Ex Parte 5424491 et al

Patent Trial and Appeal Board

Feb 27, 2013

90009467 (P.T.A.B. Feb. 27, 2013)

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.
90/009,467 06/29/2009 5424491 096001-0111 4751
22428 7590 02/27/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
NGUYEN, MINH T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BELDEN INC.
1

Appellant, Patent Owner
____________________

Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491
2

Technology Center 3900
____________________

Before DANIEL S. SONG, JOSIAH C. COCKS, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

1
Belden Inc. is the real party in interest. App. Br. 2.
2
Issued June 13, 1995.
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

2
The Patent Owner appeals under 35 U.S.C. §§ 134(b) from a Final
Rejection by the Examiner of claims 1-16, claims 6-16 having been added
during the reexamination. We have jurisdiction under 35 U.S.C. § 6(b)(2).
In addition to the Appeal Brief (herein “App. Br.”), the Patent Owner also
relies on a Reply Brief filed on August 23, 2011 (hereinafter “Reply Br.”), a
Supplemental Reply Brief filed on December 5, 2011 (hereinafter “Supp.
Reply Br.”), a Declaration of Mr. William T. Clark dated June 4, 2010
(“Clark Declaration”), and testimony of various witnesses from the trial
transcript of Case No. 08-0063, Belden Technologies, Inc. et al. v. Superior
Essex, Inc. et al (D. Del.). The Examiner filed an Answer (hereinafter
“Ans.”) on June 23, 2011 and a Supplemental Answer (hereinafter “Supp.
Ans.”) on October 4, 2011. An oral hearing was held on February 6, 2013.
We AFFIRM.
The invention is directed to telecommunications cables. Claim 1 is
representative and is reproduced below:
1. A telecommunications cable comprising a core
having a plurality of pairs of twisted together individu-
ally insulated conductors with all of the conductors
being of the same gauge and the maximum twist lay of
the plurality of pairs being 2.00 inches with a first group
of the plurality of conductor pairs having twist lays
within a first range, the conductors of the first group
having the same insulation thickness which is consistent
with providing a nominal characteristic impedance for
each conductor pair of the first group within desirable
limits and an acceptable signal attenuation, and at least a
second group of the plurality of conductor pairs hav-
ing twist lays within a second range, the conductors of
the second group having the same insulation thickness
which is different from that for the first group and
which is consistent with providing a nominal character-
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

3
istic impedance for each conductor pair of the second
group which is also within the desirable limits and an
acceptable signal attenuation.
The evidence relied upon by the Examiner in rejecting the claims is:
Parcé
Beggs et al.
Keller et al.
Sidi et al.
US 2,792,442
US 4,697,051
US 4,773,867
US 5,010,210
May 14, 1957
Sep. 29, 1987
Sep. 27, 1988
Apr. 23, 1991

The Examiner rejected the following claims under 35 U.S.C. § 103(a)
as unpatentable over the noted combination of references:
1. Claims 1-2, 6-10 and 14-16 based on the combination of Parcé
and either Sidi or Beggs. Ans. 5.
2. Claims 3 and 11 based on the combination of Parcé; either Sidi or
Beggs; and Keller. Ans. 11.
3. Claims 4, 5, 12, and 13 based on the combination of Parcé, Sidi,
and Beggs. Ans. 13.

ANALYSIS
1. Obviousness of claims 1, 2, 6-10, and 14-16 over Parcé and either
Sidi or Beggs
a. Claims 1, 2, and 6-8
Appellant argues claims 1, 2, and 6-8 as a group. App. Br. 3. We
select claim 1 as representative for purposes of deciding the appeal.
In rejecting claim 1 for obviousness over Parcé in combination with
either Sidi or Beggs, the Examiner found that Parcé discloses a
telecommunications cable having all limitations of claim 1 except “the
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

