Ex Parte CULLIGAN

Patent Trials and Appeals Board

Aug 22, 2018

14031705 - (D) (P.T.A.B. Aug. 22, 2018)

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.
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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
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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
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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