Ex Parte Mahapatra

Patent Trial and Appeal Board

Dec 11, 2014

12398197 (P.T.A.B. Dec. 11, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/398,197 03/05/2009 AMARESH MAHAPATRA 0338/US 9625
30333 7590 12/12/2014
FRANCIS J. CAUFIELD
18 INVERNESS ROAD
ARLINGTON, MA 02476
EXAMINER
GRAY, JILL M
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
12/12/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMARESH MAHAPATRA
____________

Appeal 2013-003020
Application 12/398,197
Technology Center 1700
____________

Before PETER F. KRATZ, WHITNEY N. WILSON and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The claimed subject matter relates to an electrically conducting wire
structure comprising a wire and an insulation coating comprising a blend of
a liquid crystal polymer and thermoplastic polymer. App. Br. 23 (claim 1).

1 According to Appellant, the Real Party in Interest is Linden Photonics, Inc.
App. Br. 3.
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The wire structure is intended to withstand harsh environments, such as high
temperatures, chemicals, salt-spray, and fire. Spec. ¶ 9. Claims 1 and 3 are
representative of the subject matter on appeal and are set forth below (with
disputed limitations in bold):

1. An electrically conducting wire structure comprising:
at least one elongated electrically conducting wire; and
an insulation coating around said electrically conducting
wire, said insulation coating comprising a blend of a liquid
crystal polymer and a thermoplastic, the thermoplastic having
properties so that said insulation coating has a strain break at
least 5% larger than said liquid crystal polymer would have
acting alone, the breaking strain of said insulation coating
being not less than about 30 per cent.

3. An electrically conducting wire structure comprising:
at least one elongated electrically conducting wire; and
an insulation coating around said electrically conducting
wire, said insulation coating comprising a blend of a liquid
crystal polymer and a thermoplastic, the thermoplastic having
properties so that said insulation coating has a strain break at
least 5% larger than said liquid crystal polymer would have
acting alone and where said blended coating includes a
compatibilizer so that said blended coating is a reactive
blend.
App. Br. 23 (Claims App’x).
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Araki et al.
(hereinafter “Araki”)

US 5,670,593 Sept. 23, 1997
Joe Kurek & Nick Kirincich, Aircraft Wire Degradation Study (Raytheon,
Nov. 6, 2002) (hereinafter, “Kurek”)

THE REJECTIONS
1. Claims 1, 2 and 7 are rejected under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over, Araki. Ans. 2.
2. Claims 3 and 4 are rejected under 35 U.S.C. § 102(b) as anticipated
by Araki. Ans. 5, 7.2
3. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Araki, as applied to claims 1–4 and 7, in view of Kurek.
Ans. 7.

ANALYSIS
Claims 1, 2, and 7
In addressing the first ground of rejection, Appellant argues claims 1,
2, and 7 as a group, relying on limitations in independent claim 1 and
presenting no argument for separate patentability of dependent claims 2 and
7. App. Br. 15–19. Therefore, claims 1, 2, and 7 stand or fall together, and

