Ex Parte Nickence

Patent Trial and Appeal Board

Jun 16, 2016

12500217 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/500,217 0710912009
92556 7590
HONEYWELL/HUSCH
Patent Services
115 Tabor Road
P.O.Box 377
MORRIS PLAINS, NJ 07950
06/20/2016
FIRST NAMED INVENTOR
John G. Nickence
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.
H0022839/4874/l 08484 1882
EXAMINER
NGUYEN, CHAU N
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
06/20/2016 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):
patentservices-us@honeywell.com
amy.hammer@huschblackwell.com
pto-chi@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN G. NICKENCE 1
Appeal2014-006923
Application 12/500,217
Technology Center 2800
Before ST. JOHN COURTENAY, III, KRISTEN L. DROESCH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
final rejection of claims 1, 3-17, and 21-29, which are all of the claims
pending in the Application. Claims 2 and 18-20 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant indicates the real party in interest is Honeywell International,
Inc. App. Br. 2.
Appeal2014-006923
Application 12/500,217
BACKGROUND
The disclosed invention is directed to the structure of a coaxial cable.
Spec. i-fi-f 14--21.
Representative claim 1, reproduced from the Claim Appendix of the
Appeal Brie±: reads as follows:
1. A multi-element cable comprising:
a cable core;
a non-conducting exterior jacket with a central axis, the
jacket surrounds the cable core and where the jacket has an
outer surface, relative to the core, an inner surface adjacent to
the core and where the inner surface defines a plurality of
spaced apart, regions in contact with the core, with voids
between the inner surface and the core between the regions,
wherein the voids and regions are defined circumferentially by
a continuous, sinusoidal closed curve and where the regions
around the curve terminate at a substantially common distance
from the axis; and
a connector attached to at least one end of the cable core
and surrounding non-conducting exterior jacket, the connector
having a barrel, a ferrule and a locking ring, the ferrule is slid
under a portion of the non-conducting exterior jacket and the
locking ring slides on the outer surface of the non-conducting
exterior jacket to engage the barrel.
REJECTIONS
Claims 3 and 12 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 1, 3-17, and 21-29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Borgwarth (US 5,442,131, issued Aug. 15, 1995),
Boisvert et al. (US 7,145,080 Bl, issued Dec. 5, 2006) ("Boisvert"), and
Montena (US 2005/0042919 Al, published Feb. 24, 2005).
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Appeal2014-006923
Application 12/500,217
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments in the Appeal Brief presented in response to the Final Office
Action, and the Reply Brief presented in response to the Examiner's
Answer. We agree with, and adopt as our own, the Examiner's findings and
conclusions of law to the extent that they are consistent with our below
analysis. Specific findings and arguments are highlighted and addressed
below for emphasis.
§ 103 Rejection
We are not persuaded of Examiner error by Appellant's following
arguments: ( 1) Borgwarth defines square shaped channels located on the
inner surfaces on the dielectric layers that are used to circulate coolant along
the length of the coaxial cable, and does not describe "wherein the voids and
regions are defined circumferentially by a continuous, sinusoidal closed
curve and where the regions around the curve terminate at a substantially
common distance from the axis," as recited in claim 1 (App. Br. 7-8);
(2) Borgwarth uses a heat pipe at one end and a set of cooling lines at the
other end, instead of having a connector at one end (id. at 8); (3) Boisvert is
directed to an inner jacket which is offset from the central axis of the outer
sleeve, and does not disclose an exterior jacket "wherein the voids and
regions are defined circumferentially by a continuous, sinusoidal closed
curve and where the regions around the curve terminate at a substantially
common distance from the axis," as recited in claim 1 (id. (citing Boisevert
3:41--44)); (4) Boisvert does not disclose a connector at one end 1 (id.); and
( 5) Montena discloses a coaxial cable connector but fails to disclose
"wherein the voids and regions are defined circumferentially by a
continuous, sinusoidal closed curve and where the regions around the curve
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Appeal2014-006923
Application 12/500,217
terminate at a substantially common distance from the axis," as recited in
claim 1 (id.). See also id. at 11 (arguing there is no teaching or suggestion in
Borgwarth, Boisvert, or Montena of the same disputed limitation).
Appellant's arguments above address the teachings of each of the references
in isolation, rather than addressing the combined teachings of the references.
