GENERAL CABLE TECHNOLOGIES CORPORATION et al.Download PDFPatent Trials and Appeals BoardOct 14, 20212020006169 (P.T.A.B. Oct. 14, 2021) Copy Citation 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. 15/349,522 11/11/2016 Sathish Kumar Ranganathan 39795-1041US02 3329 77001 7590 10/14/2021 ULMER & BERNE LLP c/o Diane Bell 600 Vine Street SUITE 2800 Cincinnati, OH 45202 EXAMINER CHAU, LINDA N ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 10/14/2021 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, SRINIVAS SIRIPURAPU, VIJAY MHETAR, RYAN M. ANDERSEN, and KURT ARTHUR WOOD1 ____________ Appeal 2020-006169 Application 15/349,522 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–14 and 21–33. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. BACKGROUND The subject matter on appeal relates to overhead conductors, and, in particular, to overhead conductors comprising particular fluorocopolymer 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as General Cable Technologies Corp. Appeal Br. 1. Appeal 2020-006169 Application 15/349,522 2 coating compositions. E.g., Spec. ¶ 2; Claim 1. Claim 1 is reproduced below from page 30 (Claims Appendix) of the Appeal Brief: 1. An overhead conductor comprising: one or more conductors each having an outer surface; and a coating layer on at least a portion of the outer surface of at least one of the conductors, the coating layer comprising a coating composition having a minimum film formation temperature (“MFFT”) of about 20 °C or less; and wherein the coating composition comprises a binder agent comprising: a fluorocopolymer comprising the polymerization product of vinylidene fluoride monomer and one or more unsaturated fluorinated monomers; and a non-fluorinated film-forming copolymer; and wherein the coating composition has a viscosity of about 15 sec to about 25 sec when measured using a Zahn cup number 3. REJECTIONS ON APPEAL The claims stand rejected under 35 U.S.C. § 103 as follows: 1. Claims 1, 2, 4–14, 21, 22, and 24–33 over Bonnet (US 2009/0155570 A1, published June 18, 2009) and Wood (US 2011/0118403 A1, published May 19, 2011). 2. Claims 3 and 23 over Bonnet, Wood, and Wille (US 2005/0239983 A1, published Oct. 27, 2005). ANALYSIS Claim 1 requires, inter alia, that “the coating composition has a viscosity of about 15 sec to about 25 sec when measuring using a Zahn cup number 3.” Appeal Br. 30. Appeal 2020-006169 Application 15/349,522 3 The Examiner provides two different explanations of how the prior art teaches or suggests that limitation. First, the Examiner finds that the viscosity would have been inherent in the coating composition of Bonnet and Wood. Final Act. 4. That position is unpersuasive because, as the Appellant points out in the Appeal Brief, see Appeal Br. 27, Table 4 of the Specification establishes that not all compositions that include the ingredients recited by claim 1 necessarily also have viscosities within the scope of claim 1. See Spec. 24. The Examiner does not meaningfully dispute that in the Examiner’s Answer. On this record, the Examiner’s findings concerning the viscosity requirement of claim 1 cannot be sustained on the basis of an inherency rationale. Second, the Examiner finds that it would have been obvious “to optimize the viscosity of the coating since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discovery optimum or workable ranges by routine experimentation.” Final Act. 4 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Upon consideration of the evidence and arguments of record, we determine that the Examiner has failed to establish prerequisites necessary to support an optimization rationale. Namely, a “routine optimization” result- effective variable analysis is not applicable “if there is no evidence in the record that the prior art recognized that particular parameter affected the result.” See In re Antonie, 559 F.2d 618, 620 (CCPA 1977); see also In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (discussing how the general rule of Aller “is limited to cases in which the optimized variable is a ‘result-effective variable.’”). Appeal 2020-006169 Application 15/349,522 4 In the Final Action, the Examiner fails to provide any citation to any reference relevant to establishing that viscosity is a result-effective variable in the context of the prior art at issue. See Final Act. 4. In the Appeal Brief, the Appellant identifies that deficiency in the Examiner’s analysis. See Appeal Br. 27 (“Furthermore, not only do Bonnet and Wood fail to disclose the claimed viscosity range, the cited references fail to attribute any importance to [viscosity].”). In the Examiner’s Answer, the Examiner again fails to supply a rationale adequate to support a rejection based on routine optimization. See Ans. 8 (merely referencing the discussion in the Final Action). On this record, we must reverse the rejection because the Examiner has not provided adequate findings concerning viscosity as a result-effective variable. See Antonie, 559 F.2d at 620; see also Applied Materials, 692 F.3d at 1295. We decline to attempt to provide such findings in the first instance ourselves. Because all other claims on appeal include the same viscosity limitation as claim 1, either directly or through claim dependency, we likewise must reverse the Examiner’s rejections of claims 2–14 and 21–33. Appeal 2020-006169 Application 15/349,522 5 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–14, 21, 22, 24– 33 103 Bonnet, Wood 1, 2, 4–14, 21, 22, 24–33 3, 23 103 Bonnet, Wood, Wille 3, 23 Overall Outcome 1–14, 21–33 REVERSED Copy with citationCopy as parenthetical citation