GENERAL CABLE TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Jun 15, 2020

2019004478 (P.T.A.B. Jun. 15, 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.
14/592,520 01/08/2015 Sathish Kumar RANGANATHAN 39795-1024US02 7758
77001 7590 06/15/2020
ULMER & BERNE LLP
c/o Diane Bell
600 Vine Street
SUITE 2800
Cincinnati, OH 45202
EXAMINER
MURATA, AUSTIN
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
06/15/2020 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):
ipdocketing@ulmer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SATHISH KUMAR RANGANATHAN, VIJAY MHETAR,
SRINIVAS SIRIPURAPU, CODY R. DAVIS, and FRANK E. CLARK
____________

Appeal 2019-004478
Application 14/592,520
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
BRIAN D. RANGE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–8 and 10–19 under 35 U.S.C. § 103
as unpatentable over the basic combination of Stowe (US 2004/0016503 A1;
publ. Jan. 29, 2004) with Bauco (US 2015/0049992 A1; publ. Feb. 19,
2015).2 The Examiner also rejects claim 1 and 9 under 35 U.S.C. § 103 as

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies General Cable Technologies Corporation
as the real party in interest (Appeal Br. 1).
2 While the Examiner rejects dependent claims 3, 11, and 18 using an
additional reference for each claim as listed in the Summary Table at the
end, no discussion of these references is needed for disposition of this
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unpatentable over Stowe with Ryan (US 2010/0202741 A1; publ. Aug. 12,
2010).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim and is illustrative of the subject
matter on appeal (emphasis added to highlight key disputed limitations):
1. A method of increasing the emissivity of an overhead
conductor to lower its operating temperature, the method
comprising:
surrounding an overhead conductor with a polymer
composition, wherein the polymer composition comprises one
or more of polyvinylidene difluoride and a cross-linked
polyethylene, and wherein the polymer composition is
essentially solvent free; and
cooling the polymer composition to form a polymeric
coating layer surrounding the overhead conductor; and
wherein the polymeric coating layer contacts at least a
portion of the overhead conductor and defines a single outer
layer having a thickness of about 10 microns to about 1,000
microns and the overhead conductor operates at a lower
temperature than a bare overhead conductor when tested in
accordance with ANSI C119.4; and
wherein the method is continuous.

Appellant’s arguments focus on claim 1 (see generally Briefs).
Accordingly, we shall focus on claim 1.

appeal. While the Examiner’s statement of the rejection does not include
dependent claim 14, this is harmless error, since claim 14 is addressed in the
body of the rejection (Non-Final Act. 3, 5).
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OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Non-Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s main contentions are that each combination of Stowe/
Bauco or Stowe/Ryan is improper because (1) neither of Bauco or Ryan
disclose that its polymer jacket directly contacts the wire (Appeal Br. 17,
22), (2) neither of Bauco or Ryan contemplate increasing the emissivity of
an overhead conductor as claimed herein (Appeal Br. 18; Reply Br. 5), and
(3) each of Bauco and Ryan teach away from any combination with Stowe
because of these differences, and because Bauco heats its cable (Appeal Br.
17, 22). Appellant also contends that the Examiner’s reliance on paragraph
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27 of Bauco that teaches application of its invention to power lines is
misplaced (Reply Br. 2, 3).
Appellant’s arguments are not persuasive of reversible error for
reasons detailed by the Examiner (Ans. 4–6).
Appellant’s arguments fail to consider the breadth of the claim
language, the applied prior art as a whole, and the inferences that one of
ordinary skill in the art would have made therefrom. Claim 1 requires no
minimum amounts of the two specific polymer options listed herein.3 There
is no dispute that Stowe discloses the method steps claimed of encasing a
metal wire within a polymer, except for describing the use of one of the two
specific polymers listed in claim 1 and not explicitly describing increasing
the emissivity of the overhead conductor (that is, a polymer encased wire
versus a bare wire). Bauco and Ryan are merely relied upon for their
descriptions of appropriate polymers to use for jackets that encase various
types of wires (Bauco ¶ 57; Ryan ¶ 38; Ans. 4, 6).
Appellant has not shown reversible error in the Examiner’s position
that it would have been obvious for one of ordinary skill to have used known
polymer wire coating/jacket material(s) as exemplified in either of Bauco or
Ryan for the polymeric coating of the electrically conductive wires of Stowe
(e.g., copper and aluminum) (generally Ans.). See KSR, 550 U.S. at 417 (the
predictable use of known prior art elements or steps performing the same
functions they have been known to perform is normally obvious; the

