Ex Parte CULLIGANDownload PDFPatent Trial and Appeal BoardAug 22, 201814031705 (P.T.A.B. Aug. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/031,705 09/19/2013 77001 7590 ULMER & BERNE LLP c/o Diane Bell 600 Vine Street SUITE 2800 Cincinnati, OH 45202 08/24/2018 FIRST NAMED INVENTOR Sean W. CULLIGAN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ll0938.00405 7254 EXAMINER WALSHON, SCOTT R ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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 SEAN W. CULLIGAN Appeal2017-010431 Application 14/031, 7 05 Technology Center 1700 Before CATHERINE Q. TIMM, JENNIFER R. GUPTA, and SHELDON M. McGEE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner's decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). 1 In explaining our Decision, we cite to the Specification of September 19, 2013 (Spec.), Final Office Action of August 3, 2016 (Final), Appeal Brief of April 3, 2017 (Appeal Br.), Examiner's Answer of June 2, 2017 (Ans.), and Reply Brief of August 2, 2017 (Reply Br.). 2 Appellant is the applicant, General Cable Technologies Corporation, which, according to the Brief, is the real party in interest. Appeal Br. 1. Appeal2017-010431 Application 14/031,705 We AFFIRM. The claims are directed to a strippable semiconductive shield composition (see, e.g., claim 1 ), a method of making it (see, e.g., claim 11 ), and a cable including it (see, e.g., claim 18). The written description of the Specification describes the strippable semiconductive shield composition as useful in electric power cables. Spec. ,r 2. Typically, such power cables include a core of conductor surrounded by several layers that can include a polymeric insulating layer and a polymeric semiconducting shield layer thereon. Spec. ,r 3. It was known in the art to make the shield composition strippable, i.e., of an adhesion level low enough to allow its stripping from the insulating layer. Spec. ,r 4. When applied over insulation selected from polyethylene, cross- linked polyethylenes, and one of the ethylene copolymer rubbers, such as, ethylene-propylene rubber (EPR) or ethylene-propylene diene terpolymer (EPDM), it was known to formulate the shield composition with an ethylene-vinyl acetate (EVA) copolymer base resin rendered conductive with an appropriate type and amount of carbon black. Id. Appellant's composition also includes a nano-talc, i.e., a talc having a particle size of below 500 nm. Spec. ,r 12. Claim 1 is illustrative of the composition: 1. A strippable semiconductive shield composition comprising a base polymer, nano-talc, and carbon black. Appeal Br. 17 (claims appendix). The Examiner maintains the following rejections under 35 U.S.C. § 103(a): 2 Appeal2017-010431 Application 14/031,705 A. claims 1, 2, 4--8, 10-12, and 14--17 as obvious over Bums3 in view ofHe; 4 B. claims 3, 13, and 18-20 as obvious over Bums in view of He and Easter; 5 and C. claim 9 as obvious over Bums in view of He and Drummond. 6 The issue on appeal is the same for all the claims and rejections: Has Appellant identified a reversible error in the Examiner's finding that talc was a conventionally used filler in the art of semiconducting conductor shielding compositions and providing it as nano-sized filler was also known? Appellant has not identified such an error. OPINION The Examiner finds that Bums discloses a semiconductive shield composition comprising a base polymer and carbon black. Final 4. As found by the Examiner, Bums discloses that the shielding composition can contain other conventional additives. Id., citing Bums col. 3, 11. 50-64. According to Bums, "[ e ]xamples of such additives include e.g. age resistors, processing aids, stabilizers, antioxidants, crosslinking boosters and retarders, pigments, fillers, lubricants, ultraviolet stabilizers, antiblock agents and the like." Bums col. 3, 11. 56-60. Bums does not specifically list talc. The Examiner further finds that "Bums discloses talc as a conventional additive well known in the art for semiconducting conductor shielding compositions." Final 4, citing col. 5, 11. 7-15. As correctly 3 Bums, US 4,150,193, issued Apr. 17, 1979. 4 He et al., US 7,249,723 B2, issued July 31, 2007. 5 Easter, US 2004/0217329 Al, published Nov. 4, 2004. 6 Drummond, US 6,593,400 Bl, issued July 15, 2003. 