Sjur Kristian. Lund

Patent Trials and Appeals Board

Mar 2, 2021

2018003234 (P.T.A.B. Mar. 2, 2021)

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.
13/270,431 10/11/2011 Sjur Kristian Lund 979-571 3504
39600 7590 03/02/2021
SOFER & HAROUN LLP.
215 Lexington Avenue, Suite 1301
NEW YORK, NY 10016
EXAMINER
HOANG, TU BA
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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):
dockets@soferharoun.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SJUR KRISTIAN LUND

Appeal 2018-003234
Application 13/270,431
Technology Center 3700
____________

Before SUSAN L. C. MITCHELL, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.

MITCHELL, 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 1–5 and 7–12.2 We have jurisdiction
under 35 U.S.C. § 6(b).

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 Nexans.
Appeal Br. 2.
2 The appeal is taken from the Examiner’s decision as set forth in the
Non-Final Office Action dated October 24, 2016 (“Non-Final Act.”).
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The Examiner rejected the claims on appeal as unpatentable over
various combinations of the prior art. Appellant asserts that the prior art
does not render obvious the claimed subject matter. We find that the
Appellant has failed to show the Examiner erred in combining the prior art
references to arrive at the claimed subject matter. Thus, we sustain the
obviousness rejections over the prior art.
We affirm.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to direct electrical heating (DEH)
flow systems. Specification (October 11, 2011) (“Spec.”), at 1:9.
Specifically, “[t]he present invention seeks to provide a more robust and
economical direct electrical heating flow system,” by including a cable
disposed along a flow pipe for heating or monitoring the flow pipe where the
cable contains a soft bedding under the copper wires of the conductive
region. Id. at 2:14–31.
The Specification further provides that:
When the cable is exposed to impact forces, the copper wires
are allowed to decrease the pitch diameter and the layer of
copper wires will be able to flex from a circular to oval shape.
Due to this, the other material in the cable can absorb the
impact energy.
The soft bedding under the copper wires allows the
copper wires to decrease the pitch diameter when exposed to an
axial load. The copper wires will be stranded with a short lay-
length. The minimum lay angle will typically be 17-20
degrees. A high lay angle will give a short lay length, hence a
more flexible (low bending stiffness) power phase. The high
lay-angle will enable the copper wires to squeeze harder on the
soft bedding when the cable is exposed to an axial load. Hence,
the copper wires are able [to] decrease the pitch diameter
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[which] will lead to axial elongation of the copper in the power
phase and the tensions in the copper wires are kept below
critical limit. When the cable itself can follow the flow line[’]s
length variation caused by temperature variation it is not
necessary to install the cable with an excess length.
Id. at 2:31–3:8.
Claim 1, the sole independent claim before us, illustrates the subject
matter on appeal and is reproduced below.
1. A direct electrical heating flow system comprising:
at least one flow pipe; and
at least one cable disposed along said at least one flow pipe
configured to either heat or monitor or both, said at least one
flow pipe, wherein the cable includes[:]
a steel tube, the steel tube forming an optical fibre
waveguide region, with at least one optical fibre waveguide
configured to convey at least one information-bearing signal;
an inner conductive region surrounded by an annular
insulating region and, peripheral thereto, an outer annular
conductive region; and
said inner conductive region having a plurality of wires
stranded with a first lay angle around said steel tube,
a soft deformable sheath located between said steel tube and
the plurality of wires of said inner conductive regions, said soft
sheath forming a deformable bedding configured and arranged
such that, when said cable is under axial stress, it allows said
plurality of stranded wires to decrease their pitch diameter by
pressing into said soft sheath.
Appeal Br. 25, Claims Appendix.
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EVIDENCE
Name Reference Date
Bremnes US 7,381,900 B2 June 3, 2008
Varkey US 7,603,011 B2 Oct. 13, 2009
Batlle i Ferrer US 8,699,839 B2 April 15, 2014
REJECTIONS
The Non-Final Office Action includes the following rejections:
1. Claim 9 is rejected under 35 U.S.C. § 112, second paragraph,
as indefinite;3
2. Claims 1–3 and 9–12 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Bremnes and Batlle i Ferrer;
3. Claims 4, 7, and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bremnes, Batlle i Ferrer, and obvious
design choice; and
4. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Bremnes, Batlle i Ferrer, obvious design choice, and
Varkey.

