Ex Parte Prudhon

Board of Patent Appeals and Interferences

Sep 11, 2002

09197513 (B.P.A.I. Sep. 11, 2002)

1 Application for patent filed November 23, 1998, which is a
continuation of Application No. 08/713,700, filed September 13, 1996, now U.S.
Patent No. 5,952,615, which claims the foreign filing priority benefit under
35 U.S.C. § 119 of French Application No. 95 10844, filed September 15, 1995.
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for publication and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DANIEL PRUDHON
____________
Appeal No. 2000-2146
Application No. 09/197,5131
____________
HEARD: August 14, 2002
____________
Before KRASS, LALL and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1, 2, 4, 6 and 7, which are all of the claims
pending in this application.
We reverse and enter a new ground of rejection under 37 CFR
§ 1.196(b).
Appeal No. 2000-2146
Application No. 09/197,513
2
BACKGROUND
Appellant’s invention is directed to a telecommunication
cable comprising a plurality of individually insulated conductor
pairs with electrical shielding around each pair (specification,
page 3). The electrical shield includes a central rod with
radial fins separating the conductor pairs from each other and
partially shielding each pair (specification, page 4). A
peripheral shield completes the shielding of each conductor pair
by surrounding the rod and the set of conductor pairs separated
by the fins (id.)
Representative independent claim 1 is reproduced as follows:
1. A multiple pair cable with individually shielded
pairs, having a circular cross-section, comprising:
a plurality of pairs of insulated conductors; and
electrical shields surrounding each of said pairs of
insulated conductors,
wherein said electrical shields include a central rod
with radial fins separating said pairs of insulated
conductors from each other and partially shielding said
pairs of insulated conductors, and a peripheral shield
surrounding said rod and said pairs of insulated conductors
being separated from each other for completing the shielding
of each of said pairs of insulated conductors.
The Examiner relies on the following references in rejecting
the claims:
Guilleaume 483,285 Sep. 27, 1892
Appeal No. 2000-2146
Application No. 09/197,513
2 The Examiner incorrectly includes claim 5 in the statement of
rejection (answer, page 3), whereas claim 5 has been canceled at the time of
filing the Request for Continued Application, filed November 23, 1998.
3
Simons et al. 3,911,200 Oct. 7, 1975
Tessier et al. (Tessier) 5,132,488 Jul. 21, 1992
Aladenize et al. (Aladenize) 5,416,155 May 16, 1995
Claims 1, 2, 6 and 7 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Guilleaume in view of Tessier and
Simons.2
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Guilleaume in view of Tessier and Simons and
further in view of Aladenize.
Rather than reiterate the viewpoints of the Examiner and
Appellant, we make reference to the answer (Paper No. 10, mailed
December 22, 1999) for the Examiner’s reasoning, the appeal brief
(Paper No. 9, filed November 8, 1999) and the reply brief (Paper
No. 12, filed December 22, 2000) for Appellant’s arguments
thereagainst.
OPINION
With respect to the rejection of claim 1, Appellant points
out that Guilleaume uses bare conductors individually separated
by an insulating strip or finned member instead of a pair of
insulated conductors on each side of the strip or within the
grooves of the finned member (brief, pages 9 & 10). Appellant
Appeal No. 2000-2146
Application No. 09/197,513
4
argues that one of ordinary skill in the art would not have
substituted each single bare conductor in Guilleaume with two
insulated conductors based on the teachings of Tessier (brief,
page 11). Appellant further asserts that “[s]uch a modification
would result in insulated conductors being placed within grooves
of the insulating strip for being further insulated from each
other, resulting in a redundant, double-insulating solid
structure” (oral hearing, brief, page 13 and reply brief, page
3). Appellant recognizes that Simons discloses partially
shielding compartments formed of fins (brief, page 14), and
Guilleaume teaches a metallic covering as the peripheral
protection (brief, page 16). However, Appellant argues that one
of ordinary of skill in the art would not have found any
suggestion or motivation to combine the references to form the
claimed two-part shielding structure for communication cables
(oral hearing and brief, page 16).
The focus of the Examiner’s arguments is that substituting
twisted pairs of insulated conductors for bare conductors would