4
maximum twist lay of the plurality of pairs being 2.00 inches.” Ans. 5-7.
The Examiner further found that Sidi discloses a telecommunications cable
in which conductors have “ „[a] twist lay … in the range of 1.00 to 2.00
inches.‟ ” Id. at 7 (quoting Sidi, col. 3, ll. 1-2). The Examiner also found
that Beggs discloses a telecommunications cable having conductors with a
“ „twist length [that] falls in the range of about 0.25 to 1.6 inches.‟ ” Id.
(quoting Beggs, col. 6, ll. 16-17). The Examiner yet further found that Sidi,
as acknowledged in the ‟491 patent itself in a discussion of Sidi, discloses an
advantage gained by using small twist lays in telecommunications cable,
namely, “[reducing] electromagnetic interference … to provide
minimization in crosstalk.” Id. (quoting discussion of Sidi at col. 1, ll. 29-32
of the ‟491 patent). The Examiner concluded that it would have been
obvious to modify Parcé to employ short twist lays as disclosed by Sidi or
Beggs in view of the advantage in such a modification as appreciated by
Sidi, and that one of ordinary skill in the art would have had a reasonable
expectation of success in making this modification “because of the
predictable result of combining such features.” Id. at 7-8.
Appellant responds with several arguments, each of which we
consider in turn.
1) Failure of cited art to disclose “telecommunications cable”
Appellant argues that the recitation in claim 1 of “telecommunications
cable” limits the scope of claim 1 to “a cable configured to transmit high-
frequency data” as distinguished from a “conventional cable,” which is
designed for voice frequency ranges and is unsuitable for high frequency
data transmission. App. Br. 8-9. Appellant notes that the ‟491 patent
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

5
“expressly identifies” the invention as a “high frequency cable” that is
intended to solve problems associated with “conventional cable designs.” Id.
at 9. Appellant, citing the “own lexicographer” rule, points to various
passages in the ‟491 patent that purport to define “telecommunications
cable” as “a cable configured to transmit high-frequency data.” Id.
3

In response, the Examiner takes the position that the passages
Appellant cites do not expressly state that the unqualified term
“telecommunications cable” is defined as “a cable configured to transmit
high-frequency data” and that the sole occurrence of “telecommunications
cable” in the claim— in the preamble— imposes no structural limitation,
because the body of the claim fully sets out the cable structure. Ans. 17-18.
Appellant argues in reply that the claim term “telecommunications cable”
must be interpreted in a manner consistent with the Specification and that,
because the Specification is directed to a telecommunications cable that is
configured to transmit high frequency data, so too must the claim be
interpreted not to encompass cables that are incapable of high frequency data
transmission. Reply Br. 4-6.

3
Appellant also refers to a construction of this term in a co-pending
litigation, Case No. 08-0063, Belden Technologies, Inc. et al. v. Superior
Essex, Inc. et al. (D. Del.). App. Br. 10. We understand that the Court in
that case vacated all judgments prior to a consent final judgment. See
“Order Vacating Judgments,” paper no. 329, and “Consent Final Judgment,”
paper no. 330. We will therefore not consider further any findings,
conclusions, or judgments from that proceeding. We find no indication in
the record of the present proceeding that Appellant brought this result of the
litigation to the attention of the Office or the Board. Appellant is reminded
of its continuing obligation under 37 C.F.R. § 1.565(a) to notify the Office
of concurrent proceedings, including litigation “and the results of such
proceedings” (emphasis added).
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

