Frank Schmidt et al.

Patent Trials and Appeals Board

Nov 10, 2020

11827654 - (D) (P.T.A.B. Nov. 10, 2020)

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.
11/827,654 07/12/2007 Frank Schmidt 979-320 9905
39600 7590 11/10/2020
SOFER & HAROUN LLP.
215 Lexington Avenue, Suite 1301
NEW YORK, NY 10016
EXAMINER
NGUYEN, CHAU N
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
11/10/2020 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):
dockets@soferharoun.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK SCHMIDT, CHRISTIAN FROHNE, RAINER SOIKA,
KLAUS SCHIPPL, and ARNAUD ALLAIS
____________

Appeal 2020-000596
Application 11/827,654
Technology Center 2800
____________

Before JEFFREY T. SMITH, DONNA M. PRAISS, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1 and 4.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 This Decision refers to the Specification filed July 12, 2007 (“Spec.”);
Non-Final Office Action dated Mar. 15, 2019 (“Non-Final Act.”); Appeal
Brief filed June 17, 2019 (“Appeal Br.”); and Examiner’s Answer dated
Aug. 23, 2019 (“Ans.”). There is no reply brief.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Nexans as the real party in interest.
Appeal Br. 2.
3 Claims 2 and 3 are cancelled. Appeal Br. 15.
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CLAIMED SUBJECT MATTER
The invention relates to a system having a superconductive cable
which consists of a superconductive inner conductor, a screen arranged
concentrically therewith, and a dielectric applied between the inner
conductor and the screen. Spec. 1:14–28; Abstract. Claim 1 illustrates the
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief:
1. System having a superconductive cable and cryostat: said
system comprising:
a superconductive cable having
a superconductive inner conductor;
a metallic screen arranged concentrically therewith; and
a dielectric applied between the inner conductor and the
screen such that said metallic screen is the outermost layer of said
superconductive cable,
wherein said metallic screen is constructed from a
superconductive part and a part made from an electrically highly
conductive material enclosing said superconductive part,
wherein said superconductive cable is enclosed within said
cryostat, along with free space, used for feeding a liquid
refrigerant through, said cryostat being made from two stainless
steel tubes extending concentrically with one another and
separated from one another by an intermediate space, which is
evacuated and provided with superinsulation,
wherein either an outer surface of said metallic screen or
an inside surface of an inner stainless steel tube of said cryostat
includes an additional liner layer thereover that is both made
of an abrasion-resistant material with a lower friction
coefficient compared with steel, and wherein said additional
liner layer is permeable for the refrigerant to the extent that said
refrigerant can penetrate as an impregnating medium into the
dielectric.
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Appeal Br. 15 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Jachimowicz US 4,031,310 June 21, 1977
Nassi et al. (“Nassi”) US 2002/0019315 A1 Feb. 14, 2002
REJECTION
On appeal, the Examiner maintains (Ans. 4) the rejection of claims 1
and 4 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Nassi in
view of Jachimowicz. Non-Final Act. 3.
OPINION
The Examiner’s rejection of claims 1 and 4 relies on Nassi for
teaching the majority of the claim limitations, including a superconductive
cable having a liner layer (mechanical protective element 7). Id. at 3 (citing
Nassi ¶ 74, Fig. 1). Regarding “an additional liner layer . . . made of an
abrasion-resistant material with a lower friction coefficient compared with
steel” and “wherein said additional liner layer is permeable for the
refrigerant,” the Examiner relies principally on Jachimowicz for teaching
those limitations. Id. at 3–4. In particular, the Examiner finds Jachimowicz
teaches an electrical cable core for cryogenic cable made of two layers of
metal strips (strips 18) and that the metal strips can be made of bronze. Id. at
4 (citing Jachimowicz 3:7–9); see also Jachimowicz, Fig. 3 (showing a first
layer of core 10 having helically wound metal strips 18).
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The Examiner also finds that, according to Appellant’s Specification,
bronze is used for the liner layer in the form of a strip wound around the
conductor of the cable with a gap. Non-Final Act. 3–4; Spec. 4:31–35; see
also Spec. 6:10–14 (disclosing “liner layer 10 made of abrasion-resistant
material with a lower friction coefficient compared with steel . . . is
permeable for the refrigerant”), 6:21–22 (“Bronze . . . is particularly
advantageously used for the liner layer 10.”).
Based on the above findings, the Examiner concludes:
It would have been obvious to one skilled in the art to
modify the liner layer (7) of Nassi et al. to comprise an
abrasion-resistant material (bronze) with a lower friction
coefficient compared with steel since it is taught by
Jachimowicz that [] such layer serves as sides of a hollow
core [and] . . . bronze is a suitable material for such
function.
Non-Final Act. 4. See also Ans. 4–5 (stating “the fact that Jachimowicz
teaches bronze being a suitable material for being used as the sides of a
hollow core, . . . one of ordinary skill in the art would have motivated to use