not result in redundancy or any change in the main purpose of
Guilleaume since both kinds of conductors can be used for
transmitting signals (answer, page 7). The Examiner also asserts
that inserting a metal tape in the insulative rod of Guilleaume
Appeal No. 2000-2146
Application No. 09/197,513
5
would not change the principal operation of the insulator and in
fact, provides shielding between the pair of conductors (id.).
The initial burden of establishing reasons for
unpatentability rests on the examiner. In re Oetiker, 977 F.2d
1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). Where, as
here, a conclusion of obviousness is premised upon a combination
of references, the examiner must identify a reason, suggestion,
or motivation which would have led an inventor to combine those
references. Pro-Mold & Tool Co. V. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629, (Fed. Cir. 1996).
However, “the Board must not only assure that the requisite
findings are made, based on evidence of record, but must also
explain the reasoning by which the findings are deemed to support
the agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002).
A review of Guilleaume reveals that the reference relates to
insulating bare electric cables or conductors that are used in
telephonic transmission (lines 7-15). A strip of insulating
material, such as paper, separates a pair of bare conductors and
creates two spiral grooves to hold the conductors once the whole
assembly is twisted together (lines 21-43). A number of such
insulated conductors are grouped together to form a cable, as
Appeal No. 2000-2146
Application No. 09/197,513
6
shown in figure 6. However, Guilleaume provides no shielding
structure between the pairs of insulated conductors in the
grouped strands of conductors. Additionally, we find no teaching
in Guilleaume about shielding each of the pairs of insulated
conductors using a combination of a central rod with fins and a
peripheral shield, as recited in Appellant’s claim 1.
A review of Tessier shows that the reference is concerned
with reducing capacitance unbalance and cross talk among pairs of
twisted conductors (col. 1, lines 42-45). Tessier merely teaches
a plurality of conductor pairs that are grouped together and
spacers that hold the pairs of conductors spaced apart from one
another (col. 1 line 67 through col. 2, line 10). The spacers
are integrally formed with a jacket that surrounds the grouped
pairs of conductors (col. 2, lines 31-39). Based on our findings
with regard to Tessier, we agree with Appellant that Tessier
provides no teaching or suggestion for substituting each bare
conductor of Guilleaume with a pair of conductors.
Simons, on the other hand, teaches a cable housing with an
encapsulated longitudinal tape for separating and shielding
longitudinal sections of a multiconductor cable (col. 1, lines
24-44). A metal foil is laminated with plastic films and folded
upon itself to form the longitudinal parallel compartments for
Appeal No. 2000-2146
Application No. 09/197,513
7
shielding of insulated wires within the cable (col. 3, lines 16-
37). The cable further includes an outer jacket or sheath made
of insulating material that surrounds the peripheral side of each
compartment (col. 3, lines 42-46). Thus, similar to Tessier,
Simons includes no teaching or suggestion for modifying the
electric cable of Guilleaume to have the claimed two-part
shielding of insulated pairs of conductors.
Based on our findings above, we remain unpersuaded by the
Examiner’s argument that the use of pairs of insulated
conductors, as taught by Tessier, would not have changed the main
purpose of Guilleaume. The insulating strip or rod of Guilleaume
separates and insulates individual bare conductors from each
other. Additionally, while Tessier shows spacers for separating
conductor pairs and Simons teaches shielding compartments for a
cable, their combination with Guilleaume fails to teach or
suggest a two-part shielding structure that includes a central
rod with radial fins separating pairs of insulated conductors and
a peripheral shield surrounding the rod and the pairs of
conductors, as recited in claim 1. In view of the analysis
above, we find that the Examiner has failed to show the necessary
motivation to modify Guilleaume as suggested by the Examiner.
Accordingly, the 35 U.S.C. § 103 rejection of claims 1, 2, 6 and
Appeal No. 2000-2146
Application No. 09/197,513
8
7 over Guilleaume in view of Tessier and Simons cannot be
sustained.
We note that the Examiner relies on Aladenize in combination
