Appeal 2006-2778
Application 10/780,021
We will sustain the Examiner’s rejection of independent claim 33.
We agree with the Examiner that ample motivation exists on this record to
incorporate a swelling layer such as that disclosed by Asai in the cable of
Osornio. Asai expressly teaches applying the disclosed water-swellable
polymers to cable components (e.g., wires, rods, tubes, strength members,
reinforcements, etc.) to block water migration along the cable (Asai, col. 1,
ll. 7-11). See also Asai, col. 8, ll. 47-60 (noting that the water-swellable
compositions can be coated and cured on cable components thereby
reducing the space in a cable where water can migrate).
Given this teaching, we see no reason why the skilled artisan would
not have incorporated a swelling layer on the cable components in Osornio
as claimed, particularly in view of Osornio’s stated concern in preventing
the deleterious effects of water migration as the Examiner indicates. Merely
because Osornio’s cover 16 provides some measure of protection against
water ingress hardly forecloses using additional waterproofing measures. In
our view, adding a water-swellable material to the internal components of
Osornio would provide at least an added degree of protection against
moisture ingress to the internal cable components.
We further note that the limitation calling for depositing the swelling
layer electrostatically is a product-by-process limitation since it merely
recites how the structure is formed. It is well settled that reciting how a
product is made does not further limit the structure of the product itself. In
re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985)
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