Ex Parte FAUSZDownload PDFPatent Trial and Appeal BoardMar 30, 201612948282 (P.T.A.B. Mar. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/948,282 11/17/2010 77001 7590 ULMER & BERNE LLP c/o Diane Bell 600 Vine Street SUITE 2800 Cincinnati, OH 45202 04/01/2016 FIRST NAMED INVENTOR David M. FAUSZ 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 105967.00829 3584 EXAMINER TALBOT, BRIAN K ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 04/01/2016 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 DAVID M. F AUSZ Appeal2014-006038 Application 12/948,282 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134 the rejection of claims 1, 3- 14 and 16-24. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellant's invention relates to wire insulation, particularly, twisted insulation wire, wherein solid and foamed insulation is provided after 1 Appellant identifies the Real Party in Interest as "General Cable Technologies Corporation." Appeal Brief entered January 13, 2014 ("App. Br.") 2. Appeal2014-006038 Application 12/948,282 twinning wire pairs used in data cables. Specification ("Spec.") i12; claim 1 ). Claims 1 and 14 are illustrative: 1. A method for making wire insulation, comprising the steps of: providing a solid insulative material; adding a chemical foaming agent to at least one section of the solid insulative material; extruding the solid insulative material over at least one wire to create an insulated wire; twisting the insulated wire prior to heating the insulated wire; and heating the insulated wire after extruding the solid insulative material and after twisting the insulated wire, and activating the chemical foaming agent in the at least one section of the solid insulative material to create at least one foamed section in the solid insulative material. 14. A method for making wire insulation, comprising the steps of: providing a solid insulative material; adding a chemical foaming agent to at least one section of the solid insulative material; extruding the solid insulative material over first and second wires to create first and second insulated wires; twinning the first and second insulated wires in a twisted wire pair prior to heating the insulated wires; and heating the first and second insulated wires after extruding the solid insulative material over the first and second wires and after twinning the first and second insulated wires, 2 Appeal2014-006038 Application 12/948,282 and activating the chemical foaming agent in the at least one section of the solid insulative material to create at least one foamed section in the solid insulative material in at least one of the first and second insulated wires. Appellant appeals the following rejections under 35 U.S.C. § 103(a): I. Claims 1, 5-9, 11, 14, 16 and 19-22 as unpatentable over Siekierka et al. (USPN 6,222,129 Bl, issued Apr. 24, 2001) in view of Witman et al. (USPN 3,365,353, issued Jan. 23, 1968); II. Claims 10 and 23 as unpatentable over Siekierka and Witman in combination with Sato et al., (JP 2002-214491 A, published July 31, 2002.); III. Claims 3, 12, 13, 17, and 24 as unpatentable over Siekierka and Witman in combination with Belli et al., (USPN 7,105,749 B2, issued Sept. 12, 2006); and IV. Claims 4 and 18 as unpatentable over Siekierka and Witman in combination with Kenny et al., (USPN 7,473,848 B2, issued Jan. 6, 2009) FINDINGS OF FACT AND ANALYSES REJECTION (I): § 103 over Siekierka and Witman The Examiner's findings and conclusions are located on pages 3 to 7 of the Final Office Action dated June 3, 2013 ("Final Act.") With respect to claim 1, the Examiner finds that Siekierka discloses a twisted pair of cables having a foamed insulation layer applied over the entire cable, wherein the cable can be twisted prior to coating it with an insulation material. (Final Act. 3--4). The Examiner finds that Siekierka fails to teach adding a chemical agent to the insulation material before heating the insulated wire to activate the insulation to form a foamed area (Final Act. 4). However, the 3 Appeal2014-006038 Application 12/948,282 Examiner finds that Witman teaches adding an ink catalyst to a polyvinylchloride (PVC) insulation layer to form foamed and unfoamed areas of an insulation material (Final Act. 4). The Examiner concludes that it would have been obvious to add a catalyst ink to the insulation material in Siekierka' s process to form foamed and unfoamed areas with expectation of success as evidenced by Witman (Final Act. 4). Appellant contends that Siekierka and Witman do not teach the specific order of method steps for making wire insulation as recited in the present independent claims (App. Br. 10). Particularly, Appellant contends that Siekierka discloses forming its wires by twisting after insulation has been applied as opposed to the specific order of steps recited in the present claims requiring twisting the insulated wire first prior to heating the wires and activating a chemical foaming agent (App. Br. 11 and 12). Appellant contends that Witman teaches adding an ink catalyst to a decorative surface coating to produce foam but does not suggest applying the catalyst to wire insulation and heating it, let alone, heating the insulated wire only after it has been twisted (App. Br. 11 ). Appellant further contends that the combination of Siekierka and Witman is improper because the rejection is based on impermissible hindsight; not based on facts gleaned from the prior art but instead on the step of twisting/twinning insulated wires prior to heating found only in Appellant's disclosure (App. Br. 12-13). We agree with Appellant that the rejection is not well founded and is improperly based on impermissible hindsight. Siekierka teaches twisting the insulated wire after the insulation has been applied and does not teach the steps of twisting the wires first followed by a heating step. Witman' s teachings regarding adding an ink catalyst to the surface of a decorative 4 Appeal2014-006038 Application 12/948,282 article to provide a foamed surface upon heating does not address this deficiency. The Examiner has not provided any explanation as to why the cited prior art would have suggested the step of twisting the wires before heating as required in claims 1 and 14 as opposed to the teachings in Siekierka wherein the twisting occurs only after insulation is applied. That is, we agree with Appellant that Siekierka and Witman do not teach or suggest the presently claimed method of making wire insulation having the specific step of twisting insulated wire containing a chemical foaming agent as recited in claim 1 (or twinning wires in claim 14) prior to heating the wire and activating the foaming agent to provide a foamed section in the insulation material. There is no reason whatsoever provided by the Examiner for combining Siekierka with Witman that would have suggested the specified order of steps required in the present claims, particularly, twisting the wire prior to heating. Therefore, the rejection lacks any rational underpinning. We disagree with the Examiner's findings that the heating step would be "inherent," and that performing this step "before or after" twisting would be a matter of "design choice" (Examiner's Answer dated February 18, 2014 ("Ans.") 3. We agree with Appellant that the step of heating, much less twisting the wire prior to heating, is not necessarily present in Siekierka because the "final insulation" therein has been extruded over the wires prior to twisting and, thus, there is no need for heating the wires at all (Reply Brief entered April 18, 2014 ("Reply Br.) 2; Siekierka col. 6, 11. 60-63). Further, we agree with Appellant that the Examiner's assertion that twisting the wires prior to heating is a "design choice" is a conclusory statement 5 Appeal2014-006038 Application 12/948,282 unsupported by the teachings of the applied prior art and based upon hindsight of the Appellant's disclosure (Rep. Br. 3). On this record, we are constrained to reverse the Examiner's § 103 rejection over Siekierka and Witman because it is based on impermissible hindsight. REJECTION (II to IV): § 103 over Siekierka, Witman and Sato, Belli or Kenny. Rejections (II to IV) are over dependent claims and do not rely on Sato, Belli or Kenny to cure any of the deficiencies noted with regard to claims 1 and 14. Consequently, rejections (II) to (IV) are also reversed. Therefore, on this record, we reverse the Examiner's § 103 (a) rejections (I) to (IV). DECISION The Examiner's decision is reversed. ORDER REVERSED 6 Copy with citationCopy as parenthetical citation