Ex Parte 7,015,395 et al

Patent Trial and Appeal Board

Dec 7, 2012

90011652 (P.T.A.B. Dec. 7, 2012)

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.
90/011,652 04/20/2011 7,015,395 2270/6 3024
7590 12/10/2012
CHRISTIE, PARKER & HALE, LLP
P.O. BOX 7068
PASADENA, CA 91109-7068
EXAMINER
HOTALING, JOHN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/10/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________

Ex parte GIFT TECHNOLOGIES, LLC.
______________

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Reexamination Control No. 90/011,652
Patent 7,015,395 B2
Technology Center 3900
______________

Before JOHN C. MARTIN, KEVIN F. TURNER,
and JUSTIN T. ARBES, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s
November 9, 2011, final Office action (hereinafter “Final Action”) in Ex
Parte Reexamination No. 90/011,652, involving Patent 7,015,395 B2
(hereinafter “the '395 patent”).1 In the Final Action, the Examiner rejected

1 A Certificate of Correction of Patent 7,015,395 B2 issued on August 14,
2007.
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amended claims 1-18 and new claims 19-21 under 35 U.S.C. § 103(a) for
obviousness over the prior art (Final Action 3-8) and further rejected new
claims 19-21 under 35 U.S.C. § 112, first paragraph, for lacking written
description support. Id. at 3. Although the January 6, 2012, Notice of
Appeal states that “Applicant hereby appeals . . . from . . . the Primary
Examiner’s final Office action of [sic] claims 1 to 21,” Appellant’s brief
states that “[t]he rejection of claims 1-18 is appealed.” Br. 1, para. 3.2 We
accordingly treat claims 19-21 as withdrawn from the appeal. Ex parte
Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008). As noted in Manual of
Patent Examiner Procedure § 1215.03, cited in Ghuman at 1480, “[a]
withdrawal of the appeal as to some of the claims on appeal operates as an
authorization to cancel those claims from the application or reexamination
proceeding and the appeal continues as to the remaining claims.”3
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

2 “Appellant’s Brief,” filed March 6, 2012.
3 As explained in Procedure for Treating Rejected Claims That Are Not
Being Appealed, 1350 Off. Gaz. Pat. & Trademark Office 58-59 (Jan. 5,
2010):
After the decision by the BPAI and the jurisdiction is
transferred back to the examiner for further action, or the
prosecution is reopened without a decision by the BPAI, the
examiner will notify appellant of the cancellation of the non-
appealed rejected claims in the next Office action, unless the
application is abandoned.
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I. STATEMENT OF THE CASE
A. The Invention Described in the '395 Patent
The ‘395 patent describes electrical transmission cables having a
composite reinforced component that provides “loading” (i.e., load support)
capabilities. '395 patent 1:14-18.
Figure 1 of the '395 patent is reproduced below.

Figure 1 is a fragmentary perspective view of a composite-reinforced
current-carrying conductor constructed in accordance with a first
embodiment. Id. at 4:56-58. The electrical transmission cable C1 has a
reinforced plastic composite load bearing core 10 surrounded by an outer
current-conducting sheath comprising layers 12, 14, and 16 of aluminum
wires. Id. at 5:22-36. In this embodiment, core 10 is a single solid
reinforced plastic composite member. Id. at 5:28-30. Because the
reinforced plastic core 10 is not capable of significant bending movement,
this embodiment is effective for only short-length cables. Id. at 6:29-32.
One of the objects of the invention described in the '395 patent is “to
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provide an electrical transmission cable of the type stated in which the
reinforced composite inner core can be provided in individual sections
which cooperate with one another to operate as a solid core, but which yet
permit the winding of the cable about a transportation drum.” Id. at 2:59-64
(emphasis added). An embodiment having this featrure is depicted in
Figure 2 of the '395 patent, reproduced below.

Figure 2 is a fragmentary perspective view of a modified form of the
composite reinforced current carrying conductor. Id. at 4:59-62. The central
core 10 of cable C2 is formed of a plurality of individually shaped core
sections 20, which are described as “six individual pie-shaped sections.” Id.
at 6:36-42. The '395 patent further explains that
it has been found that . . . five individual sections are preferred
inasmuch as this is the number of sections which allow for a
bending of the cable and a winding of the cable about a spool
and which nevertheless do not create an unduly large number of
sections forming the cable.
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Id. at 6:44-49. The '395 patent also provides the following description of
how to improve windability and reduce stresses:
It has also been found in accordance with the present
invention that it is desirable to have an odd number of
individual sections [such] as, for example, five, seven or nine
individual sections. This allows the cable to be more easily
wound about a drum. In addition, it has also been found that by
causing a spiraling of the individual sections of the cable over a
fairly long distance, that winding of the cable is also more
easily obtained. Thus, the cable can be rotated slightly when
wound about a drum so as to cause a spiraling of the individual
segments. Generally, it is preferred to obtain one spiral per
revolution on the drum. This has been found to reduce stresses
on the cable and reduce axial build-up of tension-compressive
stresses.
Id. at 7:7-19 (emphasis added).4
Figure 4 of the '395 patent is reproduced below.

4 A duplicate paragraph appearing at column 6, line 61 to column 7, line 6
was deleted by the afore-mentioned Certificate of Correction.
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Figure 4 is a fragmentary perspective view of an embodiment that includes
a fiber optic cable 38. Id. at 7:36-39. “[I]n this particular case, the
individual pie-shaped sections 20 of the core 22 are formed with an
arcuately shaped recess 34 formed at their inner most [sic] ends” to form a
cylindrically shaped central, axially extending bore 36 that is sized to
receive fiber optic cable 38. Id. at 7:32-39 (emphasis added).

B. The Claims on Appeal
The claims on appeal are the claims as amended by the September 13,
2011, “Amendment for Reexamination Application” (hereinafter
“September 2011 Amendment”).5 Original independent claims 1, 7, and 13
(all of the independent claims) were amended by modifying the phrase “a
plurality of generally arranged component core members” to read “a
plurality of an odd number of generally arranged component core members.”
September 2011 Amendment 2-5.6 Claim 1 thus amended reads as
follows:
1. (Amended) An electrical current carrying conductor
for long distance transmission of electrical current, said current
carrying conductor comprising:

5 An “Amendment Prior to Appeal” filed January 6, 2012, was denied entry
in an Advisory Action mailed February 1, 2012.
6 The claims as reproduced in the Claims Appendix to the Brief do not
include the amendatory underlining.
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a) a relatively solid high tensile strength central load
carrying core formed from a plurality of an odd number
of generally arranged component core members which abut
together and which are each generally polygonally shaped in
cross-section and when abutted together define a generally solid
cylindrically shaped core each core member formed from a
fiber reinforced composite material, said core being of
sufficient cross-sectional size to support the tensile loading on
the conductor when the conductor is suspended between
support towers, wherein said conductor is capable of being
wound around a drum; and
b) an outer highly conductive electrical current carrying
sheath completely surrounding said load carrying core for
carrying electrical current over said distance, wherein the
plurality of component core members allow for the winding of
the conductor around the drum.
Id. at 2.
Independent claim 13 is similar to claim 1 but additionally recites a
central bore containing a fiber optic cable. Claims App. (Br. 10).

Independent method claim 7 reads as follows:
7. (Amended) A method of producing a long distance
transmission current carrying conductor, said method
comprising:
a) bringing a plurality of an odd number of individual
reinforced composite core sections together in abutting
relationship to form a generally cylindrically shaped solid core,
each core section having a generally polygonally shaped cross-
section, wherein said core is of sufficient cross-sectional size to
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support the tensile loading on the conductor when the conductor
is suspended between support towers;
b) locating on an outer cylindrically shaped surface of
said core an outer highly conductive electrical current carrying
conductor, and
c) winding the conductor around a drum.
September 2011 Amendment 3.

C. The Rejections7
Claims 1-3, 5-15, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
for obviousness over JP '1128 in view of Gambone.9 Final Action 3; Ans. 5.

7 At pages 8-9 of the Final Action, the Examiner withdrew a number of
other grounds of rejection under 35 U.S.C. § 103(a).
8 Japanese Utility Model 06-007112, published January 28, 1994, and
submitted with Appellant’s Information Disclosure Statement (hereinafter
“IDS”) filed with the September 2011 Amendment. Our understanding of
this reference is based on: (i) a one-page English-language “Summary of
relevant portions in Reference 1,” submitted with the IDS; and (ii) a
“machine translation” obtained by the Examiner and provided as an
(Continued on next page.)
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Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) for
obviousness over JP '112 in view of Gambone and Reinhart.10 Id. at 7;
Ans. 5.

II. DISCUSSION
A. Independent Claims 1, 7, and 13
JP '112 describes an “overhead wire” or “power line” that includes a
tension member formed of FRP (fiber-reinforced plastic). JP '112 Trans.
paras. [Claim 1], [0001], and [0002].
Figure 5 is reproduced below.

