Hayes Soloway, P.C.

Case Results

Ex parte SCOTT MAGNER

October 2008

DECISION ON APPEAL

(Reprinted from the Opinion of the Board)

Statement of the Case

Appellant appeals under 35 U.S.C. §134(a) from a final rejection of all pending claims 1-8. (Appeal Brief filed August 4, 2006, hereinafter“App. Br.”; Final Office Action entered June 30, 2006.) We have jurisdiction under 35 U.S.C. § 6(b).

We REVERSE.

Appellant's invention relates to a cable including, inter alia, a foamable polymer layer. (Spec. 3, ll. 2-10). Representative claim 1, the sole independent claim, reads as follows:

1. A cable, comprising:
a conductor;
an insulation layer wrapped substantially about the conductor;
a substantially pre-foam foamable polymer layer applied substantially about the insulation layer, wherein a cross-section of the substantially pre-foam foamable polymer layer has a substantially uneven outer surface; and
an armor shell applied exterior to the substantially pre-foam foamable polymer layer, wherein the armor shell is substantially concentric to the conductor.

There are five grounds of rejections before us for review: (1) claims 1 and 7 are rejected under 35 U.S.C. § 102(b) as anticipated by Ziemek; (2) claims 1 and 6 are rejected under 35 U.S.C. § 102(b) as anticipated by Perelman; (3) claims 1 and 3 are rejected under 35 U.S.C. § 102(e) as anticipated by Gebs; (4) claims 2, 4, and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gebs; and (5) claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Ziemek.

Appellant's principal contention in this appeal is that the “substantially pre-foam” limitation describes a condition of the foamable polymer and that the applied prior art of record does not teach the claimed subject matter including a foamable polymer in a “substantially pre-foam” state. (Claim 1, App. Br. 12, ll. 13-15; 13, ll. 4-8; 16, ll. 15-17; 20, ll. 6-9).

In response, the Examiner asserts:

The limitations of the foamable polymer layer being a pre-foam layer when located within the armor shell (then thefoamable polymer will be foamed thereafter), are just method limitations, and the patentability of a product claim is determined by the novelty and nonobviousness of the claimed product itself without consideration of the process for making it which is recited in the claim.

(Ans. 8, ll. 9-13).

ISSUE

Thus, the issue arising from the contentions of the Examiner and Appellant is whether the Examiner erred in dismissing the claim limitations “a substantially pre-foam foamable polymer layer applied substantially about the insulation layer” and “an armor shell applied exterior to the substantially pre-foam foamable polymer layer” as “just method limitations” (Ans. 8). For the reasons expressed below, we hold that the Examiner reversibly erred in dismissing the argued limitations as “just method limitations.”

FINDINGS OF FACT

  1. Consistent with the ordinary meaning of “pre-foam,” the Specification describes a “pre-foam” polymer as the physical state of a foamable polymer before it is made to foam. (Spec. 5, ll. 13-20; 6, ll. 1-11; Figs. 2, 3).
  2. Appellant's Figs. 2 and 3 depict a foamable polymer cable 110 having a conductor 112, insulation layer 114, foamable polymer layer 116 with uneven outer surface 117, pneumatic voids 118, and armor shell 120; Fig. 2 shows the pre-foam condition of the foamable polymer layer 116 and Fig. 3 shows the foamable polymer cable after foaming the foamable polymer layer 116. (Spec. 5, ll. 1-11, 15-17; 6, ll. 9-11).
  3. Ziemek discloses “a high frequency coaxial cable with an internal conductor, an insulating layer of foamed plastic which concentrically surrounds the internal conductor.” (Emphasis added; col. 1, ll. 6-9).
  4. Ziemek describes the manufacture of the prior art coaxial cable to include extruding an insulating layer of plastic foam over a conductor and then surrounding the foam with a tubular external conductor. (Col. 4, ll. 42-62).
  5. Perelman discloses “[a] process for manufacturing a jacketed electrical conductor” where an electrical conductor is fed through an extruder and a foamable polymer layer is formed around a conductor such “that the dielectric [foamable polymer] layer formed around the conductor . . . foams after it exits from the extruder.” (Col. 5, ll. 9-28).
  6. Perelman describes applying an outer conductor tube around the foamed polymer after the foamed polymer is cooled. (Col. 5, ll. 46-68).
  7. Gebs' Fig. 5 depicts a cable 20 having a conductor 201 surrounded by an insulator 203 and inner shield 205, which are axially surrounded by a polymeric inner jacket 207 having serrations 401, which in turn is encompassed by an outer shield 209. (Col. 9, l. 67 through 10, l. 25).
  8. Gebs does not disclose a pre-foam foamable polymer layer applied about an inner insulation layer and underlying an armor shell.

