DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 8, 9, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Copete Cano et al. (2019/0164666) in view of Yaworski et al. (9780549) and Perez-Lazcano et al. (10985538).
Copete Cano et al. discloses an HVDC power cable joint assembly ([0002]) for joining more than two HVDC power cables, comprising a connection body (Fig. 7) having a multi-branch conductor having at least two branches (97, 98) and a stem (99); a multi-branch conductor insulation system including a connection body inner semiconducting layer (69) arranged radially outside of the multi-branch conductor, a connection body insulation layer (70) arranged radially outside the connection body inner semiconducting layer, a connection body outer semiconducting layer (71) arranged radially outside the connection body insulation layer; N power cables, wherein N is the number of branches plus one, each power cable being an HVDC power cable and having a conductor and a power cable insulation system (Fig. 2) surrounding the conductor; and N power cable joints (77-79), each power cable joint connecting one of the at least two branches or the stem to a respective power cable of said N power cables, wherein each power cable joint includes a conductor joint between said one of the at least two branches or the stem and the conductor of the respective power cable of the N power cables (re-claim 1).
Copete Cano et al. does not disclose a joint insulation system arranged around the conductor joint, wherein the joint insulation system includes a deflector layer, a field grading layer, a joint insulation layer, and a joint insulation system outer semiconducting layer; an outer cover housing the joint insulation system; and an external metal casing accommodating the connection body (re-claim 1).
Yaworski et al. (Figs 8-9) discloses a power cable joint comprising a conductor joint (60); a joint insulation system arranged around the conductor joint, wherein the joint insulation system includes a deflector layer (conductive layer 360), a field grading layer (350), a joint insulation layer (332), and a joint insulation system outer semiconducting layer (338); and an outer cover (140, labeled in Fig. 2) housing the joint insulation system. It would have been obvious to one skilled in the art to use the joint insulation system taught by Yaworski et al. in the joint assembly of Copete Cano et al. to further protect the joints from surrounding environment, joint insulation system having multiple layers.
Perez-Lazcano et al. discloses a cable joint assembly comprising an external metal casing (109) accommodating a connection body (107). It would have been obvious to one skilled in the art to provide the joint assembly of Copete Cano et al. with an external metal casing accommodating the connection body as taught by Perez-Lazcano et al. to provide a shielding means for the joints.
It is noted that in the modified cable joint assembly of Copete Cano et al., the field grading layer (150/350 of Yaworski) has a lower electric conductivity than the inner and outer semiconducting layers (69, 71) of the multi-branch conductor insulation system. Specifically, Copete Cano et al. discloses that the field grading layer (mastic 150/350) is a silicone rubber-based mastic (col. 6 lines 9-10). Yaworski discloses that the inner and outer layers (69, 71) of the multi-branch conductor insulation system are semiconducting layers made of a semiconducting material ([0099] and [0101]). A semiconducting material would have an electric conductivity higher than that of a silicone rubber material (re-claim 1).
Re-claims 2 and 20, It would have been obvious to one skilled in the art to use steel or stainless steel for the metal casing (of Perez-Lazcano) in the modified joint assembly of Copete Cano since steel or stainless steel is known for its corrosion-resistance.
Re-claims 3 and 16, Copete Cano et al., as modified, discloses the metal casing accommodating the power cable joints (see Perez-Lazcano).
Re-claim 8, it has been held that the patentability of a product claim is determined by the novelty and nonobviouness of the claimed product itself without consideration of the process for making it, prefabricated, which is recited in the claim. In re Thorpe, 111 F. 2d 695, 698, 227 USPQ 964, 966; see also In re Nordt Development Co., LLC, [2017-1445] (February 8, 2018).
Re-claim 9, Copete Cano et al., as modified, discloses the deflector layer (360 of Yaworski) being arranged between the conductor joint and the field grading layer (350 of Yaworski); the joint insulation layers (332) being arranged radially outside the field grading layers; the joint insulation system outer semiconducting layer (338) being arranged radially outside the joint insulation layer.
Allowable Subject Matter
Claims 4-7 are allowed.
Claims 17-19 and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot in view of new ground of rejection.
Applicant argues that the mastic layer (150/350) of Yaworski provides electrical stress control, and that the stress control function is materially different from the dedicated field grading function cited in the claims. Examiner would disagree. Claim 1 broadly recites “a joint insulation system including a deflector layer, a field grading layer, a joint insulation layer, and a joint insulation system outer semiconducting layer.” Claim 9 further defines the joint insulation system as having the deflector layer arranged between the conductor joint and the field grading layer, having the joint insulation layer arranged radially outside the field grading layer, and having the joint insulation system outer semiconducting layer arranged radially outside the joint insulation layer. Yaworski, likewise, discloses a joint insulation system as claimed in claims 1 and 9. The fact that Yaworski discloses the joint insulation as claimed, layer 150/350 of Yaworski is a field grading layer. It has been held that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). Newly added claim 21 further defines the material of the field grading layer, and it is indicated as allowable in this Action.