3 Because Appellant did not appeal any rejection of claim 9 and agreed to
cancel claim 9 upon a successful appeal as to another claim, see Appeal
Br. 11, the Examiner did not further address the rejections of claim 9 under
35 U.S.C. §§ 112 ¶ 2 or 103(a) in the Answer. See Ans. ¶ 24. Therefore, we
summarily affirm the rejections of claim 9.
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ANALYSIS
Unpatentability over Bremnes and Batlle i Ferrer (Claims 1–3 and 9–12)4
The Examiner finds that Bremnes teaches each limitation of claim 1
except the following:
(1) a steel tube, the steel tube forming an optical fibre
waveguide region, with at least one optical fibre waveguide
configured to convey at least one information-bearing signal;
(2) said inner conductive region having a plurality of wires
stranded with a first lay angle around said steel tube; and
(3) a soft deformable sheath located between said steel tube and
the plurality of wires of said inner conductive regions, said soft
sheath forming a deformable bedding configured and arranged
such that, when said cable is under axial stress, it allows said
plurality of stranded wires to decrease their pitch diameter by
pressing into said soft sheath.
Non-Final Act. 4–5. The Examiner finds these elements taught in
Batlle i Ferrer. See id. at 5–6. The Examiner concludes that “it would have
been obvious to someone with ordinary skill in the art at the time of the
invention was made to modify Bremnes with [Batlle i Ferrer], by adding to
the central conductor 1, FIG. 2A of Bremnes, the buffer tube 110; stainless
steel tubes housing optical fibers, C1L56-63; and layer 115 and layer 120 of
[Batlle i Ferrer], to provide protection from heat and rodents (C2L11 –
C3L10 of [Batlle i Ferrer]) and mechanical protection.” Id. at 6.
We initially point out that, as the Examiner noted, much of
Appellant’s argument for patentability involves elements not found in the