Figure 5 is a transverse cross section showing “the conventional dip control
type overhead wire.” Id. at [Drawing 5]. A tension member 20 is formed by

attachment to the Final Action (hereinafter “JP '112 Trans.”).
9 L.R. Gambone, Alternative Materials for Overhead Conductors (Canadian
Electrical Association, ST- 318, Dec. 1991).
10 T. J. Reinhart et al., Engineered Materials Handbook, Vol. 1 –
Composites, pages xiii, xiv, and 8 (ASM International 1987).
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“[i]ntertwist[ing] two or more FRP (fiber-reinforced plastic) matter lines of
the section round shape.” Id. at [0002]. Numeral 21 designates a plurality
of round, intertwisted conductive wires that can take the form of aluminum-
coated copper wires or aluminum wires. Id.
In accordance with the invention described in JP '112 (at [0005]), the
cross-sectional shape of the FRP lines is changed from a “section round
shape” to a “section segment shape” in order to avoid a problem that is
discussed below.
Figure 1 of JP '112 is reproduced below.

Figure 1 shows a transverse cross section of one working example of an
overhead wire in accordance with the JP '112 invention. Id. at [0007].
Tension member 2 of wire 1 includes a cable core 3 and “two or more FRP
matter lines 4a of the shape of a section segment.” Id. The Examiner refers
to FRP matter lines 4a as “subsections” (Final Action 5), as do we below.
Cable core 3, which has a “section round shape,” can be formed of FRP
material or galvanized steel or can be replaced by an optical fiber. Id.
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Numerals 5 and 6 respectively designate a protective covering outer sheath
and “the aluminum intertwisting layer.” Id. at [0008], [0010].
Figure 2, which is used to explain the problem addressed by the JP
'112 invention, is reproduced below.

Figure 2 shows the overhead wire as terminated with a steel clamp 8 for
connection to a steel tower. Id. at [0011]. During assembly, a cylindrical
sleeve 7 of steel or aluminum having the same outer diameter as the outer
diameter of FRP intertwisting layer 4 is slipped over core 3 before the end of
the overhead wire is inserted into a compression hole 8a in clamp 8. Id.
Compressive force is then applied along length C to secure the clamp to the
overhead wire. Id. The use of FRP lines having a “segment” section shape
(i.e., FRP subsections) reduces the size of the “compression ratio” below the
compression ratio that is required when the FRP lines have a round section
shape, as shown in Figure 5. Id. at [0011]. As a result of reducing the
compression ratio, “there is no possibility . . . that a crack of a lengthwise
direction may arise in the FRP matter line 4a at the time of steel clamp
compression.” Id. at [0011]. In contrast, such cracks can appear when
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applying the clamp to a conventional overhead wire employing round FRP
lines (Fig. 5). Id. at [0003].
Figure 4 of JP '112 is reproduced below.

Figure 4 shows another embodiment, which employs a layer 4 having FRP
lines 4a alternating with galvanized or aluminum-covered steel wires 4b. Id.
at [0012].