6
The Examiner counters that the Specification passages cited by
Appellant as supporting the definition of “telecommunications cable” do not
meet the requirements in M.P.E.P § 2111 for an express definition, that “it is
the structure recited in the body of the claim [that] defines the term
‘telecommunications cable’ recited in the preamble,” and that Parcé in
any event specifically discloses suitability of its cables for “higher
frequenc[y]” operation. Supp. Ans. 3-4 (quoting Parcé, col. 1, ll. 19-24).
Appellant then argues:
Even if the ‟491 patent did not explicitly define the term
“telecommunications cable” to mean “a cable configured to
transmit high frequency data” (which Patent Owner does not
concede), this meaning is clearly correct given the usage of the
term in the context of the specification.
Supp. Reply Br. 3. Appellant further argues that Parcé‟s mention of “higher
frequencies” is irrelevant to the proper construction of “configured to
transmit high frequency data” in the present case because it does not reflect
ordinary and customary meaning of “high frequency” “ „at the time of the
invention, i.e., as of the effective filing date of the patent application.‟ ”
Supp. Reply Br. 4 (quoting Phillips v. AWH Corp., 415 F.3d 1303, 131 (Fed.
Cir. 2005) (en banc)).
We agree with the Examiner that the claim term “telecommunications
cable” is not limited to “a cable configured to transmit high frequency data.”
While the ‟491 patent Specification does identify “high frequency cable” as
the invention (see Abstract) and does draw numerous distinctions between
“conventional cable” and high-frequency cable (see, e.g., col. 1, ll. 7-23), it
does not go so far as to define the term “telecommunications cable” as “a
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

7
cable configured to transmit high frequency data” either expressly or
impliedly by its use in the context of the Specification. None of the
Specification passages Appellant cites amounts to an explicit definition of
“telecommunications cable,” let alone an explicit definition of that term as
“a cable configured to transmit high frequency data.” Instead, the
Specification utilizes the term “telecommunications cable” more generally to
refer to different types of cables, and consistently qualifies its use of the
term “telecommunications cable” when describing these two types of cable,
i.e., in describing such cable for high frequency use versus for conventional
low-frequency use. See, e.g., col. 3, ll. 20-21 (“FIG. 2 is a cross-sectional
view through a telecommunications cable for high frequency use”); ll. 57-59
(“For normal considerations in telecommunications cable design, for normal
voice frequency cables with a long twist lay, …”); ll. 67-68 (“However,
when a telecommunications cable is designed to operate at high frequencies,
…”); col. 4, ll. 31-34 (“this places a limit on the number of twisted pairs
which may be placed in the core of a high frequency telecommunications
cable…”).
This consistent use of qualification when employing the term
“telecommunications cable” in the Specification indicates that the term does
not refer exclusively to high-frequency cable, but rather to both types of
cable. Thus, within the context of the Specification, the term
“telecommunications cable” is not used to refer specifically to cables
configured to transmit high frequency data or in a manner that excludes
“conventional” voice frequency cables. Rather, the term is used to refer to
these cable types generally and is qualified by a phrase such as “voice
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

8
frequency” or “high frequency” to specify what type of telecommunications
cable is being discussed. A fair reading of the Specification therefore does
not bear out Appellant‟s argument.
Appellant‟s remaining arguments concerning the claim limitation
“telecommunications cable” (App. Br. 10-12; Reply Br. 6-7) are all
premised on this incorrectly narrow construction and are therefore not
commensurate in scope with claim 1.
For these reasons, we are not persuaded that the Examiner erred in
finding that Parcé discloses a “telecommunications cable.”
2) Failure of cited art to disclose “a plurality of pairs of twisted
together individually insulated conductors”
The Examiner found that Parcé discloses “a plurality of pairs of
twisted together individually insulated conductors,” relying principally on
the following passage from column 4, line 53 to column 5, line 2 of Parcé:
The examples described are relative to a 12 star-quad with two
layers. Within the scope of the present invention, similar
arrangements may be applied for equalizing the constants of the
circuits of cables with multiple layers consisting of star quads,
multiple twin quads or pairs.
Ans. 5-6 (emphasis supplied by Examiner).
While acknowledging this disclosure in Parcé, Appellant characterizes
Parcé‟s references to “pairs” as “very limited” and argues that Parcé
“provides no instruction on which „arrangements‟ it is referring to, or on
how the arrangements should be modified to use with twisted pairs.”
App. Br. 13; Reply Br. 8. Appellant also argues that, to the extent that the
Examiner takes the position that substituting pairs for quads would have
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

