Ex Parte Lemelson

Board of Patent Appeals and Interferences

Jun 10, 2003

08436096 (B.P.A.I. Jun. 10, 2003)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEROME H. LEMELSON
____________
Appeal No. 2003-0545
Application No. 08/436,096
____________
HEARD: MAY 20, 2003
____________
Before GROSS, LEVY, and BLANKENSHIP, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1, 4-8, 10, 11, and 13-20.
BACKGROUND
Appellant's invention relates to a superconducting
electrical cable. An understanding of the invention can be
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Application No. 08/436,096
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1 As noted by the examiner (answer, page 3) the appendix to the brief
does not include a correct copy of the claims. We observe that the claims, as
listed in the appendix, do not include all of the amendments to the claims
made by appellant in "Amendment F" (Paper No. 25, filed September 14, 1998).
We rely upon the correct copy of the appealed claims appended to the
examiner's answer.
derived from a reading of exemplary claim 11, which is reproduced
as follows:
1. A superconducting electrical cable comprising:
a. an elongated, flexible, solid light-conducting
substrate formed of at least one strand of a uniform material
having a substantially constant cross section along its length;
b. an outer stratum of said substrate being formed of
electrically insulating material;
c. a first layer of superconducting material completely
surrounding said substrate immediately outside said outer stratum
and integrally secured to said substrate;
d. a second layer of insulating material immediately
outside, completely surrounding, and secured to said first layer;
and
e. said substrate supporting said superconducting material
and providing major tensile strength for said superconducting
electrical cable.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Middleton et al. (Middleton) 1,698,704 Jan. 8, 1929
Snowden et al. (Snowden) 3,612,742 Oct. 12, 1971
Sakurai JP 56-4101 Jan. 17, 1981
(Japanese Published Patent Application)
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Jin et al. “High Tc superconductors-composite wire
fabrication” Appl. Phys. Lett. vol. 51, No. 3 (July 20, 1987) pp.
203-204.
Claims 1, 4-8, and 15-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Snowden in view of Sakurai.
Claims 10, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Snowden in view of Sakurai and
further in view of Middleton.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Snowden in view of Sakurai and further in view
of Jin.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we make reference to the examiner's answer (Paper No. 31, mailed
August 29, 2000) for the examiner's complete reasoning in support
of the rejections, and to appellant's brief (Paper No. 30, filed
May 16, 2000) and reply brief (Paper No. 32, filed November 2,
2000) for appellant's arguments thereagainst. Only those
arguments actually made by appellant have been considered in this
decision. Arguments which appellant could have made but chose
not to make in the brief have not been considered. See 37 CFR
1.192(a).
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Application No. 08/436,096
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OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant's arguments set forth in the briefs along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the invention as set forth in the claims.
Accordingly, we reverse.
We begin with the rejection of claims 1, 4-8, and 15-20
under 35 U.S.C. § 103(a) as being unpatentable over Snowden in
view of Sakurai.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
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examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
293, 227 USPQ 657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden
then shifts to the applicant to overcome the prima facie case
with argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole. See id.; In re Hedges, 783
F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
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1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976). The examiner's position (answer, page 4) is that
Snowden discloses all of the features claimed except for the
substrate being a light-conducting substrate. To overcome this
deficiency of Snowden, the examiner turns to Sakurai for a
teaching of the use of an optical fiber with an electrical
conductor to transmit both electrical energy and optical signals.
In the examiner's opinion, it would have been obvious to modify
Snowden's line by adopting the teaching of Sakurai to transmit
both electrical energy and optical signals.
Appellant asserts (brief, page 3) that the examiner fails to
provide motivation to combine the teachings of a superconducting
line of Snowden with the simple electrical cable of Sakurai. It
is further argued (brief, pages 4 and 5) that the references
teach away from the combination because Snowden teaches that the
superconducting materials need to be surrounded by materials
having a high degree of thermal and electrical conductivity with
an electrically conductive core, whereas appellant's invention
requires that the core has an outer stratum that is electrically
insulative.
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2 We rely upon the translation provided by the PTO. A copy of the
translation accompanies the decision.
We find that in Snowden, core layer 70 has high conductivity
as well as high thermal conductivity (col.4, lines 15-20). As
shown in figure 5, superconducting layer 68 is formed of layers
80 of superconducting material, interspaced with layers 82 which
"may be a material of normal conductive or insulative properties"
(col. 4, lines 60-67). Although the innermost layer 82 of
superconducting layer 66 abuts core layer 70, layer 82 is formed
on the outside of layer 70 and is not formed as an electrically
insulating material on an outer stratum of elongated wire-like
layer 70, as required by claim 1. In addition, we find that
Sakurai2 is directed to a fiber optic cable that is comprised of
an optical fiber 1 surrounded by a conductive layer 7, which in
turn is encased in plastic jacket 8 (figure 2 and translation,
page 2). From the disclosure of Snowden relating to a
superconductive wire, and the teaching of Sakurai relating to a
nonsuperconducting cable, we find no teaching or suggestion that
would have motivated an artisan to combine the teachings of the
two references in order to provide Snowden with a light
conducting inner layer or core, as advanced by the examiner. In
addition, because Snowden teaches that the inner core be a
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conducting layer, we find no suggestion to replace the conducting
layer of Snowden with a light conducting layer which is
inherently an insulator. We are not persuaded by the examiner's
argument (answer, page 5) that the motivation to combine Snowden
and Sakurai comes from the fact that both references deal with an
electric cable. In view of Snowden's teaching that the inner
core should be made of a conductor with high thermal
conductivity, we find no suggestion, and none has been provided
by the examiner, that would have taught or suggested to an
artisan that the conducting core of Snowden be replaced by a
light-conducting cable, other than from the teachings of
appellant's disclosure. The Federal Circuit has stated that
"[the] mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
"Obviousness may not be established using hindsight or in view of
the teachings or suggestions of the inventor." Para-Ordnance
Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239
(Fed. Cir. 1995), citing W. L. Gore & Assocs., v. Garlock, Inc.,
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721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13 (Fed. Cir. 1983).
From all of the above, we find that the examiner has failed to
establish a prima facie case of obviousness of claims 1, 4-8, and
15-20. Accordingly, the rejection of claims 1, 4-8, and 15-20
under 35 U.S.C. § 103(a) is reversed.
We turn next to the rejection of claims 10, 13, and 14 under
35 U.S.C. § 103(a) as unpatentable over Snowden in view of
Sakurai and further in view of Middleton. We reverse the
rejection of claims 10, 13, and 14 because Middleton does not
make up for the deficiencies of the basic combination of Snowden
and Sakurai.
We turn next to the rejection of claim 11 under 35 U.S.C.
§ 103(a) as unpatentable over Snowden in view of Sakurai and
further in view of Jin. We reverse the rejection of claim 11 as
Jin does not make up for the basic deficiencies of Snowden and
Sakurai. Accordingly, the rejection of claim 11 under 35 U.S.C.
§ 103(a) is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 4-8, 10, 11, and 13-20 under 35 U.S.C. § 103 is reversed.
REVERSED
ANITA PELLMAN GROSS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
SSL:pgg
Louis J. Hoffman
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