1. The Claimed “Plurality of an Odd Number” of Core
Members
Paragraph (a) of claim 1 recites, inter alia, “a plurality of an odd
number of generally arranged component core members which abut together
and which are each generally polygonally shaped in cross-section and when
abutted together define a generally solid cylindrically shaped core[,] each
core member formed from a fiber reinforced material.” The Examiner, when
describing the Figure 1 embodiment in JP '112, states that “the subsections
only have to be two or more and make a round cross section[;] therefore with
respect to the amended subject matter the number of core members can be
odd.” Final Action 5 (emphasis added). We understand the Examiner’s
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position to be that while claim 1 itself is rejected as obvious over the
combination of JP ‘112 and Gambone, JP '112 alone describes using an odd
or even numbered plurality of core members (or subsections) 4a having a
“section segment shape.” See also Answer 8 (“JP '112 paragraph [0002]
teaches the use of an odd number of cor[e] sections such as 3 and 5.”).
Appellant has not addressed the Examiner’s finding that JP '112 describes
using an odd plurality of subsections 4a. Instead, Appellant assumes the
Examiner is relying on obviousness to satisfy the “odd number” limitation.
See Br. 5 (“There is no motivation provided by neither [sic] JP '112 nor
Gambone to use an odd number of composite segments which are generally
polygonally shaped in cross-section.”). For the following reasons, we agree
with the Examiner’s finding that JP '112 describes using “a plurality of an
odd number” of FRP subsections. Alternatively, we conclude that this
feature, if not anticipated, would have been obvious from that reference,
considered alone and in combination with Gambone.
The evidence of record does not suggest that the description in JP '112
of using “two more FRP (fiber-reinforced plastic) matters lines” would have
been understood to be limited to even numbers of subsections, such as by
suggesting that using an odd number of subsections would have been
expected to require undue experimentation. See Iovate Health Sciences, Inc.
v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 376, 1380 (Fed.
Cir. 2009) (“To be anticipatory, the [reference] must . . . describe, either
expressly or inherently, each and every claim limitation and enable one of
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skill in the art to practice an embodiment of the claimed invention without
undue experimentation.”) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed.
Cir. 2009)). Although the lower end point of the disclosed range in '112 JP
is two and the examples shown in Figures 1 and 4 employ eight and four
subsections, respectively, these facts do not suggest that using an odd
number of subsections, such as three, five, or seven, would require undue
experimentation. Using any of these odd numbers of subsections satisfies
the requirement of the claims for “a plurality of an odd number of . . . core
members which . . . are each generally polygonally shaped” (claim 1). See
Titanium Metals Corporation v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985)
(“[W]hen, as by a recitation of ranges or otherwise, a claim covers several
compositions, the claim is anticipated if one of them is in the prior art.”).
For the following reasons, our finding that JP '112 describes using a
plurality of an odd number of sections is not believed to be contrary to
Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 1000 (Fed. Cir.
2006), which states that “the disclosure of a range [in a reference] is no more
a disclosure of the end points of the range than it is of each of the
intermediate points.” The Atofina court held the claimed temperature range
of 330 to 450 °C was not anticipated by a reference that disclosed using a
range of 100 to 500 °C, with the preferred range being 150 to 350 °C. Id. at
999-1000. As explained in ClearValue Inc. v. Pearl River Polymers Inc.,
668 F.3d 1340 (Fed. Cir. 2012), the finding of a lack of anticipation in
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Atofina can be understood to be based on the criticality of the claimed
temperature range:
The patent at issue in Atofina claims a method of synthesizing
difluoromethane at a temperature between 330-450 °C. U.S.
patent no. 5,900,514 col.3 ll.61-62 ('514 patent); see also
Atofina, 441 F.3d at 993. The patent states that “only a narrow
temperature range enables” the process to operate as claimed,
and that problems occur when operating the reaction either
below 330 °C or above 400 °C. '514 patent col.3 ll.23-29. For
these reasons, the patent in Atofina taught that the claimed
reaction “must be carried out at a temperature of between 330
°C and 450 °C,” and more preferably at a temperature between
350-400° C. Id. col.3 ll.61-65. During the prosecution of the
Atofina patent, Atofina described this temperature range as
“critical.” Atofina, J.A. 1304, 1312. Atofina also noted during
prosecution that the patent’s comparative example 1 “shows
that a temperature of 300 °C does not allow” the synthesis
reaction to operate as claimed. Atofina, J.A. 1306, 1311-12.
By contrast, the prior art in Atofina disclosed a broad
temperature range of 100-500 °C. Atofina, 441 F.3d at 999.
In Atofina, we held that the “considerable difference
between the claimed [temperature] range and the range in the
prior art” precluded a finding of anticipation. 441 F.3d at 999.
We explained that the prior art’s teaching of a broad genus (i.e.,
broad temperature range) does not disclose every species within
that genus. Id. In Atofina, the evidence showed that one of
ordinary skill would have expected the synthesis process to
operate differently outside the claimed temperature range,
which the patentee described as “critical” to enable the process
to operate effectively. Id.; see also '514 patent col.3 ll.23-29.
Based on this “considerable difference” between the prior art’s
broad disclosure and the “critical” temperature range claimed in
the patent, we held that “no reasonable fact finder could
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conclude that the prior art describes the claimed range with
sufficient specificity to anticipate this limitation of the claim.”
Atofina, 441 F.3d at 999.
ClearValue, 668 F.3d at 1344-45 (brackets in original).
The question before the ClearValue court was whether the claimed
“process for clarification of water of raw alkalinity less than or equal to 50
ppm” was anticipated by a Hassick reference disclosing clarification of
water having an alkalinity of 150 ppm or less. ClearValue at 1344.
Hassick’s closest disclosed example to the claimed range involved treating
water with an alkalinity of 60-70 ppm, which is outside of the claimed range.
Id. at 1345. Relying in part on this example, the court distinguished the
facts from those present in Atofina and found anticipation by Hassick for the
following reasons:
[U]nlike Atofina where there was a broad genus and evidence
that different portions of the broad range would work
differently, here, there is no allegation of criticality or any
evidence demonstrating any difference across the range. In
fact, the example in Hassick at 60-70 ppm supports the fact that
the disclosure of 150 ppm or less does teach one of skill in the
art how to make and use the process at 50 ppm. Unlike Atofina,
here there is no “considerable difference between the claimed
range and the range in the prior art.” See 441 F.3d at 999.
Hassick teaches one of ordinary skill to use a high molecular
weight DADMAC in combination with ACH to synergistically
clarify water with alkalinity of 150 ppm or less. Hassick col.2
l.53-col.3 l.6. Hassick thus teaches and enables each and every
element of claim 1.
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Id. Assuming for the sake of argument that Atofina is relevant to the issue
before us, the facts before us are distinguishable from the Atofina facts for
reasons like those discussed in ClearValue. The JP '112 examples suggest
that an overhead wire having any number of FRP subsections 4a near or
between the disclosed examples of four and eight subsections 4a, such as