4 Appellant does not present separate arguments for patentability of any of
the dependent claims in rebutting this rejection. See Appeal Br. 11, 24.
Thus, the dependent claims stand or fall with claim 1 from which each of
these claims ultimately depend. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
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claims. For instance, Appellant touts the claimed subject matter “makes it
possible to make cables including both electrical wires and optical fiber
cables and capable of protecting the optical fiber cables against the damages
potentially caused by tensile forces applied to the cable, and showing a
reduced diameter and a more light structure compared to a cable according
to Bremnes.” Appeal Br. 15; see also Appeal Br. 16–17 (stating Batlle i
Ferrer “doesn’t disclose a cable intended to show a given tensile strength,”
and it “doesn’t teach anything about problems of tensile strength regarding
cables including both electrical wires and optical fiber”); Ans. ¶¶ 26, 27, 29,
31. Claim 1 does not specify the claimed cable has any particular tensile
strength, or that the cable is of a reduced diameter or a more light structure
than other similar cables. See Appeal Br. 25 (Claims Appendix).
Appellant also sets forth several reasons why one of ordinary skill in
the art would have no reason to combine the teachings of Bremnes and
Batlle i Ferrer to arrive at the claimed subject matter. Appeal Br. 12–24.
First, Appellant states that “Bremnes is not focused on the same problem and
solution as the present claims and consequently does not have the elements
as claimed in claim 1.” Id. at 12. For instance, Appellant asserts, feeder
cable 16 of Bremnes that most closely resembles the claimed subject matter
provides an alternative solution by achieving mechanical protection of the
elements of its cable by armoring layer 7, not the wires forming the
conductive regions or the optical fiber cables as in the claimed subject
matter. Id. at 13–14. Appellant states “[i]n the present cable, such
protection is achieved by locating the central steel tube housing fiber cables
in the core of the cable and by the cooperation of the stranded wires making
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the inner conductive region and the soft sheath located between the central
steel tube housing fiber cables and the inner region.” Id. at 14.
We do not find Appellant’s argument persuasive. The Examiner is
not relying on the teachings of Bremnes for the steel tube, the inner
conductive region, or the soft deformable sheath, but on the teachings of
Batlle i Ferrer for such elements. See Non-Final Act. 4–5. Therefore
Appellant’s critique of the teachings of Bremnes alone in relation to such
limitations is inapposite and does not inform us of Examiner error. Also,
neither the references nor the alleged invention at issue has to be focused on
solving the same problem for the references’ respective teachings to be
combined by one of ordinary skill in the art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420–21 (2007)
(stating with respect to applying teachings of art solving a different problem:
“Common sense teaches, however, that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle. . . . A person of ordinary skill is also a person or ordinary
creativity, not an automaton.”).
Appellant states that Batlle i Ferrer does not cure the deficiencies of
the teachings of Bremnes as it “doesn’t disclose a cable intended to show a
given tensile strength.” Appeal Br. 16. Specifically, Appellant asserts that:
Rather [Batlle i Ferrer] discloses a device (earth cable
100) which is not in direct relation to the field of direct
electrical heating flow systems and discloses a cable having
only a core region (105) housing optical fibers in a buffer tube
(110) surrounded by an external annular conductive layer
comprising stranded wires (130) which forms the external layer
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of the cable. The cable disclosed in [Batlle i Ferrer] also has a
first annular layer (115) of a water blocking located around the
buffer tube and a second annular layer (120) of thermally
conducting polymeric material located between the first annular
layer and the outer conductive layer material.
[Batlle i Ferrer] also discloses a cable which external
layer is formed of wires arranged around the core buffer tube in
such a way that they make a continuous cover which prevents
the soil to get in contact with the fibers. In such an
arrangement the conductive wires are not able to elongate
under action of a tensile force.
Appeal Br. 16–17 (emphasis in original).
The Examiner asserted that the combination of the teachings of
Bremnes and Batlle i Ferrer discloses the claimed subject matter of the
rejected claims. See Non-Final Act. 3–7. Here, Appellant is inappropriately
attacking the teachings of the Batlle i Ferrer reference individually, which
does not show the non-obviousness of the rejected claims. See In re Keller,
642 F.2d 413, 425 (CCPA 1981). Also, the Examiner responds that
Batlle i Ferrer is analogous art because both Batlle i Ferrer and claim 1