3 Appeal2017-010431 Application 14/031,705 pointed out by Appellant, this portion of Bums discloses conventional additives for use in the polyethylene insulation composition, not the shielding composition. Bums col. 5, 11. 7-14. Specifically, Bum discloses: Likewise the use of polyethylene insulation compositions which if desired, may contain conventional additives such as fillers, age resistors, talc, clay, calcium carbonate and other processing aides, along with a conventional crosslinking agent is well known in the art as are conventional semi-conducting conductor shielding compositions. Bums col. 5, 11. 7-14 (emphasis added). But nonetheless, Bums discloses using conventional additives in the shielding composition as well as in the insulation composition. Bum col. 3, 11. 56-60. Appellant's main contention is that Bums fails to disclose including talc in Bum's shielding composition and that the difference in the additive lists disclosed for the shielding composition and insulating composition is evidence that talc is not considered a conventional additive in the shielding composition. Appeal Br. 12-14; Reply Br. 3-5. Appellant's consideration of the prior art to too narrow. Bums does not particularly limit the list of additives to be used in the shielding composition, but instead allows for the use of conventional additives generally and provides a list of genera including fillers and antiblock agents. Bums col. 3, 11. 51---60. Talc is generally considered a filler for use in polymers. This is evident from the prior art and Appellant's own Specification. As pointed out by the Examiner (Ans. 8), Easter lists talc as a filler in compositions containing polyethylenes and cross-linked polyethylenes. Easter ,r 31. Bum's shielding composition polymer base is ethylene polymer-based: It is a mixture of ethylene-vinyl acetate copolymer and low density, low molecular weight polyethylene homopolymers. Bums 4 Appeal2017-010431 Application 14/031,705 col. 2, 1. 40-col. 3, 1. 23. Appellant classifies talc as a filler. Spec. ,r,r 31, 38. A preponderance of the evidence indicates that those of ordinary skill in the art would have understood talc to be a filler included in Bums' column 3 list. Bums' column 3 list of additives suitable for the shielding composition also includes antiblock agents. Bums col. 3, 11. 51---60. The Examiner provided evidence that talc was known as an antiblock agent. Ans. 8, citing Drummond col. 2, 11. 30-44. Drummond discloses that talc antiblocking agent is suitable for any polyolefin including blends containing ethylene-vinyl acetate copolymers and crystalline alpha-olefin homopolymers, which would include low-density polyethylene. Drummond col. 4, 1. 59-col. 5, 1. 9. Thus, the ordinary artisan would also have understood that talc would be a useful antiblocking agent in the ethylene- vinyl acetate copolymer and low density, low molecular weight polyethylene homopolymer shielding composition of Bums. Appellant also contends that: [ o ]ne of ordinary skill in the art would not look to take an optional component of one composition in Bums, subject the optional component to dry milling based on the teachings of He, and then incorporate the optional component in its newly- milled form into a different composition of Bums to obtain the strippable semi conductive shield composition of independent claim 1. Appeal Br. 14. This argument is unpersuasive because once the ordinary artisan selected talc as a filler or antiblock agent to be used in the shielding composition, the ordinary artisan would then select the size of the talc based on what was conventional in the art. The Examiner has provided evidence 5 Appeal2017-010431 Application 14/031,705 (He) that nano-size talc was known as a high surface area talc for use in a variety of polymer products including coatings, sealing and gasketing materials, foams, extruded thermoplastic and thermoset sheets and films thermoplastic pellets, thermoplastic and thermoset molded polymer composite articles. He abs., col. 1, 1. 64---col. 2, 1. 3. Appellant has not identified a reversible error in the Examiner's finding of a suggestion to use nano-talc as the filler disclosed by Bums. CONCLUSION In summary: 1, 2, 4--8, § 103(a) Bums, He 1, 2, 4--8, 10-12, 14-- 10-12, 14-- 17 17 3, 13, 18- § 103(a) Bums, He, 3, 13, 18-20 20 Easter 9 § 103(a) Bums, He, 9 Drummond Summar 1-20 DECISION The Examiner's decision is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 6 Copy with citationCopy as parenthetical citation