GENERAL CABLE TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Jun 17, 2020

2019004129 (P.T.A.B. Jun. 17, 2020)

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.
14/825,503 08/13/2015 Elliot Byunghwa Lee 39795-1009US02 1017
77001 7590 06/17/2020
ULMER & BERNE LLP
c/o Diane Bell
600 Vine Street
SUITE 2800
Cincinnati, OH 45202
EXAMINER
MAYO III, WILLIAM H
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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 ELLIOT BYUNGHWA LEE, SRINIVAS SIRIPURAPU, and
KOKSAL TONYALI

Appeal 2019-004129
Application 14/825,503
Technology Center 2800
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–15 and 17–20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, General Cable Technologies Corporation
(Application Data Sheet filed August 13, 2015 at 5), which is also identified
as the real party in interest (Appeal Brief filed December 3, 2018 (“Appeal
Br.”) at 1).
2 See Appeal Br. 7–26; Reply Brief filed May 3, 2019 (“Reply Br.”) at 1–5;
Final Office Action entered June 29, 2018 (“Final Act.”) at 4–13;
Examiner’s Answer entered March 19, 2019 (“Ans.”) at 4–17.
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I. BACKGROUND
The subject matter on appeal relates to cables resistant to damaging
conditions of nuclear environments for extended periods of time
(Specification filed August 13, 2015 (“Spec.”) ¶ 2). Representative claim 1
is reproduced from the Claims Appendix to the Appeal Brief, as follows:
1. A cable for nuclear environments comprising:
one or more conductors;
a longitudinally applied corrugated shield surrounding
the one or more conductors; and
a cross-linked polyolefin jacket layer surrounding the
longitudinally applied corrugated shield; and
wherein the cable conducts about 5,000 volts to about 68,000
volts in use, is radiation resistant and heat resistant, and
comprises a life span of about 60 years or more when measured
in accordance with IEEE 323.
(Appeal Br. 27 (emphases added)). Claims 19 and 20, which are the only
other independent claims, recite limitations similar to those highlighted in
claim 1, although claim 19 does not recite the IEEE 323 standard but rather
“100 MRads of radiation to an age of about 60 years or more” (id. at 28–29).
II. REJECTION ON APPEAL
Claims 1–15 and 17–20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Ding et al.3 (“Ding”) in view of General Cable Nuclear
Brand Rex ULTROL®: ULTROL® Class 1E & Non-Safety Cables (2011)
(“General”) and Fitz et al.4 (“Fitz”) (Ans. 4–17; Final Act. 4–13).

