provided one of ordinary skill in the art with an apparent reason to modify
the prior art to arrive at the claimed invention. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Nogami discloses a foamed body formed of
polyphenylenesulfide resin. Nogami Abstract. Nogami’s Abstract,
however, does not mention any use for its foamed body, let alone that its
foamed body is used as a cable separator. Id. Additionally, as Appellants
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Appeal 2017-003159
Application 13/840,905
persuasively argue (Appeal Br. 9), Nogami discloses that its method of
manufacturing, not the material for forming the foamed body, produces an
even and excellent foamed body. Nogami Abstract. Thus, on this record,
the Examiner has not identified a sufficient reason supported by any
disclosure in Nogami for why a person of ordinary skill in the art, at the time
of the invention, would have been led to form a cable separator of a foamed
polyphenylenesulfide resin. Accordingly, we do not sustain the Examiner’s
obviousness rejections of claims 1, 3—7, and 9-14.
Because the Examiner’s rejections all rely on the basic combination of
Wiebelhaus and Nogami, we do not sustain any of the stated rejections.
DECISION
For the above reasons, the rejections of claims 1, 3—7, and 9-14 are
reversed.
REVERSED
4