involve a multi-layer cable, and therefore, Batlle i Ferrer is reasonably
pertinent to the particular problem with which the Appellant was concerned.
Ans. ¶ 30 (citing In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992)). We agree
with the Examiner that Batlle i Ferrer is analogous art as pertinent to the
problem with which Appellant was concerned.
As the Examiner noted, Appellant’s specific attack on whether Batlle i
Ferrer teaches an arrangement in which “the conductive wires are not able to
elongate under action of a tensile force” does not address directly a
limitation of the claims. See Ans. ¶ 31. We assume that Appellant is
referring to the claimed lay angle and pitch diameter of the wires of the
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claimed multi-layer cable as described in the inner conductive region and
soft deformable sheath limitations of claim 1. As we set forth above in the
description of the claimed subject matter, the Specification describes a high
lay angle/short lay length “will enable the copper wires to squeeze harder on
the soft bedding when the cable is exposed to an axial load. Hence, the
copper wires are able [to] decrease the pitch diameter [which] will lead to
axial elongation of the copper in the power phase and the tensions in the
copper wires are kept below critical limit.” Spec. 3:2–6.
To address Appellant’s assertion that Batlle i Ferrer does not teach an
inner conductive layer that meets claim 1’s requirements, we look to the
Examiner’s explanation of what Batlle i Ferrer teaches.
The Examiner relies on Batlle i Ferrer as follows to teach the steel
tube, inner conductive region, and soft deformable sheath limitations of
claim 1 that the Examiner acknowledges are not taught by Bremnes. The
Examiner states:
[Batlle i Ferrer] teaches a steel tube (buffer tube 110, FIG. 1B;
stainless steel tubes housing optical fibers, C1L56-63), the steel
tube forming an optical fibre waveguide region (buffer tube
includes optical fiber 105), with at least one optical fibre
waveguide (optical fiber 105) configured to convey at least one
information-bearing signal (C2L47-55); and said inner
conductive region having a plurality of wires stranded with a
first lay angle around said steel tube ([Batlle i Ferrer] teaches
copper wires 130 stranded with a lay angle with respect to
buffer tube 110, FIG. 1B; stainless steel tubes housing optical
fibers, C1L56-63), and a soft deformable sheath (layer 115 and
layer 120) located between said steel tube (buffer tube 110,
FIG. 1B; stainless steel tubes housing optical fibers, C1L56-63)
and the plurality of wires (copper wires 130) of said inner
conductive regions, said soft sheath (layer 115 and layer 120)
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forming a deformable bedding configured and arranged such
that, when said cable is under axial stress, it allows said
plurality of stranded wires (copper wires 130) to decrease their
pitch diameter by pressing into said soft sheath (layer 115 and
layer 120). The advantage of the buffer tube 110; stainless steel
tubes housing optical fibers, C1L56-63; and layer 115 and layer
120 is to provide mechanical protection. Therefore, it would
have been obvious to someone with ordinary skill in the art at
the time the invention was made to modify Bremnes with
[Batlle i Ferrer], by adding to the central conductor 1, FIG. 2A
of Bremnes, the buffer tube 110; stainless steel tubes housing
optical fibers, CL56-63; and layer 115 and layer 120 of [Batlle i
Ferrer], to provide protection from heat and rodents (C2L11 -
C3L10 of [Batlle i Ferrer]) and mechanical protection.
Non-Final Act. 5–6.
As can be seen from the Examiner’s thorough explanation above, the
Examiner maps the teachings of Batlle i Ferrer to the specific requirement of
the claims that the sheath form “a deformable bedding configured and
arranged such that, when said cable is under axial stress, it allows said
plurality of stranded wires to decrease their pitch diameter by pressing into
said soft sheath.” See Appeal Br. 25 (Claim 1). Appellant does not address
these teachings of Batlle i Ferrer as they relate to specific claim limitations.
Appellant does argue that the Batlle i Ferrer’s wires are “arranged
around the core buffer tube in such a way that they make a continuous cover
which prevents the soil to get in contact with the fibers,” resulting in the
wires not being able to elongate under tensile force. Appeal Br. 16–17.
Appellant does not explain sufficiently how Batlle i Ferrer’s wire
arrangement would result in the inability to elongate under tensile force. In
fact, the figure depicting the wire arrangement in Batlle i Ferrer appears very
similar to the wire arrangement set forth in the Specification as neither
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provides spacing between the wires. Compare Batlle i Ferrer, Fig. 1B, with,
Spec., Fig. 5A (Nov. 23, 2015). In fact, the Abstract provides that inner
conductive region 180 (copper wires) “encloses a steel tube (160) . . . .”
Amendments to the Spec. (Feb. 20, 2014); see also Spec. 6:15–17 (stating