PRINCIPLES OF LAW

“During examination, ‘claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.'” In re Am. Acad. Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

ANALYSIS

Claim Interpretation

During examination, we give claim terms their broadest reasonable interpretation consistent with the Specification. In re Am. Acad. Sci. Tech Ctr., 367 F.3d at 1364. Here, Appellant's Specification describes the foamable polymer as a “pre-foam” that has not yet been made to foam. (FF 1, 2). Therefore, as used in the context of Appellant's invention, the term “pre-foam” would have been reasonably understood by one of ordinary skill in the art as the state or condition of a foamable polymer before it is foamed. This condition of the polymer is explicitly recited in the claims and must be considered in determining whether the claimed subject matter is novel and nonobvious in view of the prior art.

Anticipation Rejections

Rejection of Claims 1 and 7 under 35 U.S.C. § 102(b) Over Ziemek

Appellant argues that Ziemek “does not suggest the insulating polymer (referred to by the Examiner as the foamable polymer) is in a substantially pre-foam state.” (App. Br. 12, ll. 13-15). We agree with Appellant. Ziemek discloses manufacturing a coaxial cable in which a foamed plastic is extruded over an internal conductor and then the foamed plastic is surrounded with a tubular external conductor. (FF 3, 4). Thus, the prior art discloses the foamable polymer to be in a foamed condition when the prior art cable is assembled with its tubular external conductor (i.e., armor shell). (FF 4). Therefore, the claimed invention distinguishes over the prior art cable by requiring a pre-foam foamable polymer layer with “an armor shell applied exterior to the substantially pre-foam foamable polymer layer.” (Claim 1).

The Examiner has not identified any evidence or provided any persuasive reasoning to show that Ziemek explicitly or inherently discloses a “pre-foam” foamable polymer layer within an exterior shell. (Ans. 3-9). Contrary to the Examiner's belief that the claim limitations in question are “just method limitations” (Ans. 8), they define structure that has not been addressed. Accordingly, the Examiner erred in rejecting independent claim 1 and its dependent claim 7 in view of Ziemek.

Rejection of Claims 1 and 6 Under 35 U.S.C. § 102(b) over Perelman.

Appellant argues that Perelman's disclosed manufacture of an electrical conductor “does not suggest the insulating polymer (referred to bythe Examiner as the foamable polymer) is in a substantially pre-foam state with an armor shell applied.” (App. Br. 16, ll. 15-17).

For the same or similar reasons as in the rejection based on Ziemek, we also agree with Appellant here. Perelman describes “a process for manufacturing a jacketed electrical conductor” where an electrical conductor is fed through an extruder and a foamable polymer layer is formed around the conductor such “that the dielectric [foamable polymer] layer formed around the conductor . . . foams after it exits from the extruder.” (FF 5). Perelman then discloses an outer conductor tube subsequently applied around the foamed polymer. (FF 6).

The Examiner has not identified any evidence or provided any reasoning to show that Perelman explicitly or implicitly discloses a pre-foam foamable polymer layer as claimed. Contrary to the Examiner's belief, the claim limitations in question are not “just method limitations” (Ans. 8). Accordingly, the Examiner erred in rejecting independent claim 1 and its dependent claim 6 in view of Perelman.

