Ex Parte Magner

Board of Patent Appeals and Interferences

Oct 29, 2008

11091259 (B.P.A.I. Oct. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT MAGNER
____________

Appeal 2008-3936
Application 11/091,259
Technology Center 2800
____________

Decided: October 29, 2008
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and ROMULO H.
DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
all pending claims 1-8. (Appeal Brief filed August 4, 2006, hereinafter
“App. Br.”; Final Office Action entered June 30, 2006.) We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2008-3936
Application 11/091,259

2
Appellant’s invention relates to a cable including, inter alia, a
foamable polymer layer. (Spec. 3, ll. 2-10).
Representative claim 1, the sole independent claim, reads as follows:
1. A cable, comprising:
a conductor;
an insulation layer wrapped substantially about the
conductor;
a substantially pre-foam foamable polymer layer applied
substantially about the insulation layer, wherein a cross-section
of the substantially pre-foam foamable polymer layer has a
substantially uneven outer surface; and
an armor shell applied exterior to the substantially pre-
foam foamable polymer layer, wherein the armor shell is
substantially concentric to the conductor.
The prior art references relied upon by the Examiner to reject the
claims on appeal are:
Perelman 4,368,350 Jan. 11, 1983
Ziemek 5,831,215 Nov. 3, 1998
Gebs 6,815,617 B1 Nov. 9, 2004

There are five grounds of rejections1 before us for review: (1) claims
1 and 7 are rejected under 35 U.S.C. § 102(b) as anticipated by Ziemek; (2)
claims 1 and 6 are rejected under 35 U.S.C. § 102(b) as anticipated by
Perelman; (3) claims 1 and 3 are rejected under 35 U.S.C. § 102(e) as
anticipated by Gebs; (4) claims 2, 4, and 5 are rejected under 35 U.S.C. §
103(a) as unpatentable over Gebs; and (5) claim 8 is rejected under 35
U.S.C. § 103(a) as unpatentable over Ziemek.

1 In the Examiner’s Answer, the Examiner states that the rejection under 35
U.S.C. § 112, ¶1 is withdrawn. (Ans. 9).
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Application 11/091,259

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Appellant’s principal contention in this appeal is that the
“substantially pre-foam” limitation describes a condition of the foamable
polymer and that the applied prior art of record does not teach the claimed
subject matter including a foamable polymer in a “substantially pre-foam”
state. (Claim 1, App. Br. 12, ll. 13-15; 13, ll. 4-8; 16, ll. 15-17; 20, ll. 6-9).
In response, the Examiner asserts:
The limitations of the foamable polymer layer being a pre-
foam layer when located within the armor shell (then the
foamable polymer will be foamed thereafter), are just method
limitations, and the patentability of a product claim is
determined by the novelty and nonobviousness of the claimed
product itself without consideration of the process for making
it which is recited in the claim. (Ans. 8, ll. 9-13).

ISSUE
Thus, the issue arising from the contentions of the Examiner and
Appellant is whether the Examiner erred in dismissing the claim limitations
“a substantially pre-foam foamable polymer layer applied substantially
about the insulation layer” and “an armor shell applied exterior to the
substantially pre-foam foamable polymer layer” as “just method limitations”
(Ans. 8).
For the reasons expressed below, we hold that the Examiner
reversibly erred in dismissing the argued limitations as “just method
limitations.”

FINDINGS OF FACT
1. Consistent with the ordinary meaning of “pre-foam,” the Specification
describes a “pre-foam” polymer as the physical state of a foamable
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Application 11/091,259

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polymer before it is made to foam. (Spec. 5, ll. 13-20; 6, ll. 1-11;
Figs. 2, 3).
2. Appellant’s Figs. 2 and 3 are reproduced below:

Figs. 2 and 3 depict a foamable polymer cable 110 having a conductor
112, insulation layer 114, foamable polymer layer 116 with uneven
outer surface 117, pneumatic voids 118, and armor shell 120; Fig. 2
shows the pre-foam condition of the foamable polymer layer 116 and
Fig. 3 shows the foamable polymer cable after foaming the foamable
polymer layer 116. (Spec. 5, ll. 1-11, 15-17; 6, ll. 9-11).
3. Ziemek discloses “a high frequency coaxial cable with an internal
conductor, an insulating layer of foamed plastic which concentrically
surrounds the internal conductor.” (Emphasis added; col. 1, ll. 6-9).
4. Ziemek describes the manufacture of the prior art coaxial cable to
include extruding an insulating layer of plastic foam over a conductor
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Application 11/091,259