“[e]ncircling the soft sheath 170 are one or more annular layers of annealed
copper wires 180 which are themselves circumferentially surrounded by a
semiconductive sheath 190”) (emphasis added). Therefore, we do not find
that Appellant has apprised us of Examiner error.
Finally, Appellant challenges whether one of skill in the art would
have a reason to combine Bremnes and Batlle i Ferrer, and whether doing so
would change the principle of operation of Bremnes. Appeal Br. 17–24.
Appellant states the following:
Appellants note that the Bremnes reference is for a subsea
application. The [Batlle i Ferrer] reference is for an
underground wire which is constructed to protect fibers from
rodents and other ground stresses. However, Bremnes is not a
buried cable it is designed to be used underwater as a subsea
cable. Thus Bremnes does not have any rodent problems nor
does it experience the stresses of being buried. As such there is
no motivation to combine a [Batlle i Ferrer] structure with the
Bremnes structure even if such a combination were possible.
Appeal Br. 20.
Appellant is narrowly focused on the problems that Bremnes was
solving for a subsea cable and the specific way Bremnes solved those
problems and not on all that one of ordinary skill in the art would consider in
solving those problems. Cf. KSR, 550 U.S. at 420 (stating the “second error
of the Court of Appeals lay in its assumption that a person of ordinary skill
attempting to solve a problem will be led only to those elements of prior art
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designed to solve the same problem”). As the Supreme Court has stated,
common sense teaches that “familiar items may have obvious uses beyond
their primary purposes, and in many cases a person of ordinary skill will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
Id. Granted, perhaps one need not worry about rodents chewing into a
subsea cable. Nonetheless, Batlle i Ferrer additionally discusses how its
cable structure provides “sufficient mechanical protection” to its optical
fibers, including being “resistant to attacks by water and/or chemical
agents,” and also providing thermal protection, which seem to be reasonably
applicable to a subsea cable as in Bremnes. Batlle i Ferrer, 2:12–35, 3:7–16.
Moreover, as noted by the Examiner, a person of ordinary skill in the art
would understand that Batlle i Ferrer’s protection against attacks by rodents
would also protect against attacks by “various sea organisms.” Ans. ¶ 36.
Thus, the Examiner’s focus on mechanical and heat protection provided by
the elements of Batlle i Ferrer to be combined with Bremnes to arrive at the
claimed subject matter is an appropriate rationale for one of skill in the art to
combine the teachings. See Non-Final Act. 6; Ans. ¶¶ 19, 36. Appellant has
not apprised us of Examiner error in the reasoning to combine the teachings
of Bremnes and Batlle i Ferrer.
Appellant’s assertion that combining the teachings of Bremnes and
Batlle i Ferrer would inappropriately change the principle of operation of
Bremnes is also not well taken. The test for obviousness “is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference,” but “[r]ather, the test is what the
combined teachings of those references would have suggested to those of
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ordinary skill in the art.” In re Keller, 642 F.2d at 425. The Examiner has
the better position on the issue of what one of ordinary skill in the art would
have gleaned from the combined teachings of Bremnes and Batlle i Ferrer.
The Examiner states that the combination “is entirely within the
ability of a person having ordinary skill in the art,” and
[i]n any event, the motivation to combine (mechanical
protection) is present, and the adding to the central conductor 1,
FIG. 2A of Bremnes, the buffer tube 110; stainless steel tubes
housing optical fibers, C1L56-63; and layer 115 and layer 120
of [Batlle i Ferrer] will not negatively impact the principle of
operation of the primary reference Bremnes because all of the
elements of Bremnes (FIG. 2A) remain present so that the
central conductor 1 continues to provide power for the heating
(Abstract line 7).
Ans. ¶ 37. Again, Appellant has not apprised us of Examiner error.
For these reasons, we sustain the rejection of claims 1–3 and 9–12.
Remaining Rejections (Claims 4, 5, 7, and 8)
Appellant does not present separate arguments for patentability of any
of the dependent claims that are the subject of the remaining two rejections.
See Appeal Br. 11, 24. Thus, the dependent claims stand or fall with
independent claim 1 from which each of claims 4, 5, 7, and 8 ultimately
depend. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). Therefore, for the same
reasons that we have stated above, we sustain the rejection of claims 4, 5, 7,
and 8.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
9 112 Indefiniteness 9
1–3, 9–12 103(a) Bremnes,
Batlle i Ferrer
1–3, 9–12
4, 7, 8 103(a) Bremnes,
Batlle i Ferrer,
design choice
4, 7, 8
5 103(a) Bremnes,
Batlle i Ferrer,
design choice,
Varkey
5
Overall
Outcome
1–5, 7–12

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