Rejection of Claims 1 and 3 under 35 U.S.C. § 102(e) over Gebs.

The Examiner alleges that Gebs discloses an inner jacket layer made of materials “such as polyethylene, polypropylene or fluorinated ethylene-propylene (FEP), and the person of ordinary skill in the art with common knowledge would understand that such materials are foamable materials.” (Ans. 8, l. 17 through 9, l. 3).

Appellant argues that “the inner jacket 207 of Gebs does not need to be foamable and no suggestion is made in Gebs of leaving the inner jacket 207 in a pre-foam state while the outer shield is applied.” (App. Br. 20, ll. 7-9). Furthermore, Appellant contends that “no reference is made to any portion of the disclosure of Gebs et al, beyond identifying a list of possible materials that can be made foamable, if desired, in the art.” (Reply Br. 8, ll. 9-10). Again, we agree with Appellant.

Gebs discloses a cable having a polymeric inner jacket surrounding an insulator. (FF 7). The inner jacket may be extruded onto underlying components as the underlying components are fed through the annulus of an extruder die. (Col. 10, ll. 50-54, 60-64). Significantly, Gebs does not disclose the polymer layer is a foamable polymer in a “pre-foam” state or condition underlying an armor shell. (FF 8).

The Examiner does not direct us to any persuasive evidence or reasoning that Gebs explicitly or inherently discloses the claim limitation of a pre-foam foamable polymer layer with an exterior armor shell. (Ans. 3-9). The Examiner's contention that Gebs' inner jacket is made of material that one of ordinary skill in the art would have understood as foamable is not sufficient evidence to show that the polymer is necessarily in a pre-foam condition with an exterior armor shell. Even if foamable, Gebs does not disclose whether the polymer is applied to the inner components in a foamed or pre-foamed state. Thus, Gebs does not explicitly or inherently disclose the claimed invention. Accordingly, the Examiner's anticipatory rejection must fail due to lack of evidence that the claimed limitation is explicitly or inherently disclosed in the prior art.

Obviousness Rejections

Rejection of Claims 2, 4, and 5 under 35 U.S.C. § 103(a) in View of Gebs.

The Examiner contends that the additional subject matter recited in dependent claims 2, 4, and 5 would have been obvious to one of ordinary skill in the art in discovering the optimum or workable ranges of a foamable polymer. (Ans. 7, ll. 6-17). Here, the Examiner has not directed us to any evidence or reasoning that the prior art teaches or suggests a “pre-foam” foamable polymer. Therefore, for the reasons discussed above, the Examiner erred in determining dependent claims 2, 4, and 5 obvious in view of Gebs.

Rejection of Claim 8 under 35 U.S.C. § 103(a) in View of Ziemek

The Examiner contends that the additional subject matter recited in dependent claim 8 would have been obvious to one of ordinary skill in the art in discovering the optimum or workable ranges of the armor shell. (Ans.7, l. 18 through 8, l. 5). Here also, the Examiner has not directed us to any evidence or reasoning that the prior art teaches or suggests a “pre-foam” foamable polymer, as required by the claim. Therefore, for the reasons discussed above, the Examiner erred in determining dependent claim 8 obvious in view of Ziemek.

CONCLUSION OF LAW

On this appeal record, Appellant has shown that the Examiner erred in finding that claims 1, 3, 6, and 7 are anticipated over the applied prior art.

Appellant also has shown that the Examiner erred in determining claims 2, 4, 5, and 8 would have been obvious to one of ordinary skill in the art over the applied prior art.

ORDER

The decision of the Examiner rejecting claims 1-8 is reversed.

No time period for taking any subsequent action in connection withthis appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED

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Todd Sullivan

Todd Sullivan, recognized among the top 2% patent prosecutors nationwide, has experience drafting hundreds of patent applications encompassing a wide range of electrical, mechanical, and computer-related technologies and guiding them to issuance.
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