Once cannot show non-obviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413, 426 (CCPA 1981). The Examiner relies on Borgwarth's teachings of
an exterior jacket having an inner surface with spaced apart regions and
voids, as modified by Boisvert's teachings of using a sinusoidal shape for
regions and voids, and as further modified by Montena's specific teachings
of a connector. See Final Act. 3-5; Ans. 4.
Appellant also argues that the primary reference Borgwarth could not
be adapted to use "a connector attached to at least one end of the cable core
and non-conducting exterior jacket, the connector having a barrel, a ferrule
and a locking ring, the ferrule is slid under a portion of the non-conducting
exterior jacket and the locking ring slides on the outer surface of the non-
conducting exterior jacket to engage the barrel," as recited in claim 1,
without rendering Borgwarth's cable unfit for its intended purpose. See
App. Br. 8; id. at 11. Appellant contends the ferrule slid under a portion of
the non-conducting exterior jacket and the locking ring on the outer surface
of the non-conducting exterior jacket to engage the barrel would block the
cooling channels of Borgwarth. See Id. at 8-9 (citing In re Gordon, 773
F.2d 900 (Fed. Cir. 1984)).
The Examiner explains that in addition to sliding the ferrule 14 under
a portion of the non-conducting exterior jacket 76, Montena also teaches the
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Appeal2014-006923
Application 12/500,217
ferrule is slid under the outer conductor of the shield layer 7 4. See Ans. 5
(citing Montena Fig. 4a). The Examiner finds that one with ordinary skill in
the art would slide Montena's ferrule underneath the outer conductor or
shield layer 27 and underneath a portion of the non-conducting jacket 28 of
Borgwarth, and therefore attaching the connector as taught by Montena
would not block the channels of Borgwarth. See id. In response, Appellant
contends Montena does not disclose the use of cooling water or provide for
the passage of cooling water through the connector, and Montena's
connector is a closed ended structure intended to conduct electricity not
water. Reply Br. 3.
Appellant's arguments are not persuasive of Examiner error. We
agree with the Examiner that in light of Montena's teachings one with
ordinary skill in the art at the time of the invention would have combined the
teachings of Borgwarth as modified by Boisvert, with the teachings of
Montena such that connector ferrule would be slid underneath both the
shield layer 27 and the jacket 28 of Borgwarth and, therefore, would not
cause the water channel blockage problem proposed by Appellant.
We also are not persuaded by Appellant's argument that none of the
cited references recognize the problem solved by the claimed invention, i.e.,
reducing the cost of and increasing the flexibility of coaxial cables. See
App. Br. 11; Reply Br. 4. As explained in KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007), it is error to assume that a person of ordinary skill
attempting to solve a problem will be led only to those elements of the prior
art designed to solve the same problem. Rather, "[ c ]ommon sense
teaches ... that familiar items may have obvious uses beyond their primary
purposes, and in many case a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle .... A person
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Application 12/500,217
of ordinary skill is also a person of ordinary creativity, not an automaton."
Id. at 420-421. It is sufficient that the references suggest doing what
Appellant did, although the Appellant's particular purpose was different
from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir.
1983). This reasoning is applicable here.
For all of the foregoing reasons, we are not persuaded of error in the
rejection of claim 1, and claims 3-17, and 21-29 that are not argued
separately (see App. Br. 7-11).
§ 112. Second Paragraph Rejection
The Examiner rejected claims 3 and 12 under 35 U.S.C. § 112, second
paragraph as indefinite. Final Act. 2. Appellant asserts that the prior art
rejection is the subject of the appeal (see App. Br. 7) and does not provide
argument contesting the rejection of claims 3 and 12 under 35 U.S.C. § 112,
second paragraph. See id. at 7-11.
Under our procedural rules, an appeal is presumed to be taken from
the rejection of all of the claims under rejection unless cancelled by an
entered amendment. See 3 7 C.F .R. § 41.31 ( c ). Therefore, we sustain pro
forma the rejection of claims 3 and 12 under 35 U.S.C. § 112, second
paragraph, because Appellant does not present any argument addressing this
rejection.
DECISION
We AFFIRM the rejection of claims 3 and 12 under 35 U.S.C. § 112,
second paragraph.
We AFFIRM the rejection of claims 1, 3-17, and 21-29 under 35
U.S.C. § 103(a).
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Appeal2014-006923
Application 12/500,217
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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