three, five, or seven, will operate in the same manner as an overhead wire
having four or eight subsections. Furthermore, there is no evidence that JP
'112 is not enabling with respect to using three, five, or seven subsections.
Finally, the ‘395 patent does not indicate that the use of an odd number of
subsections is critical. Instead, the ‘395 patent merely indicates that an odd
number is preferred by stating that “it is desirable to have an odd number of
individual sections as, for example, five, seven or nine individual sections.
This allows the cable to be more easily wound about a drum.” '395 patent
7:7-11 (emphasis added). Even though this is a preferred embodiment, that
circumstance is not sufficient to establish criticality. Cf. Andersen Corp. v.
Fiber Composites LLC, 473 F.3d 1361, 1367 (Fed. Cir. 2007) (“The portions
of the specification that describe how the physical properties of the claimed
composite composition are obtained make clear that the formation of linear
extrudates or pellets is not merely a preferred embodiment, but is a critical
element in the process that produces those properties.”).
We therefore agree with the Examiner that JP '112 describes using a
plurality of an odd number of subsections, such as three, five, or seven, any
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of which numbers meets the claim language “a plurality of an odd number of
. . . core members.”
Further, assuming for the sake of argument that JP '112 does not
describe using a plurality of an odd number of subsections, Appellant for the
following reasons has failed to persuade us that this feature would have been
unobvious over JP '112, whether considered alone or in combination with
Gambone. Appellant argues that motivation for using an odd plural number
of subsections in JP '112 was lacking because using an odd plural number of
subsections addresses problems not recognized in the prior art:
There is no motivation provided by neither [sic] JP '112 nor
Gambone to use an odd number of composite segments which
are generally polygonally shaped in cross-section. Applicant
has disclosed on col. 6, line 29 to col. 7, line 19 of the '395
Patent that use of an odd number of individual segments (i.e.,
core members or sections) allow[s] for the cable to more easily
be wound around the drum for shipping. In addition, according
to that section, by using an odd number of core sections, and by
rotating the cable slightly when wound around the drum so as to
cause a spiraling of the individual segments or elements, a
reduction of the stress on the cable and a reduction of the axial
build up of tension-compressive stresses is achieved. The
problem of winding a cable around a drum and the benefits of
using an odd number of core members which allow for the
winding of the cable around a drum, as well as for the twisting
of the cable for the purpose of reducing axial build up of
tension-compressive stresses has not been disclosed, taught nor
suggested by neither [sic] Gambone nor JP '112.
Br. 5 (emphasis added). As support for this argument, Appellant relies on
the discussion of In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed.
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Cir. 2008) in the USPTO notice entitled Examination Guidelines Update:
Developments in the Obviousness Inquiry After KSR v. Teleflex, 75 Fed.
Reg. 53643 (Sept. 1, 2010). In Example 4.1, this discussion explains that
[i]f the adverse interaction between active agent and coating
had been known, it might well have been obvious to use a
subcoating. However, since the problem had not been
previously known, there would have been no reason to incur
additional time and expense to add another layer, even though
the addition would have been technologically possible.
Id. at 53646-47. Appellant’s reliance on this line of argument is misplaced
because a prima facie case for obviousness, including the requisite
motivation, is presumed when, as here, the claimed numerical value or
values fall within a range disclosed by the reference. As explained in Iron
Grip Barbell Co. v. USA Sports Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004):
[W]here there is a range disclosed in the prior art, and the
claimed invention falls within that range, there is a presumption
of obviousness. But the presumption will be rebutted if it can
be shown: (1) That the prior art taught away from the claimed
invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997);
or (2) that there are new and unexpected results relative to the
prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellant has not made either of the showings required to rebut the prima
face case for obviousness. Although the lower end point of the number
range for FRP subsections 4a in JP '112 is two and the examples depicted in
Figures 1 and 4 have eight and four subsections, respectively, these facts
would not have been understood as discouraging the use of odd numbers of
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subsections. Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (“A reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.”). Nor has
Appellant identified anything in Gambone that might be construed as
discouraging the use of an odd number of FRP subsections 4a.
New and unexpected results also have not been demonstrated.
Considering windability first, Appellant’s assertion in the above-quoted
passage that “an odd number of core members . . . allow for the winding of
the cable around a drum” (Br. 5; emphasis added) is not supported by the
'395 patent, which instead credits the ability to wind the cable around a drum
to the use of a plurality of core members, without restriction to an odd
number of core members. See '395 patent 2:59-64 (“the reinforced
composite inner core can be provided in individual sections which cooperate
with one another to operate as a solid core, but which yet permit the winding
of the cable about a transportation drum.”). Furthermore, although the '395
patent credits the use of an odd plural number of core member with
“allow[ing] the cable to be more easily wound about a drum” (id. at 7:7-11;
emphasis added), the '395 patent does not include any comparative data, and
Appellant provides no data, showing that an odd number of core members
provides significantly improved windability in comparison to an even
number of core members, as is necessary to show unexpected results when
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using the claimed invention. As stated in In re Soni, 54 F.3d 746 (Fed. Cir.
1995):
[i]t is well settled that unexpected results must be established by
factual evidence. Mere argument or conclusory statements in
the specification does not suffice.” In re De Blauwe, 736 F.2d
699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); see also In re
Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978)
(“Mere lawyer’s arguments and conclusory statements in the
specification, unsupported by objective evidence, are
insufficient to establish unexpected results.”).
Id. at 750 (brackets in original). See also id. at 751 (“Mere improvement in
properties does not always suffice to show unexpected results. In our view,
however, when an applicant demonstrates substantially improved results, as
Soni did here, and states that the results were unexpected, this should suffice
to establish unexpected results in the absence of evidence to the contrary.”) .
Finally, Appellant’s above-quoted reliance (Br. 5) on the '395 patent’s
description of reducing stresses by rotating or twisting the cable as it is
being wound around the drum is misplaced because, as pointed out by the
Examiner (Answer 6), the claims do not recite or imply rotation or twisting.
See In re Dill, 604 F.2d 1356, 1361 (CCPA 1979) (“The evidence presented
to rebut a prima facie case of obviousness must be commensurate in scope
with the claims to which it pertains.”).
For the foregoing reasons, Appellant has failed to demonstrate that the
claimed “plurality of an odd number of generally arranged component core
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members” is not taught or suggested by JP '112, whether considered alone or
in combination with Gambone.

