Ex Parte Painter

Patent Trial and Appeal Board

Jan 22, 2015

12079198 (P.T.A.B. Jan. 22, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/079,198 03/25/2008 Thomas A. Painter 19692-18642 9543
7590 01/22/2015
J. WILEY HORTON, ESQUIRE
Pennington, Moore, Wilkinson, Bell & Dunbar, P.A.
215 S. Monore Street, 2nd Floor
Post Office Box 10095
Tallahassee, FL 32302-2095
EXAMINER
WARTALOWICZ, PAUL A
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
01/22/2015 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 THOMAS A. PAINTER
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Appeal 2013-002782
Application 12/079,1981
Technology Center 1700
____________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant seeks our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1–6 and 8–21. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 According to the Appellant, the real party in interest is Florida State
University Research Foundation (Appeal Brief filed April 26, 2012,
hereinafter “Br.,” 1). In addition, the Specification states that the invention
“was developed at the National High Magnetic Field Laboratory in
Tallahassee, Florida,” and that “[t]he research and development [of the
invention] has been federally sponsored” (Specification filed on March 25,
2008, hereinafter “Spec.,” 1, ll. 9–11).
Appeal 2013-002782
Application 12/079,198

2
BACKGROUND
The invention relates to a conductor for use in a superconducting
electromagnet (Spec. 5, ll. 9–10). Representative claim 1 is reproduced from
page 18 of the Appeal Brief (Claims App’x) as follows:
1. A method of making a wire-in-conduit
superconductor, comprising:
a. providing a wire matrix material having a long axis
and a cylindrical external perimeter;
b. creating a plurality of holes through said wire
matrix material, with said plurality of holes being
parallel to said long axis;
c. providing a plurality of superconducting wires;
d. placing said plurality of superconducting wires in
said plurality of holes in said wire matrix material
to create a first assembly;
e. drawing said first assembly to reduce the diameter
of said cylindrical external perimeter;
f. providing a conduit having a hollow square cross
section and an internal wall boundary;
g. placing said first assembly within said internal
wall boundary of said conduit to form a second
assembly; and
h. reducing the size of said conduit so that said
internal wall boundary lies close to said cylindrical
external perimeter of said first assembly, thereby
forming four coolant channels between said
conduit and said cylindrical external perimeter.

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
Appeal 2013-002782
Application 12/079,198

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I. Claims 1–3 and 21 as unpatentable over Whetstone2 and
Kafka;3
II. Claims 1, 20, and 21 as unpatentable over Snitchler,4
Whetstone, and Kafka;
III. Claims 4–6 and 8–10 as unpatentable over Whetstone, Kafka,
and Heim;
IV. Claims 11 and 12 as unpatentable over Snitchler and Kafka;
and
V. Claims 13–19 as unpatentable over Snitchler, Kafka, and
Heim.5
(Examiner’s Answer entered September 4, 2012, hereinafter “Ans.,” 3–25.)

DISCUSSION
The dispositive issue in this appeal is whether Kafka disclosed, or
would have suggested to one of ordinary skill in the art, reducing the size of
the conduit having the hollow square cross section in the manner as recited
in the claims––for example, step “h” of claim 1 (Br. 12–16; Ans. 16–25).
We answer this question in the affirmative for the reasons given by the
Examiner.
It is well settled that the PTO is obligated to give claims their broadest
reasonable interpretation not inconsistent with the remainder of the
specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“[D]uring

2 United States Patent 4,109,374 issued August 29, 1978.
3 United States Patent 3,764,725 issued October 9, 1973.
4 United States Patent 6,038,462 issued March 14, 2000.
5 United States Patent 5,187,859 issued February 23, 1993.
Appeal 2013-002782
Application 12/079,198

4
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed.”) (citations omitted). See also In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004) (“[T]his court counsels the PTO to avoid the temptation to
limit broad claim terms solely on the basis of specification passages.”)
(citation omitted).
Contrary to the Appellant’s argument (Br. 14), claim 1 does not
require “necking down a square conduit to fit tightly over a cylindrical
conductor.” Unlike claim 1, step “e” (“drawing said first assembly to reduce
the diameter of said cylindrical external perimeter”), step “h” does not tie
“reducing” to any “drawing” (or “necking down” as argued). As explained
by the Examiner (Ans. 16–17), claim 1 does not limit the claim term
“reducing” to any particular operation. Nor does the claim require the
“reducing” step to take place after formation of the second assembly (i.e.,
step “g”). Therefore, we agree with the Examiner that “reducing” reads on
the initial sizing of the conduit during its initial manufacture such that its
internal wall boundary would lie close to the cylindrical external perimeter
of the first assembly when the conduit is made part of the second assembly.
Under the correct claim construction discussed above, we find no
error in the Examiner’s finding that Kafka discloses “reducing,” as recited in
step “h” of claim 1. Specifically, Kafka’s Figure 5 shows a sheath 27 (i.e., a
conduit having a square cross section) that has been sized (i.e., reduced) to
have an internal wall boundary that touches multiple core conductor 25, thus
forming four free corners 30 for coolant flow (col. 4, ll. 30–53; col. 6, ll. 6–
13). Therefore, we are not persuaded that the term “reducing” confers
patentability to the claims over the applied prior art references.
Appeal 2013-002782
Application 12/079,198

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CONCLUSION
We affirm the Examiner’s Rejections I through V.
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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