Ex Parte FAUSZ

Patent Trial and Appeal Board

Mar 30, 2016

12948282 (P.T.A.B. Mar. 30, 2016)

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,
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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
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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
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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
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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
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