2. The Claimed Windability Characteristic
Apparatus claim 1, in paragraph (b), recites “wherein the plurality of
component core members allow for the winding of the conductor around the
drum,” and apparatus claim 13 similarly recites, in paragraph (a), “wherein
the conductor is capable of being wound around a drum.” Id. at 9-10.
Method claim 7 recites, as step (c), “winding the conductor around a drum.”
The Examiner and Appellant apparently agree that this functional claim
language is entitled to weight and requires that the cable have sufficient
flexibility to be wound around a drum. See In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997) (“A patent applicant is free to recite features of an
apparatus either structurally or functionally.”).
The Examiner, relying on JP '112 in view of common knowledge in
the art and Gambone, states that the cable shown in Figure 1 of JP '112, with
its polygonally shaped subsections 4a, “must be able to be wound on a drum
or spool in order to be transported.” Final Action 5-6. Gambone describes
replacing the central single or multistrand steel wire in an ACSR (aluminum
conductor steel reinforced) overhead transmission line with a fiber
reinforced composite, such as “a simple E-glass/epoxy and E-glass/T300
carbon/epoxy composite rod,” in order to achieve cost savings without
sacrificing performance. Gambone v-vi. When describing how to make the
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reinforcing cores, Gambone states that “[d]ue to its axial nature, any
transportable section length may be produced and wound on a spool.” Id. at
26. The Examiner relies on common knowledge and Gambone as follows:
While JP '112 does not mention the specifics of winding a
conductor around a drum one of ordinary skill in the art would
rely on at least common knowledge in the art that in order to
transport cable to the area [where] it is to be used it must be
wound on a suitable spool or drum. In an analogous invention
to Gambone, at pg. 26, discloses that “[d]ue to its axial nature,
any transportable section length may be produced and wound
on a spool.” The FRP tension member of figure 5 of JP '112 is
made up of a cross section of round fibers which are used as the
tension member 20 which is the same structure that is proposed
by Gambone. The invention of JP '112 is to improve the design
of figure 5 so as to avoid cracking of the members do to high
clamping forces. The improvement is seen in figure 1 of JP
'112 reproduced above. Therefore it would be obvious to one of
ordinary skill in the art that if Gambone is able to be wound
around a drum then the structure of figure 5 of JP '112 is able
to [be] wound around a drum and therefore the improved cable
of JP '112 which uses FRP as a core member shown in the
figure [1] above must be able to be wound on a drum or spool
in order to be transported.
Final Action 5-6 (emphasis added). Although Appellant (Br. 4)
acknowledges that this is the Examiner’s rationale concerning the claimed
windability characteristic, Appellant has not addressed its merits, let alone
demonstrated any error therein.11 Instead, Appellant’s sole (and