2 Although claim 4 is not included in the Examiner’s statement of rejection
set forth in the Answer, Ans. 5, claim 4 is included in the statement of the
rejection set forth in the Final Rejection and is addressed in the body of the
rejection, Ans. at 7. Appellant acknowledges that claims 3 and 4 are
rejected under 35 U.S.C. § 102(b) as anticipated by Araki. App. Br. 10.
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we need not address any of them separately from claim 1, which we select as
representative. 37 C.F.R. § 41.37(c)(iv).
Regarding claim 1, the Examiner finds that Araki discloses an
electrically conducting wire and an insulation coating comprising a blend of
a liquid crystal polymer and a thermoplastic. Ans. 2–3, 8–9 (citing Araki
37:20–30, 39:56–60, 41:44–65, 47:28–32, 49:53, 49:64–50:22, 50:17–22).
The Examiner further finds that Araki discloses fluorinated ethylene
propylene (FEP), perfluoroalkoxyethylene (PFA), and ethylene
tetrafluoroethylene (ETFE), which are the same thermoplastic
fluoropolymers disclosed in Appellant’s Specification. Ans. 3, 12 (citing
Araki 47:36–55, Examples 61–64 and Spec. ¶ 30). With respect to the
limitations of claim 1 relating to breaking strain, the Examiner finds that
Araki discloses a blend of the same polymer components as disclosed and
claimed by Appellant and that Araki discloses a range of proportions for
those components that necessarily embraces a range that results in the
claimed properties. Ans. 3–4 (citing Araki 37:25–30). Based on these
findings, the Examiner concludes that the compositions disclosed in Araki
necessarily have the claimed properties. Id. at 4.
Appellant concedes that Araki describes blends of a liquid crystal
polymer (“LCP”) and a thermoplastic and that one of Araki’s disclosed uses
for such blends is for coating an electrically conducting wire. App. Br. 15.
Appellant argues, however, that Araki does not disclose the properties of a
LCP/thermoplastic blend that are needed to meet industry standards for a
wire harness, including a breaking strain of not less than 30%. Id. at 15, 17,
19. Appellant further argues that only limited parts of Araki’s disclosure are
relevant, that Araki discloses data from which a breaking strain of not
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greater than 6% can be calculated, and that Araki’s broad disclosure is not
sufficient to anticipate, in the absence of a specific disclosed example that
meets the limitations of Appellant’s claims. Id. at 16–19.
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that a preponderance of evidence supports
the Examiner’s conclusion that the subject matter of Appellant’s claims is
anticipated by and/or unpatentable over Araki. We sustain the rejection of
claims 1, 2, and 7 based on the Examiner’s findings of fact, conclusions of
law, and rebuttals to Appellant’s arguments, as expressed in the Answer.
We add the following for emphasis.
We are not persuaded of Examiner error based on Appellant’s
contention that only limited portions of Araki are relevant and that no
specific example meets the limitations of Appellant’s claims. The Examiner
identifies particular teachings in Araki that are relied upon to reject
Appellant’s claims. Ans. 2–3, 8–9 (citing Araki, 37:20–30, 39:56–60,
41:44–65, 47:28–32, 49:53, 49:64–50:22, 50:17–22). The Examiner is
correct in noting that Araki’s teachings are not limited to what is disclosed in
the examples. Id. at 13. In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All
the disclosures in a reference must be evaluated, including nonpreferred
embodiments, . . . and a reference is not limited to the disclosure of specific
working examples.”) (citations omitted).
Regarding the properties of a LCP/thermoplastic blend needed to meet
industry standards for a wire harness, we note that the only claimed property
is breaking strain. Properties of the blend not recited in the claims are not
relevant to show lack of anticipation. In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“appellant’s arguments fail . . . because . . . they are not based
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on limitations appearing in the claims”). Aside from breaking strain,
Appellants do not identify any other properties of the claimed wire structure
that could be relied upon to support patentability.
Regarding the claimed breaking strain of not less than 30%, the
Examiner establishes that it reasonably appears from the teachings of Araki
that the claimed insulation coating and the insulation coating taught by Araki
are identical or substantially identical, and thus one of ordinary level of skill
in the art would reasonably expect the claimed and prior art coatings to have
the same or similar breaking strain. See, e.g., In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not.”); In re Best, 562 F.2d 1252, 1254–
56 (CCPA 1977). The burden thus shifts to Appellant to patentably
distinguish the claimed insulation coating from the insulation coating taught
by Araki. See, e.g., Spada, 911 F.2d at 708; Best, 562 F.2d at 1255 (“Where,
as here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product.”). We are not persuaded that Appellant carries this burden.
Appellant argues that the properties of the polymer blend depend not
only on its components, but also on their proportions. Reply Br. 2. As
noted by the Examiner, however, Appellant’s Specification does not disclose
what proportions of the claimed components result in a breaking strain of
not less than 30%. Ans. 4, 9–10, 13. Appellant identifies no error in the
Examiner’s finding that Araki discloses a broad range of proportions—
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namely, a blend containing 1 to 99% by weight of a liquid crystal polymer
and 0.1 to 99% by weight of a thermoplastic—including proportions which
necessarily embraces Appellant’s contemplated amounts. Id. at 4, 9–10
(citing Araki 37:25–30; see also Araki 39:34–40:13).
Appellant contends that Araki discloses data from which a breaking
strain of not greater than 6% can be calculated. App. Br. 18 (presenting
calculated breaking strain for examples in Araki Table 14 and asserting that
data in Tables 11, 12, 13, 15, and 16 are similar). We are not persuaded of
Examiner error based on Appellant’s contention, which addresses only some
of Araki’s disclosed examples and does not address Araki’s disclosure of
polymer blends containing 1 to 99% by weight of a liquid crystal polymer
and 0.1 to 99% by weight of a thermoplastic fluoropolymer, such as FEP,
PFA or ETFE, as cited by the Examiner. Ans. 2–4, 9–10, 12–13. For
example, Appellant concedes that Araki’s Examples 52 to 68 and 70 contain
liquid crystal polymer and a thermoplastic fluorine-containing polymer with
a functional group, App. Br. 16–17, i.e., components falling within the scope
of Appellant’s claim 1. Only a subset of these examples is addressed by
Appellant’s calculations of breaking strain. Appellant does not address
Examples 65 to 68, which Araki discloses have an elongation (breaking
strain) ranging from 210% to 530%, Araki, Fig. 6, cols. 87–88 (Table 18),
well above Appellant’s claimed minimum of 30%.3 We are therefore not