bronze . . . for layer 7 of Nassi”). The Examiner also concludes it would
have been obvious to one skilled in the art to modify Nassi’s liner layer “to
be permeable for the refrigerant (layer formed of wound strips with gaps) as
taught by Jachimowicz to improve the cooling of the cable.” Non-Final
Act. 4–5.
Appellant argues the Examiner’s rejection should be reversed because
it would not have been obvious to one of ordinary skill in the art to combine
the teachings of Nassi with Jachimowicz to arrive at the claimed “additional
liner layer.” Appeal Br. 11. Appellant contends the cited portions of the
references do not support and the Examiner does not adequately explain why
a person of ordinary skill in the art would have been motivated to modify
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Nassi’s mechanical protective element 7 to be made of bronze in view of
Jachimowicz’s disclosures. Id. at 12–14. Thus, Appellant contends the
Examiner’s rejection is based on impermissible hindsight. Id. at 13, 14
(arguing “it appears that the bronze material of Jachimowicz is simply being
applied to layer 7 of Nassi by using the present claim 1 as a blueprint”).
We agree with Appellant’s argument. On this appeal record, the
Examiner does not provide the requisite factual basis and/or technical
reasoning sufficient to support a conclusion it would have been obvious to
one of ordinary skill to combine the teachings of Nassi and Jachimowicz to
arrive at the claimed “additional liner layer.” See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (requiring “reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In particular, we determine the
Examiner’s modification of Nassi’s mechanical protective element 7 to be
made of bronze in view of Jachimowicz’s disclosure is not supported by a
preponderance of the evidence. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (holding that the examiner bears the initial burden of establishing a
prima facie case of obviousness).
Rather, the Examiner’s modification of Nassi’s element 7 to be made
of bronze appears to be based on improper hindsight in view of disclosures
regarding the claimed invention Appellant provides in its Specification. See
Spec. 4:31–35, 6:10–14, 6:21–22. As Appellant points out (Appeal
Br. 13–14), although Nassi describes a superconducting cable structure
having a mechanical protective element 7 (Nassi ¶ 74, Fig. 1), Nassi does
not describe or indicate the specific function of that element or what material
the element is made of.
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As Appellant also points out (Appeal Br. 14), although Jachimowicz
describes a hollow cable core (core 10) made of two layers of helically
wound strips of metal (strips 18) and teaches that the strips can be made of
bronze (Jachimowicz, Abstract, 3:7–9, Fig. 3), the Examiner does not
identify or direct us to any specific disclosure or discussion in the portions of
Jachimowicz the Examiner cites and relies on in the rejection sufficient to
explain how or why one of ordinary skill in the art would have modified
Nassi’s mechanical protective element 7 to be made of bronze. The fact that
Nassi and Jachimowicz relate to cryostat/cryogenic cables having hollow
cores, without more, does not suggest or explain why one of ordinary skill in
the art would have had reason to modify Nassi’s mechanical protective
element 7 to be made of bronze, as opposed to, for example, steel or some
other metal; or why one of ordinary skill in the art would have had a
reasonable expectation that a component made of bronze would have been
suitable to function and serve as the mechanical protective element 7 in
Nassi’s structure.
The Examiner’s statement that it is “within the general skill of a
worker in the art to select a known material on the basis of its suitability for
the intended use as a matter of obvious design choice” (Non-Final Act. 4) is
conclusory and, without more, insufficient to sustain the Examiner’s
rejection. Kahn, 441 F.3d at 988 (holding that rejections “cannot be
sustained by mere conclusory statements”).
The Examiner’s statement that “Jachimowicz suggests that bronze is a
suitable material for being used as the sides of a hollow core” (Ans. 5) is
equally insufficient because it does not meaningfully address Appellant’s
principal argument that the Examiner does not adequately explain why one
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of ordinary skill would have been led to modify Nassi’s mechanical
protective element 7 based on Jachimowicz’s teachings in this regard.
Contrary to what the Examiner’s rejection seems to imply, the fact
that it may have been technically possible for Nassi’s mechanical protective
layer 7 to be made of bronze, without more, does not necessarily mean or
suggest it would have been obvious to one of ordinary skill in the art to do
so in view of Jachimowicz’s disclosure. See Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.”) (emphasis in original).
We, therefore, do not sustain the Examiner’s rejection of claim 1.
Because claim 4 depends from claim 1, we also do not sustain the
Examiner’s rejection of that claim for the same reasons as claim 1.
Accordingly, we reverse the Examiner’s rejection of claims 1 and 4
under pre-AIA 35 U.S.C. § 103(a) as obvious over Nassi and Jachimowicz.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 4 103(a) Nassi, Jachimowicz 1, 4
REVERSED