9
been obvious, the substitution would “not have been possible,” “would not
have yielded predictable results,” Parcé “gives no guidance” as to how to do
this, and is moreover “internally inconsistent” as to insulation thickness and
other properties. App. Br. 18-21.
Appellant‟s arguments do not persuade us of error. The Examiner
found, and we agree, that Parcé expressly discloses that his cable
“arrangements may be applied for … cables with multiple layers consisting
of … pairs.” Parcé col. 4, l. 54 to col. 5, l. 2. Appellant acknowledges that
Parcé discloses pairs but argues that Parcé does not specify which
arrangements can accommodate pairs or how arrangements should be
modified to accommodate them. We disagree. Parcé unequivocally
discloses that “similar arrangements” to the examples described for two-
layer star quads may be applied to cables with pairs. Id. Parcé also
specifically identifies Fig. 4 as illustrating “a conductor in a pair or quad of a
telephone cable, insulated according to the invention.” Id. at col. 2, ll. 37-
38. From this it is clear that Parcé‟s disclosure of “pairs” is directly
applicable to all embodiments of the invention.
Appellant‟s arguments relating to the unobviousness of modifying
Parcé‟s cables to incorporate pairs are inapposite, because the Examiner did
not premise the rejection on such a modification. The Examiner did not
suggest that one must look beyond Parcé to reach the limitation in question.
Rather, the Examiner simply relied upon Parcé‟s own disclosure that his
cable arrangements are equally applicable to pairs as they are to quads in
finding that Parcé discloses the limitation at issue.
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

10
For these reasons, we are not persuaded that the Examiner erred in
finding that Parcé discloses “a plurality of pairs of twisted together
individually insulated conductors.”
3) Whether one having ordinary skill would have combined Parcé
with Sidi or Beggs
Appellant argues that one having ordinary skill in the art at the time
the ‟491 patent was filed would not have looked to Parcé for teachings
relevant to the design of high-frequency telecommunications cables because
Parcé was long outdated by 1990‟s standards and because Parcé would have
required significant updating to be suitable. App. Br. 13-21; Reply Br. 8-11;
Supp. Reply Br. 4-5. Appellant also argues that one having ordinary skill
would not have modified Parcé with Sidi‟s or Beggs‟s short twist lays
because “short twist lays at low frequencies would result in poor electrical
characteristics.” App. Br. 16 (citing Clark Decl. para. 9).
Appellant‟s arguments do not persuade us of error in the rejection.
Arguments directed to the unsuitability of Parcé as a starting point for high-
frequency cable design are not commensurate in scope with claim 1, because
claim 1 is not limited to cables “configured to transmit high frequency data”
for reasons given above, and because claim 1 recites no structural features
that distinguish its subject matter from lower-frequency cables such as
Parcé‟s.
Paragraph 9 of Mr. Clark‟s declaration, when considered along with
all other evidence of record, fails to establish preponderantly that one of
ordinary skill in the art would not have found it obvious to modify Parcé to
have short twist lays. Paragraph 9 reads, in full:
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

11
9. The cables described by Parce would not employ twist lays
of less than 2.0 inches because such short twist lays would be
incompatible with the low carrier frequencies of up to 240 kHz
in use at the time of Parce. Shorter twist lays, at such low
frequencies would in fact be disadvantageous due to short twist
lays incurring higher manufacturing costs and resulting in
poorer electrical characteristics such as, for example, higher
attenuation levels.
Clark Decl. para. 9. But other evidence of record tends to establish the
obviousness of modifying Parcé to have the claimed short twist lays. In
particular, Sidi discloses that even low frequency cables benefit from short
twist lays. See Sidi, col. 2, ll. 14-15 (“[T]he small twist lay minimizes
crosstalk at the above voice frequencies [up to about 4 or 4.5 megabits]”
4
).
Mr. Clark‟s evidence does not establish error in or unreliability of Sidi‟s
disclosure. While paragraph 9 of Mr. Clark‟s declaration identifies certain
disadvantages of employing short twist lays, it fails to contradict or dispel
the advantage identified in the evidence of record.
5

