General Cable Technologies Corporation

Patent Trials and Appeals Board

May 19, 2020

2019003731 (P.T.A.B. May. 19, 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. 14/185,429 02/20/2014 Sathish K. RANGANATHAN 110938.00448 1017 77001 7590 05/19/2020 ULMER & BERNE LLP c/o Diane Bell 600 Vine Street SUITE 2800 Cincinnati, OH 45202 EXAMINER VARGHESE, ROSHN K ART UNIT PAPER NUMBER 2896 NOTIFICATION DATE DELIVERY MODE 05/19/2020 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 K. RANGANATHAN, VIJAY MHETAR, CODY R. DAVIS, and SRINIVAS SIRIPURAPU Appeal 2019-003731 Application 14/185,429 Technology Center 2800 Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-6, 8, 10, 11, 13-21, and 45. See Final Act. 5, 17, 22, 23, 24, 26, 27. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the assignee of the present application, General Cable Technologies Corporation. Appeal Br. 1. Appeal 2019-003731 Application 14/185,429 2 CLAIMED SUBJECT MATTER “The present disclosure generally relates to a coated overhead conductor which better radiates heat away, thereby reducing operating temperature.” Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An overhead conductor comprising an assembly including one or more conductive wires, wherein the assembly comprises an outer surface coated with an electrochemical deposition coating such that the electrochemical deposition coating contacts at least one of the one or more conductive wires, the electrochemical deposition coating comprising: a first metal oxide, wherein the first metal oxide is not aluminum oxide; wherein the electrochemical deposition coating defines a single outer layer having a thickness of 12 microns to 25 microns; and wherein the operating temperature of the overhead conductor is lower than the operating temperature of a bare conductor by at least 5 °C, when uncoated and the same current is applied. Claims Appendix (Appeal Br. 31). REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Dorst Sawada 609 Sawada 851 Inazawa Gentry Jang US 2,650,975 US 5,091,609 US 5,336,851 US 5,372,886 US 5,554,826 US 6,136,434 Sept. 1, 1953 Feb. 25, 1992 Aug. 9, 1994 Dec. 13, 1994 Sept. 10, 1996 Oct. 24, 2000 Johnson Kamiyama US 2005/0279527 A1 US 2012/0267141 A1 Dec. 22, 2005 Oct. 25, 2012 Appeal 2019-003731 Application 14/185,429 3 REJECTIONS The Examiner rejects claims 1, 2, 4-6, 10, 13-15, and 19-21 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dorst and Sawada 609. Final Act. 5. The Examiner rejects claims 3 and 45 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dorst, Sawada 609, and Sawada 851. Final Act. 17. The Examiner rejects claim 8 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dorst, Sawada 609, and Jang. Final Act. 22. The Examiner rejects claim 11 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dorst, Sawada 609, and Inazawa. Final Act. 23. The Examiner rejects claim 16 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dorst, Sawada 609, Sawada 851, and Johnson. Final Act. 24.2 The Examiner rejects claim 17 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dorst, Sawada 609, and Gentry. Final Act. 26. The Examiner rejects claim 18 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Dorst, Sawada 609, and Kamiyama. Final Act. 27. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced 2 The Examiner does not explicitly list Sawada 851 in the rejection of claim 16. Final Act. 24. Because claim 16 depends from claim 3 which is rejected based on Dorst, Sawada 609, and Sawada 851 (Final Act. 17), we consider the omission of Sawada 851 in the rejection of claim 16 as harmless error. See Final Act. 24 (rejecting claim 16 over Dorst and Sawada “as applied to claim 3” and in further view of Johnson). Appeal 2019-003731 Application 14/185,429 4 thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner’s § 103 rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claim 13 In support of the rejection, the Examiner finds that Dorst teaches an overhead conductor having an electrochemical deposition coating that defines a single outer layer. Final Act. 6; Ans. 26 (citing Dorst 6:55-58 and Fig. 1 for an electrochemical deposition process). The Examiner finds that the “electrochemical deposition coating” recited in claim 1 “does not represent product structure but only refers to the process by which the coating is formed” and is not structurally distinguishable from that of Dorst. Final Act. 8. Appellant, on the other hand, argues that “it is believed that ‘electrical deposition’ limits the coating structure” and refers to “Table 2 of the present disclosure [which] shows that a metal oxide coating applied through electrochemical deposition outperformed a metal oxide coating that was applied to a substrate by a brush.” Appeal Br. 23 (asserting that Table 2 3 Appellant does not separately argue for claims 2-6, 8, 10, 11, 13-21, and 45 and they stand or fall with claim 1. See Appeal Br. 21-30; see also 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2019-003731 Application 14/185,429 5 serves to “illustrate that the electrochemical deposition process is expected to impart distinctive structural characteristics to the overhead conductor”). Appellant’s argument is unpersuasive for various reasons. From the outset, Table 2 of the Specification provides only “Titanium Oxide” (applied by electrochemical deposition) as the coating of the inventive example. Table 2 does not provide that the method of applying the coating results in a structural difference. In any event, the recited “electrochemical deposition coating” is not limited to titanium oxide. The Examiner’s finding remains undisputed