3 Appellant does not argue that elongation, as disclosed in Araki Table 18,
differs from breaking strain, as recited in claim 1, and the evidence supports
that they are the same parameter. Compare Araki Fig. 6, 88:18-20 (Fig. 6
shows stress vs. elongation (%) curves, also referred to as stress-strain
curves, for Examples 66-68 and Comp. Example 22 in Table 18) with
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persuaded that Appellant’s calculations of breaking strain for a subset of
Araki’s disclosed examples is sufficient to carry the burden to show that
Appellant’s claimed insulation coating is different from all the insulation
coatings disclosed by Araki.
Furthermore, Appellant does not persuade us that the claimed
minimum breaking strain of 30% would not have been obvious to one of
ordinary skill in the art based upon the teachings of Araki. Araki teaches a
broad range of breaking strain, from values not exceeding 6%, as calculated
by Appellant based on Tables 11–16 of Araki, App. Br. 18, to values ranging
from 210 to 530%, as disclosed in Table 18 of Araki. Araki, Fig. 6, cols.
87–88 (Table 18). According to Appellants’ Specification, the claimed
minimum breaking strain of 30% is based on a published industry
performance requirement. Spec. ¶¶ 19–22 (citing SAE AS4372 entitled
“Performance Requirements for Wire, Electric, Insulated Copper or Copper
Alloy”). Appellant does not persuade us that it would not have been obvious
to one of ordinary skill in the art to select a breaking strain of 30% or greater
in order to obtain the level of breaking strain needed for the wire coating
application disclosed by Araki. Araki 50:21, 50:58.
We are therefore not persuaded of reversible error in the Examiner’s
findings and conclusion that the wire structure of Appellant’s claim 1 is
anticipated by and/or would have been obvious in view of Araki.

Specification, Fig. 3 (a typical stress vs. strain curve for an LCP tube), ¶ 17
(supporting that breaking strain is derived from stress vs. strain curve).
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Claims 3 and 4
In addressing the second ground of rejection, Appellant argues claims
3 and 4 as a group, relying on limitations in independent claim 3 and
presenting no argument for separate patentability of claim 4. App. Br. 19–
21. Therefore, claims 3 and 4 stand or fall together, and we need not address
claim 4 separately from claim 3, which we select as representative.
37 C.F.R. § 41.37(c)(iv).
Regarding claim 3, the Examiner finds that Araki discloses a wire
insulation coating comprising three components: 1) a fluorine-containing
polymer with functional groups, which can be a compatibilizer; 2) a
conventional fluorine-containing polymer (a thermoplastic); and 3) an
aromatic polyester (a liquid crystal polymer). Ans. 5–6, 14 (citing Araki
41:44–65, 47:28–32). The Examiner further finds that Araki discloses that
the conventional fluorine-containing polymer can be fluorinated ethylene
propylene (FEP) or ethylene tetrafluoroethylene (ETFE), Ans. 6 (citing
Araki, 47:36–55), which the Specification discloses as thermoplastic
fluoropolymers. See Spec. ¶ 30. With respect to the breaking strain
limitation of claim 3, the Examiner finds that Araki discloses a blend of a
liquid crystal polymer and the same type of thermoplastic that Appellant
discloses as providing increased breaking strain. Ans. 6. Based on these
findings, the Examiner concludes that claim 3 is prima facie anticipated. Id.
at 6–7.
Appellant argues that Araki teaches away from Claim 3. App. Br. 20.
Appellant’s argument is not persuasive because “whether a reference
‘teaches away’ from [an] invention is inapplicable to an anticipation
analysis.” Clearvalue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340,
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1344 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp.,
150 F. 3d 1354, 1361 (Fed. Cir. 1998)). Appellant further argues that “Araki
. . . teaches a fluorinated LCP having a functional group.” App. Br. 20. We
are not persuaded by Appellant’s argument because it is not supported by
Araki, which discloses liquid crystal polymer (LCP) as a preferred example
of a thermoplastic resin (E), Araki, 39:34–40:13, which Araki teaches as a
separate component from the fluorine-containing polymer (D) with a
functional group. Id. at 41:44–48.
Appellant further argues that Araki discloses only a two component
mixture, rather than a three component blend as required by claim 3. App.
Br. 20–21 (citing Araki 41:44–60 and 40:14–22); Reply Br. 3–4. We are not
persuaded by Appellant’s argument, which is not supported by the passage
from Araki cited by the Examiner. Ans. 14 (citing Araki, 41:44–65). The
cited passage expressly discloses “three components”—(D), (E) and (F)—
and expressly discloses a “compatibilizing agent.” Araki 41:44–65. More
specifically, the cited passage of Araki discloses that component (D) reacts
with a part of component (E) to form a compatibilizing agent, which results
in the same three components claimed by Appellants: a liquid crystal
polymer (E), a thermoplastic fluoropolymer (F), and a compatibilizer. Id. at
41:44–65.
We are therefore not persuaded of reversible error in the Examiner’s
findings or conclusion that the wire structure of Appellant’s claim 3 is
anticipated by Araki.
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Claims 5 and 6
In challenging the third ground of rejection, Appellant relies on the
arguments in support of claim 1 and presents no argument for separate
patentability of claims 5 and 6. Appellant thereby waives any argument for
patentability of claims 5 and 6 separate from claim 1.

CONCLUSION OF LAW AND DECISION
The rejections are affirmed.
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).
AFFIRMED
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