The relevant evidence considered as a whole tends to establish that
there were both advantages and disadvantages to employing short twist lays
in low-frequency cable. The mere existence of disadvantages resulting from
a modification, however, does not establish the unobviousness of the
modification, especially when the modification also offers an advantage.

4
See Sidi, col. 1, ll. 8-9 for material added to quotation.
5
Appellant also presented trial testimony of Respondent‟s expert, Mr. Les
Baxter. App Br. 15-16. Setting aside whether we should consider Mr.
Baxter‟s testimony at all given the result of that litigation, see n. 3, supra,
we find Mr. Baxter‟s evidence to be not commensurate in scope with claim
1, as it is directed to obviousness of making a high-speed cable in view of
low-speed prior art cables.
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

12
Tradeoffs regarding features, costs, manufacturability, or the like, do not
necessarily prevent the combination. See Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”). The disadvantages Mr. Clark asserts, when set
against Sidi‟s advantage, do not establish the nonobviousness of the
combination.
For these reasons, we are not persuaded that the Examiner erred in
finding it reasonable to combine Parcé with Sidi or Beggs.
4) Whether Parcé is analogous
Appellant‟s argument that Parcé is non-analogous art is premised on
the assertions that the claimed invention is limited to cables configured to
transmit high frequency data and that Parcé‟s cables are not so configured.
App. Br. 21-22; Reply Br. 1-12. We disagree with Appellant and find that
Parcé, the other references of record, and the claimed invention all concern
the same field of endeavor, viz., cables for transmission of electrical signals.
Moreover, the claims are not limited to cables configured to transmit high
frequency data, for reasons explained above.

Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

13
b. Claims 9, 10, and 14-16
Appellant argues these claims as a group. App. Br. 3. We select
claim 9 as representative.
Claim 9 depends from claim 1 and further requires, among other
things, that the conductors of the first and second groups be spaced apart by
their insulations. The Examiner found that Parcé‟s fig. 3 “discloses that the
conductors of the second group (outer layer) are spaced apart by their
insulations.” Ans. 9.
Appellant argues that in the ‟491 patent shows in Fig. 3 that “the
insulators [sic conductors] are spaced apart only by their insulations” while
Parcé‟s conductors, in contrast, “are spaced apart by a combination of
insulating yarn [sic conductors] 12 [sic 21], 22, insulating tape 11 [sic 3],
and a quad-core 8” such that “Parcé does not teach the combination of
features of claim 9.” App. Br. 22. Appellant further argues that one of
ordinary skill in the art would understand that the claim language “spaced
apart by their insulations” requires the insulation to provide spacing. Reply
Br. 13.
The Examiner argues that claim 9 does not require that the insulators
be spaced apart only by their insulations and that “[t]he language of the
claim does not exclude other insulation layers.” Ans. 26. The Examiner
further points out that claim 9 uses the transition phrase “comprising” and so
does not exclude other insulation layers. Supp. Ans. 9.
Appellant‟s arguments do not persuade us of error in the rejection.
Appellant seeks to justify a narrow construction of “spaced apart by their
insulations” as “spaced apart only by their insulations” with reference to an
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

