Ex Parte Magner et al

Patent Trial and Appeal Board

Aug 29, 2016

13081922 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/081,922 04/07/2011
26812 7590 08/31/2016
HA YES SOLOWAY P.C.
175 CANAL STREET
MANCHESTER, NH 03101
FIRST NAMED INVENTOR
Scott R. Magner
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.
SURP 10.08 4973
EXAMINER
NGUYEN, CHAU N
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
TSULLIV AN@HA YES-SOLOWAY.COM
jhrycuna@hayes-soloway.com
dbrancheau@hayes-soloway.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT R. MAGNER, ROBERT KONNIK, DUSTIN R. DULAC,
CLIFFORD W. WESTWOOD, and DANIEL D. MASAKOWSKI
Appeal2015-002518
Application 13/081,922
Technology Center 2800
Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
KAMRAN JIVANI, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1, 3 through 12, and 20 through 26. We affirm.
INVENTION
Appellants' invention relates to a down-hole cable which as has an
insulated conductor bonded to an armor shell by a liquid bonding agent. See
Abstract and Specification pg. 4. Claim 1 is illustrative of the invention and
reproduced below:
Appeal 2015-002518
Application 13/081,922
1. A down-hole cable comprising:
at least one insulated conductor fully insulated by an
insulation coating;
a metallic armor shell positioned exterior to the
insulating coating and fully surrounding the insulated
conductor;
a gas pocket interior of the metallic armor shell and
exterior of the at least one insulated conductor, wherein the gas
pocket is a pneumatic cavity; and
a liquid bonding material applied between at least a
portion of an exterior surface of the insulation coating and at
least a portion of an interior surface of the armor shell, wherein
the liquid bonding material creates a bond between the
insulation coating and the armor shell.
REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 3, 5, 6, 12, and 21 under 35
U.S.C. § 102(b) as anticipated by Moe (5,959,245; Sep. 28, 1999). Final
Rej. 3--4. 1
The Examiner has rejected claims 1, 4, 6, 9 through 12, 20 through 23,
and 26 under 35 U.S.C. § 103(a) as obvious over Head (5,435,351; Jul. 25,
1995) and Martin (2002/0164485 Al; Nov. 7, 2002). Final Rej. 5-7.
The Examiner has rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
obvious over Head, Martin and Khalil (5,271,081; Dec. 14, 1993). Final
Rej. 7-8.
1 Throughout this Decision we refer to the Appeal Brief (filed September 2,
2014) ("Appeal Br."), Reply Brief (filed January 6, 2015) ("Reply Br."), the
Final Office Action mailed April 7, 2014 ("Final Act."), and the Examiner's
Answer (mailed November 06, 2014) ("Answer").
2
Appeal 2015-002518
Application 13/081,922
The Examiner has rejected claims 24 and 25 under 35 U.S.C. § 103(a)
as obvious over Moe and Esker (5,949,018; Sep. 7, 1999). Final Rej. 8-9.
ANALYSIS
Rejection under 35 U.S.C. § 102(b)
Appellants argue the anticipation rejection of independent claim 1 is
erroneous as the Examiner's interpretation of the claim 1 term "pneumatic
cavity" is overly broad and that when properly construed Moe does not teach
the claimed pneumatic cavity. Appeal Br. 15-24. The issue presented by
these arguments is whether the Examiner erred in finding Moe describes a
cable with a pneumatic cavity, as recited in independent claim 1.
The Examiner, in response to Appellants' arguments, finds that the
broadest reasonable interpretation of pneumatic cavity is a cavity relating to
air or other gases, and not an air or gas under pressure as argued by
Appellants. Answer 4. Nonetheless, applying the Appellants' proffered
interpretation (gas under pressure) the Examiner finds that Moe describes
the claimed cavity. Answer 4 (Citing Fig 4)). We have reviewed the cited
passages of Moe and agree with the Examiner. We are not persuaded by
Appellants' argument that Moe fails to describe the cavity (the gap between
layer 16 and the outer sheath) formed during the manufacturing process
would not be capable of holding pressure. The claim does not require the
cavity to hold pressure (nor does Appellants' specification). Rather the
broadest reasonable interpretation of the claim language requires only that
the air in the cavity is under pressure, which it must be as Moe's device
transitions from the shape shown in Fig. 6 to Fig. 7 (i.e., the air is under
pressure as the cavity is collapsed). Thus, we are not persuaded of error in
3
Appeal 2015-002518
Application 13/081,922
the Examiner's anticipation rejection and, we sustain the Examiner's
anticipation rejection of claims 1, 3, 5, 6, 12, and 21.
Rejection under 35 U.S.C. § 103(a)
Appellants argue the obviousness rejection of independent claim 1 is
erroneous because the Examiner's interpretation of the claim 1 term
"pneumatic cavity" is overly broad, and that, when properly construed, the
combination of Head and Martin do not teach the claimed pneumatic cavity.
Appeal Br. 15-24. The issue presented by these arguments is whether the
Examiner erred in finding the combination of Head and Martin teaches a
cable with a pneumatic cavity, as recited in independent claim 1.
The Examiner, in response to Appellants' arguments, applies the
Appellants' proffered interpretation (gas under pressure) finds that Head
teaches the claimed cavity. Answer 5 (Citing Fig 17). We have reviewed
the teachings of Head and agree with the Examiner. We further note that the
coiled tubing (item 22) of Head is disclosed as being used for other purposes
such as a conducting fluids down the well head, clearly the act of pumping
fluids in the conduit will put pressure on the air it is displacing and produce
a cavity of pressurized air (a pneumatic cavity). Thus, we are not persuaded
of error in the Examiner's obviousness rejection, and we sustain the
Examiner's obviousness rejection of claims 1, 4, 6, 9 through 12, 20 through
23, and 26.
Appellants have not presented separate arguments directed to the
Examiner's obviousness rejection of claims 7, 8, 24, and 25. Accordingly,
we sustain these rejections for the same reasons as discussed with respect to
claim 1.
4
Appeal 2015-002518
Application 13/081,922
DECISION
We sustain the Examiner's rejections of claims 1, 3 through 12, and
20 through 26 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R § 1.136(a)(l)(iv).
AFFIRMED
5