that Dorst discloses various oxide coatings including titanium oxide. Compare Final Act. 6, with Appeal Br. 23. The Examiner’s finding that Dorst describes an electrochemical deposition process is likewise unchallenged. Compare Final Act. 2 (citing Dorst 6:55-58, Fig. 1), with Appeal Br. 23-24; compare Ans. 26 (finding and citing the same), with Reply Br. 1-5. Moreover, the Specification does not support Appellant’s argument. The Specification provides that “[e]lectrochemical deposition of a metal oxide is one method for coating the surface of an overhead conductor.” Spec. 4 (cited as written description support at Appeal Br. 2). The Specification goes on to provide an embodiment of the electrochemical deposition coating method. Id. The Specification does not provide that a coating applied by electrochemical deposition - as opposed to a different method - results in a structural difference. Appellant cites Table 2 of the Specification which compares a coating of sodium silicate and zinc oxide with a titanium oxide coating but Appellant does not explain why the structural differences in the two coatings are solely due to the difference in Appeal 2019-003731 Application 14/185,429 6 coating methods - as opposed to different starting materials. See Appeal Br. 23. Lastly, whether Table 2 of the Specification shows that the titanium oxide coating applied by electrochemical deposition “outperformed” other examples as asserted by Appellant does not show that the recited “electrochemical deposition coating” is structurally distinct from the prior art. To the extent that Appellant attempts to show unexpected results, Appellant’s argument - solely based on a titanium oxide coating - is incommensurate in scope with the claim language. Appellant next argues that Dorst does not teach or suggest “a single outer layer having a thickness of 12 microns to 25 microns” as recited in claim 1. Appeal Br. 24. We are not persuaded by this argument which does not address the Examiner’s finding - that Sawada 609 (instead of Dorst) teaches a conductor having an electrochemical deposition coating as a single outer layer with a thickness of 15 micrometers. Final Act. 7. Appellant’s argument that Sawada 609 “fails to disclose an electrochemical deposition coating defining a single outer layer” is similarly unpersuasive because it does not address the Examiner’s findings in support of the rejection. Appeal Br. 24 (emphasis omitted). The Examiner cites Dorst - instead of Sawada 609 - in support of the prior art teaching of the recited “single outer layer.” Final Act. 6 (citing Dorst Fig. 2). As the Examiner points out, claim 1 reciting “comprising” is an open-ended claim and does not preclude additional layers from the coating. Ans. 28. Appellant’s argument that Sawada 609 describes a dual layer coating (Appeal Br. 25-27) is also unpersuasive because all of the features of Sawada 609 need not be bodily incorporated into Dorst and the skilled Appeal 2019-003731 Application 14/185,429 7 artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Appellant argues that Sawada 609 teaches away from the recited single outer layer but does not explain why Sawada 609 “suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.” See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The record before us does not show that Sawada 609 suggests that a single layer coating would not be operative. See Appeal Br. 26 (only asserting, without evidence, that “one of ordinary skill in the art would not look to the teachings of Sawada ‘609 for properties that are to be attributed to a single outer layer”). Appellant also appears to argue that the Examiner misconstrues the recited “single outer layer.” Appeal Br. 28-29. Although it is unclear what Appellant’s proposed definition is, the record supports the Examiner’s finding that both Dorst and Sawada 609 teach a coating having a single outer layer. More specifically, the Examiner cites coating 41 of Dorst as the recited “single outer layer” which Appellant does not dispute. Compare Final Act. 6, with Appeal Br. 22-30. The Examiner also cites and annotates Sawada 609 Fig. 2 for the teaching. Ans. 33. As the Examiner points out, an “outer layer” is a relative term and claim 1 does not require the “outer layer” to be the “outermost” layer. Final Act. 4. Nor does the recited “single outer layer” limit the open-ended claim 1 from having additional layers. “In the patent claim context[,] the term ‘comprising’ is well understood to mean ‘including but not limited to’.” CIAS, Inc. v. Alliance Gaming Corp., 504 Appeal 2019-003731 Application 14/185,429 8 F.3d 1356, 1360 (Fed. Cir. 2007). We are therefore not persuaded that the Examiner reversibly erred in this aspect of the obviousness analysis. Appellant’s remaining arguments state no more than the additional references (such as Sawada 851, Jang, etc.) do not “remedy the deficiencies” of Dorst and Sawada 609. Appeal Br. 29-30. No reversible error has been identified with regard to the Examiner’s findings based on these additional references. CONCLUSION The Examiner’s rejections are affirmed. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-6, 10, 13-15, 19-21 103(a) Dorst, Sawada 609 1, 2, 4-6, 10, 13-15, 19-21 3, 45 103(a) Dorst, Sawada 609, Sawada 851 3, 45 8 103(a) Dorst, Sawada 609, Jang 8 11 103(a) Dorst, Sawada 609, Inazawa 11 16 103(a) Dorst, Sawada 609, Sawada 851, Johnson 16 17 103(a) Dorst, Sawada 609, Gentry 17 18 103(a) Dorst, Sawada 609, Kamiyama 18 Overall Outcome: 103(a) 1-6, 8, 10, 11, 13-21, 45 Appeal 2019-003731 Application 14/185,429 9 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED