Ex parte Young

Board of Patent Appeals and Interferences

Dec 22, 2000

08255083 (B.P.A.I. Dec. 22, 2000)

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publication and is not binding precedent of the Board.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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WALTER W. YOUNG
_____________
Appeal No. 1998-2590
Application No. 08/255,083
______________
ON BRIEF
_______________
Before FRANKFORT, McQUADE, and LAZARUS, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 11, which are all of the claims
pending in this application.
Appellant’s invention is directed to an insulated,
vibration resistant, overhead electrical cable suitable for
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Application No. 08/255,083
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use as a high voltage transmission line with a low
electromagnetic field (EMF). More specifically, appellant
solves the problem of aeolian and galloping vibrations of a
low EMF overhead electrical cable transmission line by shaping
an outer insulation layer of the cable to have an axially
continuously rotating oval or elliptical outer periphery which
is resistant to aeolian and galloping vibrations caused by
aerodynamic forces acting on the cable. Independent claim 1 is
representative of the subject matter on appeal and a copy of
that claim may be found in the Appendix to appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Shealy 3,659,038 Apr. 25,
1972
Bahder et al. (Bahder) 3,725,230 Apr. 3,
1973 Yamamoto et al. (Yamamoto) 4,029,830 Jun.
14, 1977
Powers 5,171,942 Dec. 15,
1992
Claims 1 through 4 and 8 through 11 stand rejected under
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35 U.S.C. § 103(a) as being unpatentable over Yamamoto in view
of Powers and Shealy.

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Application No. 08/255,083
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Claims 5 through 7 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Yamamoto in view of Powers
and Shealy as applied above, and further in view of Bahder.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 20, mailed September 15, 1997) for the
reasoning in support of the rejections, and to appellant’s
brief (Paper No. 19, filed August 18, 1997) and reply brief
(Paper No. 21, filed November 28, 1997) for the arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
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Application No. 08/255,083
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which follow.

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Looking first at the examiner’s rejection of claims 1
through 4 and 8 through 11 under 35 U.S.C. § 103(a) based on
the collective teachings of Yamamoto, Powers and Shealy, we
note that Yamamoto discloses a method of manufacturing an
insulated electric power cable that includes a cured
insulation material (3) applied over a conductor (1, 2) and a
layer of plastic compound (5) comprising a thermoplastic resin
and 5-70 parts by weight of calcium oxide as a moisture-
absorbing agent overlying the insulating material. In column
2, lines 30-41, it is indicated that

[t]he presence of calcium oxide in the layer of
plastic compound provided on electric conductors in
accordance with this invention serves to give an
insulation layer of polyethylene which is free of
microvoids. The formation of micro-voids within the
insulation layer is usually attributable to the invasion
of steam during the curing process, using saturated steam
as the heating medium. But when the calcium oxide-
containing layer is provided over the insulation layer or
between the conductor and the insulation layer, any
invading steam can be caught or absorbed by the calcium
oxide, serving in this case as the moisture-absorbing
agent.

As is argued by appellant (brief, page 7), Yamamoto has
absolutely nothing to do with aeolian and galloping vibrations
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or vibration resistant electric power cables. Moreover, the
outer plastic compound layer (5) of Yamamoto apparently does
not have
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insulation qualities, but instead is formed of a
“semiconductive” plastic/resin compound extruded over the
insulation layer (3). See, for example, column 4, lines 62+ of
Yamamoto.
Powers and Shealy disclose uninsulated or air-insulated
high voltage vibration resistant overhead electrical
conductors having a generally oval or elliptically shaped
outer configuration twisted along its length so as to provide
a continuously varying profile to the wind which acts to
dampen aeolian and galloping vibrations of the conductor. The
oval or elliptical shape of these uninsulated conductors is
achieved using specific sizing and arrangements of wires and
twisting or spiraling of such wires along the length of the
conductor. Neither Powers nor Shealy discloses or suggests
any insulation on their conductor. Thus, these patents
clearly provide no teaching or suggestion of a cable
comprising a conductor having insulation thereon that has “an
axially continuously rotating oval or elliptical outer
periphery which provides an outer periphery of the cable such
that the aerodynamic forces acting on the outer periphery of
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the cable act in a continuously changing direction . . . , ”
as required in appellant’s independent claim 1 on appeal and
the claims which depend therefrom.
Like appellant, we observe that none of the three
references applied by the examiner teaches or suggests a
specifically shaped insulation for a conductor as in
appellant’s application which provides an outer periphery of
the cable that acts in the manner required in the claims on
appeal to reduce the tendency of the cable to undergo aeolian
and galloping vibrations. Indeed, a review of the applied
references reveals that none of these patents even teaches or
suggests an insulation layer forming the outer periphery of an
overhead electrical cable. In our view, the examiner has used
impermissible hindsight derived from appellant’s own teachings
in attempting to combine the circular electric power cable of
Yamamoto with the uninsulated conductors of Powers and Shealy
in an effort to arrive at appellant’s claimed vibration
resistant electrical cable. In this regard, we note that, as
our court of review indicated in In re Fritch, 972 F.2d 1260,
1266 n.15, 23 USPQ2d 1780, 1783-84 n.15 (Fed. Cir. 1992), it
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is impermissible to use the claimed invention as an
instruction manual or “template” to piece together isolated
disclosures and teachings of the prior art so that the claimed
invention is rendered obvious. Notwithstanding that the
examiner might deem the proposed modification to be “within
the level of ordinary skill in the art.” The mere fact that
some prior art references may be modified in the manner
suggested by the examiner does not make such modification
obvious unless the prior art suggested the desirability of the
modification. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). Here, the prior art relied upon
by the examiner contains no such suggestion.
Since we have determined that the teachings and
suggestions found in Yamamoto, Powers and Shealy would not
have made the subject matter as a whole of claims 1 through 4
and 8 through 11 on appeal obvious to one of ordinary skill in
the art at the time of appellant’s invention, we must refuse
to sustain the examiner’s rejection of those claims under 35
U.S.C. § 103(a).
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As for the examiner’s rejection of dependent claims 5
through 7 under 35 U.S.C. § 103(a) as being unpatentable over
Yamamoto, Powers, Shealy and Bahder, we have reviewed the
Bahder patent, but find nothing therein which provides for or
overcomes that which we have found lacking in the examiner’s
basic combination of Yamamoto, Powers and Shealy.
Accordingly, the examiner’s rejection of dependent claims 5
through 7 under 35 U.S.C. § 103(a) also will not be sustained.
In light of the foregoing, the decision of the examiner
to reject claims 1 through 11 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
Appeal No. 1998-2590
Application No. 08/255,083
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) INTERFERENCES
)
RICHARD B. LAZARUS )
Administrative Patent Judge )
CEF:hh
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WARE, FRESSOLA, VAN DER SLUYS &
ADOLPHSON
755 Main Street
P.O. Box 224
Monroe, CT 06468-0224