11 See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(Continued on next page.)
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unpersuasive) argument against the rejection of the independent claims is, as
discussed above, that a person having ordinary skill in the art would not
have been motivated to make the cable of JP '112 with an odd plural number
of subsections.

3. Conclusion Regarding Rejection of Claims 1, 7, and 13
For the reasons given above, the rejection of independent claims 1, 7,
and 13 for obviousness over JP '112 in view of Gambone is sustained.

B. Dependent Claims 2, 6, 14, and 17 (Non-Alloyed Aluminum)

(an appellant may attempt to overcome an examiner’s obviousness rejection
on appeal to the Board by: (1) submitting arguments and/or evidence to
show that the examiner made an error in either (a) an underlying finding of
fact upon which the final conclusion of obviousness was based or (b) the
reasoning used to reach the legal conclusion of obviousness; or (2) showing
that the prima facie case has been rebutted by evidence of secondary
considerations of nonobviousness).” See also id. (“If an appellant fails to
present arguments on a particular issue — or, more broadly, on a particular
rejection — the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection. See, e.g., Hyatt v. Dudas, 551 F.3d
1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant
failed to make for a given ground of rejection as waived)[.]”).
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Claim 1, on which claim 2 depends, recites in relevant part “an outer
highly conductive electrical current carrying sheath completely surrounding
said load carrying core for carrying electrical current over said distance.”
Claim 2 more particularly specifies that “said outer sheath is comprised of
aluminum which is not alloyed to provide load carrying capacity.” Claims 6,
14, and 17 include similar limitations. As support for this feature in the '395
patent, Appellant (Br. 6) cites the following passage:
It has also been found in connection with the present invention
that it is possible to literally use a smelted aluminum for higher
current carrying conductivity capabilities. Thus, and contrary
to standard practice, the aluminum outer sheath does not
necessarily carry any one or more ingredients therein to provide
strength while reducing conductivity.
'395 patent 3:65-4:3.
The Examiner, in rejecting these claims in the Final Action, states
(at 6) that “[t]he aluminum 6 [in JP '112] is for conducting electricity.”
Appellant responded by arguing that “neither JP '112 nor Gambone appear
to disclose use of a non-alloyed aluminum.” Br. 6. In the Answer (at 8), the
Examiner states that “JP '112 discloses that conductor 6 is made out of
aluminum. The examiner took that to mean Aluminum.” Presumably, the
term “Aluminum” refers to non-alloyed aluminum. The Examiner also
alternatively relies on Gambone for a suggestion of modifying JP '112 to
employ non-alloyed aluminum:
Gambone teaches on pages 1-3 of the reference that all-aluminum
conductors are composed of nominally pure AA1350 aluminum and
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that [a]luminum conductor steel reinforced (ACSR) overhead
transmission lines have been in use since the 1920’s. The
construction of ACSR conductors consists of a central single or
multistrand steel core providing strength and one or more outer
layers of AA1350 aluminum strands providing conductivity.
Gambone is a study to replace the steel core with any of a number of
alternative materials which will support the conductor. Thus JP '112
in view of Gambone disclose[s] the use of an [a]luminum conductor
that is pure.
Id. Appellant, who did not file a reply brief, has not addressed or
demonstrated any error in: (i) the Examiner’s finding that Gambone teaches
using non-alloyed aluminum as the conductor in an overhead transmission
line having a central single or multistrand steel core; or (ii) the Examiner’s
conclusion that it would have been obvious in view of this teaching to form
the “aluminum” conductors 6 in the JP '112 cables with non-alloyed
aluminum, assuming JP '112 does not disclose non-alloyed aluminum.
We are also unpersuaded by Appellant’s argument that JP '112 fails to
disclose using non-alloyed aluminum. JP '112 describes element 6 as “the
aluminum intertwisting layer 6” without indicating that the aluminum is
alloyed. JP '112 Trans. [0010]. Even though, as noted above, the ‘395
patent states that the “standard practice” in the overhead transmission line art
is to use alloyed aluminum conductors, this statement does not indicate that
this “standard practice” applies worldwide. This statement therefore fails to
establish that a person having ordinary skill in the art would have understood
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that the cables described in JP '112, which was published in Japan, use only
alloyed aluminum.
The rejection of dependent claims 2, 6, 14, and 17 for obviousness
over JP '112 in view of Gambone is therefore sustained.

