Ex Parte Silverman et al

Patent Trial and Appeal Board

Jan 25, 2017

13673063 (P.T.A.B. Jan. 25, 2017)

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.
13/673,063 11/09/2012 Edward M. Silverman NGC-374/005106-804 3639
32205 7590 01/27/2017
Patti & Malvone Law Group, LLC
One North LaSalle St., 44th Floor
Chicago, IL 60602
EXAMINER
MCALLISTER, MICHAEL F
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
01/27/2017 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):
info @ cplawgroup .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORTHROP GRUMMAN SYSTEMS CORPORATION and
MINNESOTA WIRE & CABLE
Appeal 2016-001210
Application 13/673,063
Technology Center 2800
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001210
Application 13/673,063
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 1—21 and 23—25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A cable comprising hybrid carbon nanotube (CNT) shielding,
comprising:
at least one conducting wire;
at least one insulating layer covering at least one of the at least
one conducting wire;
a metallic foil component configured for lower frequency
shielding function', and
a CNT tape component configured for higher frequency
shielding function.
App. Br. 18 (Claims App’x) (emphasis added). Independent claims 21 and 23—25,
like claim 1, recite “[a] cable comprising hybrid carbon nanotube (CNT)
shielding.” Id. at 23—25. Independent claim 20 recites a “[hjybrid carbon
nanotube (CNT) shielding for a coaxial cable.” Id. at 22.
The claims stand rejected under pre-AIA 35 U.S.C. § 103(a) as follows:
1. claims 1, 23, and 24 over Fee et al. (US 7,491,883 B2, issued Feb. 17,
2009) (“Fee”) in view of Jiang et al. (US 2009/0194313 Al, published Aug. 6,
2009) (“Jiang”), Fi et al. {High-frequency analysis of carbon nanotube
interconnects and implications for on-chip inductor design, 56 IEEE Transactions
on Electron Devices 2202 (2009)) (“Fi”), and Weber (Wire Processing: The Future
1 Appellants identify the real party in interest as Northrop Grumman Systems
Corporation. Appeal Brief filed May 26, 2015 (“App. Br.”), 3.
2 Final Office Action mailed Jan. 28, 2015 (“Final Act.”).
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Appeal 2016-001210
Application 13/673,063
of Wire published March 30, 2011 in the ASSEMBLY Magazine;
www.assemblymag.com/articles/89028-wire-processing-the-fiiture-of-wire);
2. claims 2-4 over Lee in view of Morello (US 3,196,382, issued July
20, 1965) and Hardin et al. (US 6,246,006 Bl, issued June 12, 2001) (“Hardin”);
3. claims 5—8 and 19 over Lee in view of Hardin, Bortner et al. (US
4,675,475, issued June 23, 1987) (“Bortner”) and Martin (US 2,403,815, issued
July 9, 1946);
4. claims 9 and 11 over Lee in view of Hardin, Bortner, Martin, and
Morello;3
5. claims 10 and 12—14 over Lee in view of Hardin, Bortner, Martin,
Morello, Hosier (EP 0 624 933 A2, published Nov. 17, 1994), and Bonga et al. (US
2009/0283318 Al, published Nov. 19, 2009) (“Bonga”);4
6. claims 15—17 over Lee in view of Doneker et al. (US 2011/0266023
Al, published Nov. 3, 2011) (“Doneker”);
7. claim 18 over Lee in view of Weber;
8. claim 20 over Lee in view of Jiang, Li, Weber, Hardin, Bortner,
Martin, Hosier, Bonga, and Morello; and
9. claims 21 and 25 over Lee in view of Jiang, Li, Weber, Hardin,
Bortner, and Martin.
3 The rejection, as stated in the Pinal Office Action (Pinal Act. 24 25), refers to
“modified Lee ... as applied to claim 8,” which we understand to mean Lee as
modified by the references relied upon in the rejection of claim 8, i.e., Lee in view
of Hardin, Bortner, and Martin.
4 The rejection, as stated in the Pinal Office Action (Pinal Act. 26), refers to
“modified Lee ... as applied to claims 8 and 9,” which we understand to mean Lee
as modified by the references relied upon in the rejections of claims 8 and 9, i.e.,
Lee in view of Hardin, Bortner, Martin, and Morello.
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Appeal 2016-001210
Application 13/673,063
The arguments advanced by Appellants in the Appeal Brief raise the
following issue for our consideration: Did the Examiner reversibly err in finding
the applied prior art discloses or suggests CNT shielding comprising: (1) “a CNT
tape component configured for higher frequency shielding function” (claims 1, 20,
21, and 23—25); and (2) “a metallic foil component” (claims 1, 20, 21, and 25), “a
braided conductor component” (claim 23), or “a conductive woven tape
component” (claim 24) “configured for lower frequency shielding function”
(claims 1, 20, 21, and 23—25)? See App. Br. 12—16.
In rejecting independent claims 1, 20, 21, and 23—25, the Examiner found
that Lee discloses hybrid CNT shielding comprising a metallic foil/braided
conductor/conductive woven tape component (metal layer 132) and a CNT tape
component (carbon nanotube film 134), but does not disclose expressly the
frequency capabilities of those components. Final Act. 6—9 (as to claims 1, 23, and
24), 11 (as to claim 20), 15 (as to claim 21), 17 (as to claim 25) (citing Lee Fig. 1;
3:28—30 (“The metal layer 132 is, e.g., a metal film, a wound foil, a woven tape, or
a braid.”)). The Examiner relied on Jiang, Li, and Weber as evidence that Lee’s
metal layer 132 and carbon nanotube film 134 inherently are configured for lower
and higher frequency shielding functions, respectively, as recited in the
independent claims. See, e.g., id. at 6—7; see also Examiner’s Answer, mailed
Sept. 11,2015 (“Ans.”), 7.
In their Appeal Brief, Appellants argue “Lee teaches a cable comprising
hybrid carbon nanotube (CNT) shielding without teaching anything about a cable
comprising a metallic foil component/braided conductor component/conductive
woven tape component and a CNT tape component, as recited in independent
claims 1, 20-21, and 23-25.” App. Br. 13. Appellants further provide descriptions
of each secondary reference, concluding the description of each of Jiang, Li,
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Appeal 2016-001210
Application 13/673,063
Weber, Hardin, Bortner, Martin, Hosier, and Morello with a statement that the
reference does not teach “anything about a cable comprising a metallic foil
component/braided conductor component/conductive woven tape component and a
CNT tape component, as recited in independent claims 1, 20-21, and 23-25” {id. at
13—16), and concluding the description of Bonga with the statement that “Bonga
does not teach anything about different shielding behavior at different frequencies
by different components,... as recited in independent claims 1, 20-21, and 23-25”
{id. at 15). Based on an individual analysis of each reference, Appellants argue the
applied prior art, “whether considered singly or in combination, neither anticipate
nor render obvious the independent claims 1, 20-21, and 23-25.” Id. at 16
(“Therefore, Lee, Jiang, Li, Weber, Hardin, Bortner, Martin, Hosier, Bonga, and
Morello fail to anticipate, teach, or suggest ‘using a real time streaming protocol,
automatically opening and using said monitoring channel to transmit said updating
data regarding said communication network to said management terminal,’ as
recited in independent claims 1, 20-21, and 23-25.”). “Appellants further
respectfully suggest that the evident necessity to cite ten pieces of prior art to reject
[the] application may suggest that in fact the invention is not obvious.” Id.
“[W]hen the prior art evidence reasonably allows the PTO to conclude that a
claimed feature is present in the prior art, the evidence ‘compels such a conclusion
if the applicant produces no evidence or argument to rebut it.’” In re Crish, 393
F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911 F.2d 705, 708 n.3
(Fed. Cir. 1990)); see also In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)
(“Even if no prior art of record explicitly discusses the . . . [limitation],
[Appellants’] application itself instructs that [the limitation] is not an additional
requirement imposed by the claims on the [claimed invention], but rather a
property necessarily present in [the claimed invention].”).
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Appeal 2016-001210
Application 13/673,063
The facts and reasons relied on by the Examiner in the Final Office Action
support the Examiner’s finding that Lee discloses or suggests hybrid CNT
shielding having a conducting wire, an insulating layer, a metallic foil/braided
conductor/conductive woven tape component, and a CNT tape component, as
recited in each of independent claims 1, 20, 21, and 23—25. See Final Act. 6—19;
compare Lee 3:22—30 with Spec. Tflf 35—39. Because the Examiner identified a
teaching or suggestion in Lee of the same, or substantially the same, structure as
recited in the independent claims, the burden shifted to Appellants to provide
persuasive arguments or evidence showing that Lee’s metallic foil/braided
conductor/conductive woven tape component and CNT tape component would not
necessarily or inherently be configured for the frequency shielding functions
recited in the claims. Appellants’ arguments are not sufficient to meet this burden,
as explained by the Examiner in the Response to Argument section of the Answer
(Ans. 6—35). See, e.g., id. at 8—10 (explaining that “all of the structural (i.e.
materials) limitations of the independent claims 1, 20, 21, 23-25 claimed invention
are disclosed in the prior art references and therefore must be capable of
performing the same functions and be utilized in the same manner as the applicant
has claimed”); see also id. at 11 (explaining that Appellants’ arguments regarding
an intended use of the claimed cable (see App. Br. 16) are not persuasive because
the claims are directed to a structure and are not limited to a particular use).
In addition to the reasons given by the Examiner, we note that Appellants’
arguments are not persuasive because they are based on alleged deficiencies in the
teachings of the individual references, and fail to show error in the Examiner’s
findings and conclusions with respect to the combined teachings of the references.
See In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (explaining that the test for
obviousness is what the collective teachings of the prior art would have suggested
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Appeal 2016-001210
Application 13/673,063
to one of ordinary skill in the art); In re Gorman, 933 F.2d 982, 987 (Fed. Cir.
1991) (“The criterion [for a conclusion of obviousness], however, is not the
number of references, but what they would have meant to a person of ordinary skill
in the field of the invention.”). We decline to consider the arguments advanced for
the first time in Appellants’ Reply Brief because they are not directed to new
arguments or evidence raised by the Examiner in the Answer. See Cross Med.
Prods. Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320—21 n.3 (Fed.
Cir. 2005) (explaining that arguments not raised in the opening Brief are deemed
waived); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative)
(“The reply brief is not an opportunity to make arguments that could have been
made during prosecution, but were not. Nor is the reply brief an opportunity to
make arguments that could have been made in the principal brief on appeal to rebut
the Examiner's rejections, but were not”).
In sum, we find a preponderance of the evidence supports the Examiner’s
conclusion of obviousness. We adopt the Examiner’s fact finding and reasoning,
as set forth in the Final Office Action and the Answer, in sustaining the rejections
of claims 1—21 and 23—25.
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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