Appeal 2006-2778
Application 10/780,021
the inventor is involved." In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d
1209, 1212 (Fed. Cir. 2004).
The field of endeavor of the claimed invention is waterproofed
electrical cables. Asai expressly teaches using a water-swellable
composition to block water migration along a cable (Asai, col. 1, ll. 7-11).
See also Asai, col. 13, ll. 17-18 (claiming a method of preparing a water-
blocking composite comprising, among other things, applying water-
swellable compound to a cable component). But even assuming, without
deciding, that Asai is somehow not in the same field of endeavor as the
claimed invention, Asai is nevertheless reasonably pertinent to the inventor’s
problem – namely, reducing or eliminating moisture ingress into an
electrical cable. Therefore, the skilled artisan would have reasonably
referred to the teachings of Asai when confronted with the problem of
reducing or preventing moisture ingress into an electrical cable.
For at least the above reasons, we will sustain the Examiner’s
rejection of independent claim 33 and dependent claims 39, 46, 48, and 53.
Since Appellants have not separately argued the patentability of dependent
claims 34-38, 40-45, 47, 49-52, and 54-56 with particularity, these claims
fall with independent claim 33. See In re Nielson, 816 F.2d 1567, 1572, 2
USPQ2d 1525, 1528 (Fed. Cir. 1987); see also 37 C.F.R. § 41.37(c)(1)(vii).
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