3 CN 1811999 A, published August 2, 2006 (machine-generated translation
only).
4 US 2010/0132973 A1, published June 3, 2010.
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III. DISCUSSION
1. The Examiner’s Position
The Examiner finds that Ding describes a power control cable for use
in a nuclear power station comprising one or more conductors 1, a tin-coated
shield 5 surrounding the one or more conductors 1, and a cross-linked
polyolefin jacket layer 8 surrounding the shield 5 (Ans. 4; Final Act. 4). The
Examiner also finds:
[Ding’s] cable (Fig 1) is capable of conducting about 5,000 volts
to about 68,000 volts in use (i.e. the prior art cable is a nuclear
cable utilizing the same materials as the claimed invention and
therefore is capable of providing the same characteristics), is
radiation resistant and heat resistant (Paragraph 4 under header
Summary), and is capable of having a life span of about 40
years when measured in accordance with IEEE 323 (Paragraph
4 under the header Summary).
(Ans. 4; Final Act. 4) (emphases added).
The Examiner acknowledges that “Ding doesn’t necessarily disclose
the shield being a longitudinally applied corrugated shield” (Ans. 7; Final
Act. 7). The Examiner finds, however, that General discloses:
a cable (Fig 1) comprising one or more conductors (i.e. tinned
annealed copper), wherein a longitudinal corrugated tinned
copper tape surrounds the one or more conductors (i.e. tinned
annealed copper); and a polyolefin jacket layer
(chlorosulphonated PE) surrounding the shield (longitudinal
corrugated tinned copper tape); wherein the cable passes IEEE
383 thereby capable of conducting about 5,000 volts to about
68,000 volts in use, the longitudinally applied corrugated shield
is substantially free of cracks after artificial aging at about
180° C for about 24 hours and capable of having a life span of
about 60 years or more (i.e. 40 years or more) when measured
in accordance with IEEE 323 (i.e. the prior art cable is a nuclear
cable utilizing the same materials as the claimed invention,
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complies with IEEE 383, IEEE 1202, & IEEE 323, and therefore
is capable of providing the same characteristics).
(Ans. 8; Final Act. 7–8) (emphases added).
Based on these findings, the Examiner concludes that a person having
ordinary skill in the art would have found it obvious
to modify the power cable of Ding to comprise the outer shield
configuration and insulation material as taught by General
because General teaches that such a configuration provides a
cable . . . that is radiation resistant, has maximum flame
retardancy, long term moisture, radiation stability, thermal
endurance, and superior electrical characteristics, wherein the
cable is known and commercially available for purchase
(General Cable website).
(Ans. 8; Final Act. 8).
The Examiner also finds that Fitz teaches a cable in which a conductor
is surrounded by an insulation 330, which is surrounded by an insulation
shield 340, which may be surrounded by a metallic shield 360, which may
be a longitudinally applied corrugated shield, which is then surrounded by a
polyolefin jacket layer 370 (Ans. 9; Final Act. 8–9) (citing Fitz ¶ 55). The
Examiner concludes:
It would have been obvious to one having ordinary skill in
the art of cables at the time the invention was made to modify the
power cable of modified Ding to comprise the outer shield
configuration and insulation material as taught by Fitz because
Fitz teaches that such a configuration provides a power cable
(Figs 3-4) comprising known configurations and utilizing known
materials for providing the cable with environment, thermal, and
mechanical protections (Paragraph 56).
(Ans. 9; Final Act. 9).
2. The Appellant’s Principal Arguments
The Appellant contends that, contrary to the Examiner’s finding, Ding
does not teach that the prior art cable is capable of conducting about 5,000 to
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about 68,000 and also emphasizes that Ding teaches an upper limit for the
cable’s life span of 40 years (Appeal Br. 19). The Appellant argues that
although the Examiner relies on General to remedy the perceived
deficiencies in Ding relative to independent claims 1, 19, and 20, General
fails to do so (id. at 20). In support, the Appellant relies on Inventor Lee’s
Declaration filed April 23, 2018 (“Lee Declaration” or “Lee Decl.”).
Furthermore, the Appellant argues that Fitz fails to cure the deficiencies in
Ding relative to the claimed subject matter and urges that it, too, fails to
teach a cable that would meet all the limitations recited in each independent
claim (id. at 24).
3. Opinion
We agree with the Appellant that the Examiner’s rejection is not well-
founded. Our reasons follow.
Ding appears to disclose a control cable for use in a nuclear power
plant comprising a plurality of conductor cores 1 having external insulating
layers 2 bundled in a bag 3 filled with filler 9, wherein the bag 3 is
surrounded by a fire retardant glass ribbon layer 4, a tinned copper braid
shield layer 5, a layer 6, a glass ribbon tape 7, and an electron beam-
crosslinked outer sheath 8 (Ding (machine-generated translation) 1, 3–4; Fig.
1). Ding teaches that the cable’s thermal life is “up to 40 years” (id. at 1).
As the Examiner acknowledges (Ans. 7), Ding does not disclose a
“longitudinally applied corrugated shield” as required by each independent
claim. Nor does Ding indicate that the cable is capable of conducting about
5,000 to about 68,000 volts in use as required by each independent claim.
General discloses various commercially-available, Class 1E nuclear-
rated cables but are rated only for a 40-year service life (General, second
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page, descriptive text under “ULTROL®”). In addition, the cables described
in General appear to have voltage ratings that are significantly below about
5,000 V—the lower limit of the voltage range recited in the independent
claims (id., Table entitled “ULTROL® Coaxial and Triaxial, Class 1E
Nuclear Cables”).
Fitz discloses a medium-high voltage power cable that allows easy
removal of the cable insulation shield during cable preparation and
installation without the need for specific tools (Fitz ¶ 25). Fitz, however,
does not supply any teaching that cures the deficiencies in the Examiner’s
combination of Ding and General (id. ¶¶ 50, 55–56).
Thus, even assuming that a person having ordinary skill in the art
would have been prompted to combine Ding with General and Fitz, the
Examiner does not direct us to sufficient evidence that the resulting
combination would necessarily possess the voltage in use and the life span
characteristics recited in each independent claim. Indeed, as the Appellant
argues (Appeal Br. 22), General’s ULTROL® cables are described as
including a chlorosulfonated polyethylene (CSPE) jacket (General 5), which
would not be expected to have a life span of about 60 years or more, as
demonstrated in the Lee Declaration and the current Specification (Lee Decl.
¶ 4 and Fig. B; Spec. ¶ 28, Table 1).
The Examiner takes the position that the voltage in use and life span
characteristics would be inherent in the cable resulting from the combination
of the references because “the prior art cable is a nuclear cable utilizing the
same materials as the claimed invention” (e.g., Ans. 4). But Ding’s cable,
which is the cable that the Examiner asserts would have been modified by a
person having ordinary skill in the art in view of General and Fitz, is not
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compositionally and structurally identical to the claimed cable. Therefore,
the Examiner’s inherency position based on identical composition—given
Ding’s and General’s teachings of a significantly lower life span of at most
40 years—is misplaced. Cf. In re Stepan Co., 868 F.3d 1342, 1347 (Fed.
Cir. 2017) (“Reciting [the prior art’s] teachings that ‘any combination’ of
surfactants may be used and that a cloud point above 60°C is desired fails to
illuminate why a skilled artisan would have selected the claimed
combination of surfactants and reasonably expected a cloud point above at
least 70°C.”).
For these reasons, we do not sustain the Examiner’s rejection.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. §  References/Basis Affirmed Reversed
1–15, 17–20 103  Ding, General
Cable, Fitz
1–15, 17–20

REVERSED