3 Appellant’s Specification discloses that a non-limiting list of a vast array of
polymers are suitable for use in the invention (e.g., Spec. ¶¶ 25, 26, 28).
Appellant has not shown or argued that there is any criticality with respect to
the polymer choice.
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combination of familiar elements/steps is likely to be obvious when it does
no more than yield predictable results); Ball Aerosol & Specialty Container,
Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the “inferences and creative steps,” as well as routine steps, that an
ordinary artisan would employ) (emphasis omitted); see also In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is [generally considered]
prima facie obvious to combine two compositions each of which is taught by
the prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose.”).4
Likewise, any argument that may be considered as a lack of
motivation to combine the cited art is also unpersuasive for the reasons
given above. That is, the arguments fail to account for “the inferences and
creative steps that a person of ordinary skill in the art would employ.” See
KSR, 550 U.S. at 418. Furthermore, the Supreme Court has stated that it is
error to “look only to the problem the patentee [or applicant] was trying to

4 Appellant’s arguments that Bauco and Ryan teach away from use of its
polymer in Stowe (e.g., Appeal Br. 10) is not persuasive. Whether the prior
art teaches away from the claimed invention is a question of fact, In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is well established that a
prior art reference must be considered in its entirety, i.e., as a whole, when
determining if it would lead one of ordinary skill in the art away from the
claimed invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1550 (Fed. Cir. 1983). One of ordinary skill in the art would have
readily appreciated that the polymers of Bauco and Ryan may be used as a
wire polymeric coating as discussed in Stowe. Cf. In re Susi, 440 F.2d 442,
446 n.3 (CCPA 1971) (Disclosed examples and preferred embodiments do
not constitute a teaching away from a broader disclosure or non-preferred
embodiments).

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solve.” KSR, 550 U.S. at 420; see also In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law
does not require that the references be combined for the reasons
contemplated by the inventors.”). Appellant’s argument that one would not
combine Bauco or Ryan with Stowe because of various specific features of
those references is not persuasive. In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art”); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures”).
Appellant’s argument that the references do not discuss increasing
emissivity is not persuasive of reversible error in the Examiner’s rejection.
The discovery of a previously unappreciated property of a known or obvious
composition is not a sufficient basis for patentability. Cf. In re Dillon, 919
F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“In particular, the statement [in In
re Wright] that a prima facie obviousness rejection is not supported if no
reference shows or suggests the newly-discovered properties and results of a
claimed structure is not the law.”) (overruling-in-part In re Wright, 848 F.2d
1216 (Fed. Cir. 1988)); also Dillon, 919 F.2d at 692 (explaining that where
the prior art gives reason or motivation to make the claimed invention, the
burden and opportunity to produce evidence such as unexpected results then
falls on an applicant to rebut that prima facie case).
Accordingly, we sustain the Examiner’s rejections of independent
claims 1 as well as all claims dependent thereon, noting that no dependent
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claims are separately argued, even those separately rejected (Appeal Br.
generally).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–8,
12–17, 19
103 Stowe, Bauco 1, 2, 4–8,
12–17, 19

3 103 Stowe, Bauco,
Galbraith
3
11 103 Stowe, Bauco,
Keogh
11
18 103 Stowe, Bauco,
Smedberg
18
1, 9 103 Stowe, Ryan 1, 9
Overall
Outcome

1–9,
11–19

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED