Ex parte Mcalpine et al.

Board of Patent Appeals and Interferences

Dec 13, 1999

08476389 (B.P.A.I. Dec. 13, 1999)

Application for patent filed Jun. 7, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WARREN W. MCALPINE and MARYANN CLARKE
____________
Appeal No. 1997-1896
Application No. 08/476,3891
____________
ON BRIEF
____________
Before THOMAS, JERRY SMITH, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claim 20, which is
the only claim pending in this application.
We REVERSE.
Appeal No. 1997-1896
Application No. 08/476,389
2
BACKGROUND
The appellants’ invention relates to a slotted core telecommunications cable. An
understanding of the invention can be derived from a reading of claim 20, which is
reproduced below.
20. A telecommunications cable, comprising: a longitudinally extending
spacer having at least an outer layer thereof formed of plastic material
having a melt flow index of equal to or greater than about 0.65 g/10 min, said
spacer having formed in said outer layer a plurality of longitudinally extending
helical grooves each for supporting a longitudinally extending
telecommunications member therein, each of said grooves having a cross-
sectional shape transverse to its longitudinal extent generally in the form of
an U-shape with a flat bottom, two corners, and two walls, each wall
substantially perpendicular to said bottom and joined to said bottom at one
of said corners, and a plurality of longitudinally extending ribs each between
two adjacent grooves and each delimiting two of said groove walls, each rib
having a longitudinally extending base between adjacent groove corners
whose thickness does not exceed about 1.3 mm; and an outer jacket
surrounding said spacer.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Rawlyk 5,188,883 Feb. 23, 1993
Brosius et al. (Brosius) 5,371,144 Dec. 06, 1994
Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Rawlyk in view of Brosius.
Appeal No. 1997-1896
Application No. 08/476,389
3
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejection, we make reference to the examiner's
answer (Paper No. 11, mailed Dec. 19, 1996) for the examiner's reasoning in support of
the rejection, and to the appellants’ brief (Paper No. 10, filed Nov. 19, 1996) for the
appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claim, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
As a general proposition in an appeal involving a rejection under 35 U.S.C.
§ 103, an examiner is under a burden to make out a prima facie case of obviousness. If
that burden is met, the burden of going forward 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 and the relative persuasiveness of the arguments. See
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); 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. 1984); and In re
Appeal No. 1997-1896
Application No. 08/476,389
4
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Regardless of whether the examiner’s analysis is correct, it sufficiently makes the
required factual determinations to support a prima facie case of obviousness. Since
appellants have presented several substantive arguments in response to the examiner’s
rejection, we consider the determination of obviousness based upon the totality of the
evidence and the relative persuasiveness of the arguments.
Appellants admit that the prior art references individually teach components of the
claimed invention, but argue that it would not have been obvious to one of ordinary skill in
the art at the time of the invention to combine the teachings as maintained by the examiner.
(See brief at pages 2-3.) We agree with appellants. We find that the examiner has not
provided a convincing line of reasoning as to why one of ordinary skill in the art would have
been motivated to combine the general teaching of using a core with grooves as taught by
Rawlyk with the specific materials as taught by Brosius.
The examiner applies Rawlyk which is a teaching for a composite tape which is to
be used in telecommunications cables. Rawlyk teaches the general use of a spacer
similar to that set forth in claim 20. Rawlyk merely states that core, 12, has helical grooves
to house transmission elements and a strength member, 16, in the center. The examiner
has not cited any portion of Rawlyk which would have suggested any
Appeal No. 1997-1896
Application No. 08/476,389
5
specific material for the core and the examiner has not provided a line of reasoning or
motivation to use one type of material over another. Moreover, the examiner has not
identified any portion of Rawlyk to teach or suggest the dimensions set forth in claim 20
nor have we found any such motivation within the four corners of Rawlyk.
With respect to the combination of the references, the examiner states that it would
have been obvious to one of ordinary skill in the art at the time of the invention to “use the
plastic material as taught by Brosius et al. for the plastic core member of Rawlyk for easy
molding.” (See answer at page 5.) Furthermore, the examiner has stated that “[t]he
motivation for combining the references is the dual benefit of the plastic material having
both mechanical strength and easy molding.” (See answer at page 6.) We disagree. The
examiner has not provided a teaching or a convincing line of reasoning as to why it would
have been obvious to one of ordinary skill in the art at the time of the invention to use the
particular plastic of Brosius in a telecommunication cable or related product as a
motivation for the combination. Brosius is silent as to its use in cables. Therefore, we find
that the examiner has used impermissible hindsight reconstruction in rejecting claim 20.
Therefore, we will not sustain the rejection of claim 20.
CONCLUSION
Appeal No. 1997-1896
Application No. 08/476,389
6
To summarize, the decision of the examiner to reject claim 20 under 35 U.S.C.
§ 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1997-1896
Application No. 08/476,389
7
J. DAVID ABERNETHY
SIECOR CORPORATION LE
P.O. BOX 489
HICKORY, NC 28603