Ex Parte Reed

Board of Patent Appeals and Interferences

Mar 25, 2003

08949803 (B.P.A.I. Mar. 25, 2003)

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for publication and is not binding precedent of the Board.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 WILLIAM C. REED
____________
Appeal No. 2001-0444
Application No. 08/949,803
____________
ON BRIEF
____________
Before THOMAS, KRASS, and BARRETT, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 7-12, 20 and 21.
The invention is directed to transmission cables for use in an underwater
environment. In order to overcome disadvantages of utilizing steel strength systems in
such transmission cables, the instant invention employs two non-metallic strength
members, each comprised of at least one glass strand wherein each strand is
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Application No. 08/949,803
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comprised of a plurality of glass filaments that are bound together with a polymeric
material.
Representative independent claim 7 is reproduced as follows:
7. A power and communications transmission medium for use in an underwater
environment, comprising:
an optical fiber core structure having an outer diameter for providing
communications transmission;
at least one layer of conductive material other than steel concentrically
surrounding the outer diameter of the core structure adapted to provide power
transmission, strengthen and protect the medium, and absorb underwater pressures;
first and second non-metallic strength members concentrically
surrounding the at least one layer of conductive material, each of the first and second
non-metallic strength members comprising a plurality of strands wherein each strand is
comprised of a plurality of filaments bound together and impregnated with a polymeric
material such that the first and second non-metallic strength members mechanically
shield the at least one layer of conductive material from the underwater environment,
wherein the first strength member is wrapped in a helical lay around the at
least one layer of conductive material in a first direction, and the second strength
member is wrapped in a helical lay around the first strength member in a second
direction opposite the first direction; and
an outer jacket concentrically surrounding the strength members.
The examiner relies on the following references:
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Arroyo (Arroyo 060) 4,818,060 Apr. 4, 1989
Arroyo (Arroyo 442) 5,389,442 Feb. 14, 1995
Gareis et al. (Gareis) 5,557,698 Sep. 17, 1996
Additionally, the examiner relies on admitted prior art (APA), designated as
instant Figures 3-5.
Claims 7-12, 20 and 21 stand rejected under 35 U.S.C. 103. As evidence of
obviousness, the examiner offers Arroyo 442 and Gareis with regard to claims 7 and
10-12, adding Arroyo 060 with regard to claims 10 and 11. With regard to claims 20
and 21, the examiner offers Arroyo 442, together with Gareis and APA.
Reference is made to the brief and answer for the respective positions of
appellant and the examiner.
OPINION
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Application No. 08/949,803
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The examiner contends that Arroyo 442 discloses a communications cable in
Figures 1 and 2 wherein the cable has a nonmetallic fiber strength system 32 and an
optical fiber core structure 22 for preventing the passage of water through a sheath
system (column 1, lines 10-40).
With regard to claim 7, the examiner points to a strength system 32 having first
and second nonmetallic strength members 32-33 comprised of a plurality of filaments
that are bound together and impregnated with a polymeric material (column 7, lines 5-
10). The examiner points to Figure 1 to show that the first strength member is wrapped
in a helical lay around the core and that the second strength member is wrapped in a
helical lay around the first member in a direction which may be opposite to that of the
first strength member (columns 7 and 8, lines 65-68 and 1-2, respectively). The
examiner further points to a jacket 34 which surrounds the strength system.
The examiner admits that Arroyo 442 fails to teach an insulating material
surrounding the first and second strength members and at least one layer of conductive
material being a plurality of copper conductors that concentrically surround the outer
diameter of the core structure. However, the examiner relies on Gareis to supply these
deficiencies, pointing to Gareis’ fiber optic cable in Figure 1, wherein the cable has a
cylindrical braided electrical conductor 37 which may be braided copper wires (column
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5, line 23) and surrounds the core. Gareis also discloses a jacket 36 that surrounds the
strength member 33 and acts as an insulator between two conductive layers (column 5,
lines 10-25).
The examiner holds that it would have been obvious to modify the cable of
Arroyo 442 to have a conductive material made of copper in view of Gareis’ teaching “in
order to have a cable that has a high flexibility torque design and high overall tensile
strength (Col. 3, lines 55-64)” of Gareis [answer-page 5] “and to have an insulation
layer surrounding the strength members, because it is well known in the art, as taught
by Gareis...that having insulation layers provides a cable with superior insulation
resistance levels (Col. 3, lines 55-59)” [answer-page 5].
For his part, appellant argues: 1. that Arroyo 442 and Gareis are not analogous
art because they do not relate to underwater cables; 2. that the examiner has failed to
establish a prima facie case of obviousness; 3. that the examiner is relying on an
inherency theory which is unsupported; and 4. that the examiner has not given due
consideration to the functional limitations of the claims.
Taking the arguments in order, as they relate to independent claim 7:
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We are unconvinced that the applied references do not constitute analogous art.
The test for analogous art outside an inventor’s field of endeavor is whether the art
pertains to the particular problem confronting the inventor. In re Clay, 966 F.2d 656,
659, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992); In re Greene (Fed. Cir. 1994). Not only
are Arroyo 442 and Gareis within appellant’s field of endeavor, i.e., power and
communication transmission cables, but Arroyo 442 also pertains to the particular
problem confronting appellant, i.e., the use of such cables underwater. Arroyo 442
suggests the use of the cable underwater because the cable is disclosed as having
“water blocking provisions” (abstract) and as “preventing the passage of water through
a sheath system of the cable” (column 1, lines 15-16).
Appellant contends that the references are not analogous because they do not
relate to “withstanding underwater influences” (brief-page 11) and do not discuss “the
concerns posed by the underwater environment” (brief-page 12). Appellant’s argument
is not convincing because independent claim 7 and the claims dependent therefrom
recite nothing relevant to “withstanding underwater influences” and “concerns posed by
the underwater environment” or “protecting against underwater pressures, corrosion
from the sea, or other underwater influences” (brief-page 14). In fact, claim 7 merely
mentions the claimed power and communications transmission medium “for use in an
underwater environment” in the preamble, then recites in the body of the claim that the
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medium will “absorb underwater pressures” and will be shielded from “the underwater
environment.” Even if we agreed with appellant that these citations are more than the
“intended use” argued by the examiner, the general recitations of the use in, and
shielding from, an underwater environment, and the ability to absorb underwater
pressures would have been suggested to the artisan by Arroyo 442 since this reference
discloses the prevention of water passing through the sheath of the cable. Thus, the
artisan would have understood that the cable of Arroyo 442 is meant to be used in an
environment where there will be water. It may be a little water; it may be for use in a
swimming pool, etc. While the reference does not recite anything about withstanding
certain water pressure, corrosion, etc., the claims are not specific to any particular
pressure or corrosion. While appellant may intend the cable to be used deep in the
ocean, wherein there are problems with corrosion and/or large water pressure, the
claims do not specify any particular pressure or the corrosive effects of the sea. Since
Arroyo 442 would have suggested to the artisan to use the cable in a water
environment and even a non-sea water environment of a swimming pool or a tank, for
example, will have some water pressure associated therewith which the cable will
“absorb,” it is our view that these specific claim recitations, as broadly stated, are
suggested by Arroyo 442.
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With regard to a prima facie case of obviousness, appellant contends that there
is no motivation for combining the references. In particular, appellant argues that there
is no suggestion for modifying the references with regard to surrounding the core
structure with a conductive layer other than steel adapted to protect against underwater
influences, and surrounding the conductive layer with first and second layers of strength
members. Appellant urges that each of the references surrounds the fiber optic cores
with plastic materials (30 in Arroyo 442 and 060 and 33, 35 and 36 in Gareis) and that
even though Gareis shows braided copper conductor layers 37 and 38, these layers
send electrical power and they are not surrounded by first and second strength
members.
With regard to protection against underwater influences, we have treated this
supra and need not repeat it here.
With regard to the motivation to combine the references, we agree with appellant
that there is nothing within the disclosures of Arroyo 442 and Gareis that would have
suggested taking the braided copper cables 37 and 38 of Gareis and placing such a
copper cable, or cables, between Arroyo 442's fiber optic cable core 22 and strength
member 32 in the cable of Arroyo 442 such that the copper conductors would surround
Arroyo 442's fiber optic cable core 22 and be itself surrounded by the strength member
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system 32 comprised of non-metallic strength members 33. While the examiner offers,
as motivation, such generalities as “to have a cable that has a high flexibility torque
design and high overall tensile strength,” this still does not explain why the artisan
would have sought to place the copper cable of Gareis exactly where appellant places
the conductive material, i.e., wrapped around the outer diameter of the core structure
and having the non-metallic strength layers wrapped around the conductive material.
Since the examiner has presented no convincing rationale for employing the
copper conductors of Gareis in Arroyo 442 in the manner recited in the instant claims,
we will not sustain the rejection of claims 7-9 and 12 under 35 U.S.C. 103. Because
Arroyo 060 is no help in this regard, we also will not sustain the rejection of claims 10
and 11 under 35 U.S.C. 103. Because we find no prima facie case since there would
have been no reason to combine the copper conductors of Gareis with the cable of
Arroyo 442 in a manner which would result in the instant claimed subject matter, we will
not address the arguments relating to inherency and due consideration to the functional
limitations of the claims.
Regarding claims 20 and 21, independent claim 20 is much narrower in scope
than independent claim 7 and the reliance on APA for a termination of the cable by a
cone configuration does nothing to address the deficiencies of the primary references.
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Accordingly, we also will not sustain the rejection of claims 20 and 21 under 35 U.S.C.
103.
The examiner’s decision rejecting claims 7-12, 20 and 21 under 35 U.S.C. 103 is
reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
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) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
EAK/yrt
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Anastasia P. Winslow, Esq.
MATHEWS COLLINS SHEPHERD & GOULD
100 Thanet Circle, Suite 306
Princeton, N.J. 08540