Ex Parte MOE et al

Board of Patent Appeals and Interferences

Apr 30, 2004

09485656 (B.P.A.I. Apr. 30, 2004)

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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today was not written for publication and is not
binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ALAN N. MOE, BRUCE J. CARLSON, SCOTT M. ADAMS
and RONALD VACCARO
________________
Appeal No. 2004-0031
Application 09/485,656
________________
HEARD: APRIL 14, 2004
________________
Before JERRY SMITH, FLEMING and DIXON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 2-8, 10, 19-22, 24 and
26-28. Claims 9 and 23 have been indicated to contain allowable
subject matter by the examiner. Claims 1, 11-18, 25 and 29-34
have been cancelled. An amendment after final rejection was
filed on December 5, 2002 and was entered by the examiner.
Appeal No. 2004-0031
Application 09/485,656
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The disclosed invention pertains to a coaxial cable.
Representative claim 4 is reproduced as follows:
4. A coaxial cable comprising:
a cylindrical plastic rod;
an electrically conductive tubular inner conductor
surrounding said plastic rod, provided by forming a metal strip
into a tubular configuration with the longitudinal side edges of
the strip butted together and joined by a continuous longitudinal
weld, and adhesively bonded to the plastic rod;
a continuous foam polymer dielectric layer closely
surrounding the inner conductor; and
a tubular metallic outer sheath closely surrounding the foam
polymer dielectric layer.
The examiner relies on the following references:
Mildner 3,309,455 Mar. 14, 1967
Gerland et al. (Gerland) 3,516,859 June 23, 1970
Hafner, Jr. (Hafner) 4,399,322 Aug. 16, 1983
Hollander 5,111,002 May 05, 1992
Barrett et al. (Barrett) 5,371,823 Dec. 06, 1994
Buckel 5,500,488 Mar. 19, 1996
Shotey et al. (Shotey) 5,527,993 June 18, 1996
The following rejections are on appeal before us:
1. Claims 2-5, 10, 19-22, 24 and 26-28 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the teachings
of Hafner in view of Hollander and Mildner.
2. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Hafner in view of
Hollander and Mildner and further in view of Barrett.
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Application 09/485,656
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3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Hafner in view of
Hollander and Mildner and further in view of Buckel and Shotey.
4. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Hafner in view of
Hollander and Mildner and further in view of Gerland.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
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, the appellants’
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
Appeal No. 2004-0031
Application 09/485,656
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in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we reverse.
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 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), cert.
denied, 475 U.S. 1017 (1986); 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.
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Application 09/485,656
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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 and the relative persuasiveness of the
arguments. 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. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed
to be waived [see 37 CFR § 1.192(a)].
We consider first the rejection of claims 2-5, 10, 19-22,
24 and 26-28 based on the teachings of Hafner in view of
Hollander and Mildner. These claims stand or fall together as a
single group [brief, page 2]. We will consider independent claim
4 as the representative claim for this group of claims. The
examiner finds that Hafner teaches the coaxial cable of claim 4
except that Hafner does not teach the inner conductor being
provided by forming a metal strip into a tubular configuration
with longitudinal side edges of the strip abutted together and
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Application 09/485,656
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joined by a continuous longitudinal weld, or being adhesively
bonded to the plastic rod. The examiner cites Hollander as
teaching a tubular conductor which is formed in the manner
recited in claim 4. The examiner finds that it would have been
obvious to the artisan to form the inner conductor of Hafner in
the manner disclosed by Hollander. The examiner cites Mildner as
teaching adhesive bonding in a coaxial cable. The examiner finds
that it would have been obvious to the artisan to use adhesive
bonding in Hafner as taught by Mildner [answer, pages 4-6].
Appellants argue that one of ordinary skill in the art
would not be motivated to make the inner conductor of Hafner
using the Hollander method because Hollander relates to
thermocouples and not to the transmission of radio signals.
Appellants assert that the artisan would not have expected the
welding technique taught by Hollander to produce a conductor in
Hafner that would successfully transmit radio signals [brief,
pages 3-5].
The examiner responds that although the cable of
Hollander is a thermocouple cable, Hollander’s teaching to
construct a conductor using an abutting seam with a longitudinal
weld in order to obtain a smooth and continuous conductor is
applicable to other types of cables [answer, pages 8-9].
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Application 09/485,656
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Appellants respond that based on the teachings of the
three applied references, the artisan would have been motivated
to make the inner conductor of Hafner in the manner taught by
Mildner rather than in the manner taught by Hollander because
Mildner relates to signal transmission and Hollander relates to
thermocouples [reply brief].
We will not sustain the examiner’s rejection of
independent claim 4 and of the other claims within this group.
Although the examiner has pointed to Hollander as teaching the
formation of a metal sheath by forming a metal strip into a
tubular configuration with the longitudinal side edges of the
strip butted together and joined by a weld, we agree with
appellants that the applied prior art does not support the
combination proposed by the examiner. First, we agree with
appellants that the artisan in the field of coaxial cables for
transmitting RF signals would not have looked to the thermocouple
art for pertinent teachings. There is no suggestion in Hollander
that the metal strip disclosed therein has any use in a coaxial
cable for transmitting RF signals or that the signals conducted
in Hollander have any relationship to RF signals. Second,
Hollander discloses that welded metal strips suffer from
diffusion problems into the surrounding environment [column 1,
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Application 09/485,656
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lines 25-28]. Coaxial cables are required to transmit RF signals
over long distances. The artisan would have been concerned about
potential loss of the signals by way of diffusion. Therefore, we
find that the artisan would not have been motivated to use the
technique disclosed by Hollander in making the inner conductor of
claim 4. The examiner’s conclusion of obviousness is simply not
supported by the specific prior art relied on.
We now consider the examiner’s rejection of dependent
claims 6-8 based on the teachings of Hafner in view of Hollander
and Mildner and further in view of one or more of Barrett,
Buckel, Shotey and Gerland. Even though these claims were
rejected using a different combination of references than was
used for claim 4, appellants have not separately argued these
claims, and instead, have indicated that these claims should
stand or fall with claim 4 [brief, page 2]. We have considered
the additional teachings of Barrett, Buckel, Shotey and Gerland,
and we find that none of these references overcome the
deficiencies of the basic combination discussed above.
Therefore, we also do not sustain the examiner’s rejection of
claims 6-8.
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Application 09/485,656
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In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 2-8, 10, 19-22, 24 and 26-28 is
reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JS/ki
Appeal No. 2004-0031
Application 09/485,656
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