with Guilleaume, Tessier and Simons to reject claim 4 under
35 U.S.C. § 103(a). Although Aladenize describes the use of a
semiconductive screening formed of a polymer matrix in electrical
cables for stabilizing the field at the insulator-conductor
interface (col. 3, lines 11-14 and lines 48-56), nothing in the
reference is directed to a two-part shielding structure for
shielding insulated conductor pairs. Assuming, arguendo, that it
would have been obvious to combine the semiconductor polymer of
Aladenize with the teachings of Guilleaume, Tessier and Simons as
held by the Examiner, Aladenize does not overcome the
deficiencies in the rejection of base claim 1 discussed above.
Accordingly, we do not sustain the 35 U.S.C. § 103 rejection of
claim 4 over Guilleaume, Tessier and Simons in view of Aladenize.
CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1, 2, 4, 6 and 7 under 35 U.S.C. § 103 is
reversed.
We make the following new ground of rejection for claim 1
under the judicially created doctrine of obviousness-type double
Appeal No. 2000-2146
Application No. 09/197,513
3 Prudhon 5,952,615 Sep. 14, 1999
(a copy of which is attached to this decision)
9
patenting over Prudhon (issued on the parent of t he present
application)3 pursuant to 37 CFR § 1.196(b). We only consider
independent claim 1 but encourage the Examiner to evaluate other
appealed claims for possible rejection under obviousness-type
double patenting over Prudhon alone or in combination with other
prior art.
Claim 1 is rejected under the judicially created doctrine of
obviousness-type double patenting over Prudhon . Claim 1 of
Prudhon (the only patented claim) reads as follows:
1. A cable having a circular cross-section and including
a plurality of individually insulated conductor pairs, said
cable comprising:
an electrical shield surrounding each of said conductor
pairs;
said electrical shield including central rod with
radial fins separating said conductor pairs from each
other for partially shielding each of said conductor
pairs, and a peripheral shield surrounding said rod
and all of said conductor pairs between said fins for
completing the shielding of each of said conductor
pairs,
wherein said rod comprises an insulative material
member of constant cross-section with an exterior
metallization that is continuous from one fin to the
next.
Appeal No. 2000-2146
Application No. 09/197,513
10
Claim 1 of Prudhon recites a cable having a circular cross-
section that includes a plurality of insulated conductor pairs
and electrical shields surrounding each of the pairs of
conductors, as recited in the appealed claim 1. The patented
claim 1 further recites a central rod with radial fins and the
peripheral shield surrounding the rod and the pairs of
conductors, as also recited in the appealed claim 1, that
separate the pairs of conductors and complete the shielding of
each pair. The patented claim 1 also requires that the central
rod comprise an insulative material covered with an exterior
metallization. However, the appealed claim 1 recites no specific
material or configuration for the central rod, which warrants the
use of any shielding configuration for the central rod.
Different materials and combinations of layers may be used for
the central rod as confirmed by Appellant’s specification stating
that the effectiveness of the shielding fins between the
conductor pairs is “proportional to the magnitude of the effect
of the pairs on each other” (specification, page 6). Therefore,
one of ordinary skill in the art would have concluded that the
invention recited in the appealed claim 1 is an obvious variation
of the invention defined in the patented claim 1.
Appeal No. 2000-2146
Application No. 09/197,513
11
As discussed above, the appealed claim 1 more broadly
recites the configuration of the central rod and the radial fins
which are merely an obvious variation of the invention recited in
claim 1 of Prudhon. Accordingly, claim 1 is rejected under the
judicially created doctrine of obviousness-type double patenting
over Prudhon.
In addition to reversing the Examiner’s decision rejecting
the claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that
"[a] new ground of rejection shall not be considered final for
purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:

(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and Interferences
upon the same record. . . .
Appeal No. 2000-2146
Application No. 09/197,513
12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2000-2146
Application No. 09/197,513
13
Sughrue, Mion, Zinn,
Macpeak & Seas
2100 Pennsylvania Avenue, NW
Washington, DC 20037-3202