Applicant argues that the burden in a 103 analysis is on the examiner to establish that the combination teaches every element of the claim, not on the applicant to disprove what the prior art might hypothetically accomplish. Examiner would disagree. In the above and previous rejections, examiner does establish that the combination teaches every element of the claim. Applicant does not point out what element is missing from the combination. Instead, applicant argues that the mastic material disclosed in Yaworski will not function as a field grading material in HVDC applications in steady state, only in transient situations. MPEP 2114(I) states that “If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40, 100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971) (“where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on”).
Applicant argues that element 360 of Yaworski is structurally and functionally different, and that element 360 is an optional, not a structural deflector layer that shapes the electric field at the conductor joint. Examiner would disagree. Claim 1 broadly recites “a joint insulation system including a deflector layer, a field grading layer, a joint insulation layer, and a joint insulation system outer semiconducting layer.” Claim 9 further defines the joint insulation system as having the deflector layer arranged between the conductor joint and the field grading layer, having the joint insulation layer arranged radially outside the field grading layer, and having the joint insulation system outer semiconducting layer arranged radially outside the joint insulation layer. Yaworski, likewise, discloses a joint insulation system as claimed in claims 1 and 9. The fact that Yaworski discloses the joint insulation as claimed, element 360 of Yaworski is a deflector layer. Furthermore, as disclosed in the applicant’s specification, [0080], the deflector layer comprises an electrically conducting material. Likewise, element 360 of Yaworski comprises an electrically conducting material and arranged as claimed.
Applicant argues that Perez-Lazcano is a non-analogous art. Examiner would disagree because Perez-Lazcano is in the same field of endeavor as the claimed invention, cable joint assembly.
Applicant argues that Perez-Lazcano does not teach the claimed element. Perez-Lazcano’s shield housing 109 accommodates an isolator 107 in a Y-distributor electrical device. This is not an external metal casing accommodating a connection body having a multi-branch conductor with branches and a stem. Examiner would disagree. The fact that the metal housing 109 of Perez-Lazcano surrounding the connection body 107, the metal housing 109 is an external metal casing. Perez-Lazcano discloses the external metal housing 109 having a Y-shape (Fig. 8). Accordingly, it has a stem and two branches.
Applicant argues that examiner asserts that it would have been obvious to provide the joint assembly of Copete Cano with an external metal casing taught by Perez-Lazcano to provide a shielding means for the joints, but has not explained what specific problem in Copete Cano’s joint assembly requires a metal casing for shielding and why one skilled in the art working on HVDC cable joint assemblies would look to an electrical power distributor reference for casing design.
Examiner would disagree. First, examiner does provide rationale for the modification. Second, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Furthermore, examiner’s reason to combine the references does not have to the same as that of the applicant.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding claim 8, applicant argues that the prefabricated joint insulation system of the claimed invention is a pre-integrated, multi-layered elastomeric sleeve that exists as a unitary article before installation. This is structurally distinct from Yaworski's approach, in which a flowable mastic is applied in situ to fill voids and conform to surfaces during cold-shrink installation. The distinction between a prefabricated multi-layer sleeve and a field-applied flowable mastic is a structural one, not merely a process distinction.
Examiner would disagree. Applicant has not pointed out where in the disclosure of Yaworski stating that the “flowable mastic is applied in situ.” The term “prefabricated” is a method limitation, as explained by the applicant that the multi-layered sleeve that exists as a unitary article before installation. Method limitations in the article claims are considered to the extent of the final product. Although, in Yaworski, layer 350 is applied first, then the joint insulation layer 332 is applied thereon. In the final product, the joint insulation system of Yaworski is an integrated, multi-layered sleeve includes, in order, a deflector layer (360), a field grading layer (350), a joint insulation layer (332), and a joint insulation system outer semiconducting layer (338), as claimed in claim 9.
Applicant argues that examiner has not established a prima facie case of obviousness. Examiner would disagree. It has been held that the examiner's burden of establishing prima facie obviousness is satisfied by a showing of structural similarity between the claims and prior art; it does not require a showing of some suggestion or expectation in the prior art that the structurally similar subject matter will have the same or a similar utility as that discovered by the applicant. In re Dillon, 16 USPQ 2d 1897.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAU N NGUYEN whose telephone number is (571)272-1980. The examiner can normally be reached M-Th, 7am to 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani N Hayman can be reached at 571-270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAU N NGUYEN/Primary Examiner, Art Unit 2841
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