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and then surrounding the foam with a tubular external conductor.
(Col. 4, ll. 42-62).
5. Perelman discloses “[a] process for manufacturing a jacketed
electrical conductor” where an electrical conductor is fed through an
extruder and a foamable polymer layer is formed around a conductor
such “that the dielectric [foamable polymer] layer formed around the
conductor . . . foams after it exits from the extruder.” (Col. 5, ll. 9-
28).
6. Perelman describes applying an outer conductor tube around the
foamed polymer after the foamed polymer is cooled. (Col. 5, ll. 46-
68).
7. Gebs’ Fig. 5 is reproduced below

Fig. 5 depicts a cable 20 having a conductor 201 surrounded by an
insulator 203 and inner shield 205, which are axially surrounded by a
polymeric inner jacket 207 having serrations 401, which in turn is
encompassed by an outer shield 209. (Col. 9, l. 67 through 10, l. 25).
8. Gebs does not disclose a pre-foam foamable polymer layer applied
about an inner insulation layer and underlying an armor shell.

Appeal 2008-3936
Application 11/091,259

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PRINCIPLES OF LAW
“During examination, ‘claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

ANALYSIS
Claim Interpretation
During examination, we give claim terms their broadest reasonable
interpretation consistent with the Specification. In re Am. Acad. Sci. Tech
Ctr., 367 F.3d at 1364. Here, Appellant’s Specification describes the
foamable polymer as a “pre-foam” that has not yet been made to foam. (FF
1, 2). Therefore, as used in the context of Appellant’s invention, the term
“pre-foam” would have been reasonably understood by one of ordinary skill
in the art as the state or condition of a foamable polymer before it is foamed.
This condition of the polymer is explicitly recited in the claims and must be
considered in determining whether the claimed subject matter is novel and
nonobvious in view of the prior art.

Anticipation Rejections
Rejection of Claims 1 and 7 under 35 U.S.C. § 102(b) Over Ziemek
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Appellant argues that Ziemek “does not suggest the insulating
polymer (referred to by the Examiner as the foamable polymer) is in a
substantially pre-foam state.” (App. Br. 12, ll. 13-15).
We agree with Appellant. Ziemek discloses manufacturing a coaxial
cable in which a foamed plastic is extruded over an internal conductor and
then the foamed plastic is surrounded with a tubular external conductor. (FF
3, 4). Thus, the prior art discloses the foamable polymer to be in a foamed
condition when the prior art cable is assembled with its tubular external
conductor (i.e., armor shell). (FF 4). Therefore, the claimed invention
distinguishes over the prior art cable by requiring a pre-foam foamable
polymer layer with “an armor shell applied exterior to the substantially pre-
foam foamable polymer layer.” (Claim 1).
The Examiner has not identified any evidence or provided any
persuasive reasoning to show that Ziemek explicitly or inherently discloses a
“pre-foam” foamable polymer layer within an exterior shell. (Ans. 3-9).
Contrary to the Examiner’s belief that the claim limitations in question are
“just method limitations” (Ans. 8), they define structure that has not been
addressed. Accordingly, the Examiner erred in rejecting independent claim
1 and its dependent claim 7 in view of Ziemek.

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Rejection of Claims 1 and 6 Under 35 U.S.C. § 102(b) over Perelman.
Appellant argues that Perelman’s disclosed manufacture of an
electrical conductor “does not suggest the insulating polymer (referred to by
the Examiner as the foamable polymer) is in a substantially pre-foam state
with an armor shell applied.” (App. Br. 16, ll. 15-17).
For the same or similar reasons as in the rejection based on Ziemek,
we also agree with Appellant here. Perelman describes “a process for
manufacturing a jacketed electrical conductor” where an electrical conductor
is fed through an extruder and a foamable polymer layer is formed around
the conductor such “that the dielectric [foamable polymer] layer formed
around the conductor . . . foams after it exits from the extruder.” (FF 5).
Perelman then discloses an outer conductor tube subsequently applied
around the foamed polymer. (FF 6).
The Examiner has not identified any evidence or provided any
reasoning to show that Perelman explicitly or implicitly discloses a pre-foam
foamable polymer layer as claimed. Contrary to the Examiner’s belief, the
claim limitations in question are not “just method limitations” (Ans. 8).
Accordingly, the Examiner erred in rejecting independent claim 1 and its
dependent claim 6 in view of Perelman.