C. Dependent Claim 5 (Generally Triangular Core Members)
Claim 5, which depends on claim 1, specifies that “said core members
are generally triangular in cross-section.” The only mention of “generally
triangular” in the '395 patent is in claim 5, which does not provide a
definition of that term. The Examiner reads claim 5 on subsections 4a of
FRP layer 4 in Figure 1 of JP '112, reproduced again below for convenience.

See Final Action 6 (“[w]ith respect to claim 5 please see the figure [1 of JP
'112] above and Item number 4 which is generally triangular in cross
section.”).
Appellant contends that subsections 4a in Figure 1 of JP '112 are
“generally trapezoidal and not generally triangular in cross-section.” Br. 6.
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Specifically, Appellant argues that
“generally triangular in cross-section” has been used to denote
the “pie-shaped sections” as recited in col. 6, lines 41-42 of the
'395 Patent. “Generally triangular” was used since a pie-
shaped section is generally triangular in that one of its sides is
not linear but generally curving, typically defining part of a
circle. Thus, a pie-shaped section is not “perfectly triangular”
but “generally triangular”.
Id. at 7 (emphasis added). The lines of the '395 patent cited in this passage
describe Figure 2, reproduced again below for convenience, as showing “six
individual pie-shaped sections.”

Core members 20 in the embodiment depicted in Figure 3, not reproduced
below, also have this shape. We therefore understand Appellant to be
arguing that “generally triangular in cross-section,” when given its broadest
reasonable interpretation, refers to the “pie shape” depicted in Figure 2 and
3, which departs from a triangle only by having one curved side. However,
we note that the '395 patent additionally applies the term “pie-shaped” to
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subsections 20 in Figure 4 of that patent, reproduced again below for
convenience:

Specifically, the '395 patent states that “the individual pie-shaped sections
20 of the core 22 are formed with an arcuately shaped recess 34 formed at
their inner most ends.” '395 patent 7:32-36. Thus, the term “pie-shaped”
describes each section 20 in Figure 4 having two straight sides, an outside
curved side, and inner recess 34. Appellant has not explained, and it is not
apparent, why it is unreasonable to read the claim term “generally
triangular” on the “pie-shaped” core members 20 in Figure 4 or on the
similarly-shaped subsections 4a in Figure 1 of JP '112.
The rejection of claim 5 for obviousness over JP '112 in view of
Gambone is therefore sustained.
D. Dependent Claims 3, 8-12, 15, and 18
Because Appellant has not separately argued the patentability of
dependent claims 3, 8-12, 15, and 18, the rejection of these claims for
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obviousness over JP '112 in view of Gambone is sustained for the same
reasons that the rejection of parent claims 1, 7, and 13 is sustained.
E. The 35 U.S.C. § 103(a) Rejection of Claims 4 and 16 (Based on JP '112
in view of Gambone and Reinhart)
Appellant has not separately addressed the merits of the rejection of
dependent claims 4 and 16 for obviousness over JP '112 in view of Gambone
and Reinhart. The rejection of these claims is therefore sustained for the
same reasons that the rejection of parent claims 1 and 13 is sustained.

III. DECISION
The rejection of claims 1-3, 5-15, 17, and 18 under 35 U.S.C. § 103(a)
for obviousness over JP '112 in view of Gambone is sustained, as is the
§ 103(a) rejection of claims 4 and 16 for obviousness over JP '112 in view of
Gambone and Reinhart.
The Examiner’s decision that claims 1-18 are unpatentable is
accordingly affirmed.
Extensions of time for taking any subsequent action in connection
with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R.
§ 41.50(f).
AFFIRMED

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ack

For Patent Owner:

CHRISTIE, PARKER & HALE, LLP
P.O. BOX 7068
PASADENA CA 91109-7068

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