Rejection of Claims 1 and 3 under 35 U.S.C. § 102(e) over Gebs.
The Examiner alleges that Gebs discloses an inner jacket layer made
of materials “such as polyethylene, polypropylene or fluorinated ethylene-
propylene (FEP), and the person of ordinary skill in the art with common
knowledge would understand that such materials are foamable materials.”
(Ans. 8, l. 17 through 9, l. 3).
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Appellant argues that “the inner jacket 207 of Gebs does not need to
be foamable and no suggestion is made in Gebs of leaving the inner jacket
207 in a pre-foam state while the outer shield is applied.” (App. Br. 20, ll. 7-
9). Furthermore, Appellant contends that “no reference is made to any
portion of the disclosure of Gebs et al, beyond identifying a list of possible
materials that can be made foamable, if desired, in the art.” (Reply Br. 8, ll.
9-10). Again, we agree with Appellant.
Gebs discloses a cable having a polymeric inner jacket surrounding an
insulator. (FF 7). The inner jacket may be extruded onto underlying
components as the underlying components are fed through the annulus of an
extruder die. (Col. 10, ll. 50-54, 60-64). Significantly, Gebs does not
disclose the polymer layer is a foamable polymer in a “pre-foam” state or
condition underlying an armor shell. (FF 8).
The Examiner does not direct us to any persuasive evidence or
reasoning that Gebs explicitly or inherently discloses the claim limitation of
a pre-foam foamable polymer layer with an exterior armor shell. (Ans. 3-9).
The Examiner’s contention that Gebs’ inner jacket is made of material that
one of ordinary skill in the art would have understood as foamable is not
sufficient evidence to show that the polymer is necessarily in a pre-foam
condition with an exterior armor shell. Even if foamable, Gebs does not
disclose whether the polymer is applied to the inner components in a foamed
or pre-foamed state. Thus, Gebs does not explicitly or inherently disclose
the claimed invention. Accordingly, the Examiner’s anticipatory rejection
must fail due to lack of evidence that the claimed limitation is explicitly or
inherently disclosed in the prior art.
Appeal 2008-3936
Application 11/091,259

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Obviousness Rejections
Rejection of Claims 2, 4, and 5 under 35 U.S.C. § 103(a) in View of Gebs
The Examiner contends that the additional subject matter recited in
dependent claims 2, 4, and 5 would have been obvious to one of ordinary
skill in the art in discovering the optimum or workable ranges of a foamable
polymer. (Ans. 7, ll. 6-17). Here, the Examiner has not directed us to any
evidence or reasoning that the prior art teaches or suggests a “pre-foam”
foamable polymer. Therefore, for the reasons discussed above, the
Examiner erred in determining dependent claims 2, 4, and 5 obvious in view
of Gebs.

Rejection of Claim 8 under 35 U.S.C. § 103(a) in View of Ziemek
The Examiner contends that the additional subject matter recited in
dependent claim 8 would have been obvious to one of ordinary skill in the
art in discovering the optimum or workable ranges of the armor shell. (Ans.
7, l. 18 through 8, l. 5). Here also, the Examiner has not directed us to any
evidence or reasoning that the prior art teaches or suggests a “pre-foam”
foamable polymer, as required by the claim. Therefore, for the reasons
discussed above, the Examiner erred in determining dependent claim 8
obvious in view of Ziemek.

CONCLUSION OF LAW
On this appeal record, Appellant has shown that the Examiner erred in
finding that claims 1, 3, 6, and 7 are anticipated over the applied prior art.
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Appellant also has shown that the Examiner erred in determining
claims 2, 4, 5, and 8 would have been obvious to one of ordinary skill in the
art over the applied prior art.
ORDER
The decision of the Examiner rejecting claims 1-8 is reversed.
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)(iv).
REVERSED

ack

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