14
embodiment illustrated in the patent and no more than a bare assertion of
what one having ordinary skill in the art would have understood the term to
mean. App. Br. 22. While a patentee might not be obliged to make a “clear
disavowal” to justify a narrow construction, see In re Abbott Diabetes Care
Inc., 696 F.3d 1142, 1149-50 (Fed. Cir. 2012), there must be some indication
in the specification that the patentee intended the invention to exclude a
particular arrangement or to be limited to certain embodiments. See, e.g.,
Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1375 (Fed. Cir.
2012) (quoting Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 792
(Fed.Cir.2010)). Here, patentee offers none. We agree with the Examiner
that the broadest reasonable interpretation of “spaced apart by their
insulations” is not limited to “spaced apart only by their insulations.”
Moreover, Parcé‟s fig. 3, which was specifically cited by the
Examiner in rejecting claim 9, shows that the insulation layers in adjacent
conductors of the outer-layer quad touch one another. Those conductors are
therefore spaced apart from one another only by their insulations. Appellant
has not explained why the insulating tape 3 and insulating conductors 21, 22
that are wrapped around each conductor are not properly considered “their
insulations.” Thus, even if claim 9 is construed as Appellant urges, Parcé
still discloses this limitation.
We therefore are not persuaded of error in rejecting these claims.
For these reasons, we affirm the rejection of claims 1, 2, 6-10, and 14-
16 under 35 U.S.C. § 103(a) for obviousness over Parcé and either Sidi or
Beggs.
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

15
2. Obviousness of claims 3 and 11 over Parcé; Sidi or Beggs; and
Keller.
a. Claim 3
Appellant refers to its arguments concerning patentability of claim 1.
App. Br. 23. Appellant‟s only additional argument is that “Keller does not
remedy the deficiencies of Parc[é] and Sidi or Beggs.” Id. As we find no
“deficiencies” in these references as applied by the Examiner, we affirm the
rejection of claim 3 for reasons similar to those given above with respect to
claim 1.
b. Claim 11
Appellant refers to its arguments concerning patentability of claims 1
and 9. App. Br. 23. Appellant‟s only additional argument is that “Keller
does not remedy the deficiencies of Parc[é] and Sidi or Beggs.” Id. As we
find no “deficiencies” in these references as applied by the Examiner, we
affirm the rejection of claim 11 for reasons similar to those given above with
respect to claims 1 and 9.
3. Obviousness of claims 4, 5, 12, and 13 over Parcé, Sidi, and Beggs.
a. Claims 4 and 5
Appellant argues claims 4 and 5 as a group. App. Br. 23. We select
claim 4 as representative.
Claim 4 depends from claim 1 and further requires that “the
conductors are each of 24 AWG and have different twist lays from 0.25 to
0.86 inches with the conductors in a plurality of conductor pairs with twist
lays within a lower range each having an insulation thickness which is
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

16
greater than an insulation thickness of the other conductor pairs with twist
lays within an upper range.” App. Br. 30.
The Examiner found that Parcé discloses different twist lays (Ans. 6),
and that Sidi discloses 24 AWG conductors having short twist lays in the
claimed range. Ans. 13. While acknowledging that Parcé discloses “the use
of thinner insulation… with tighter twist lays” (in contrast to the claim), the
Examiner found that Parcé invites the artisan to “reverse[]” adjustments as
needed to achieve desired changes in the dielectric constant and that the
“finite” number of combinations— having the thicker insulation with either
the longer or shorter range of twist lays— would have made it obvious to try
the claimed combination in light of the prior art. Ans. 13-14.
Appellant argues that (a) the Examiner failed to establish that there
was a recognized problem or need in the art, (b) erroneously found that there
was a finite number of solutions, given the complexities of high-frequency
cable design, and (c) failed to show that a person having ordinary skill in the
art would have had a reasonable expectation of success, again given the
complex and unpredictable nature of designing high-frequency
telecommunications cables. App. Br. 25-28; Reply Br. 14-16.
Appellant‟s arguments do not persuade us of error in the rejection.
Arguments (b) and (c) are wrongly premised on the assertion that the claims
are limited to cables configured to transmit high frequency data; these
arguments are therefore not commensurate in scope with the claims.
Argument (a) is not borne out by a preponderance of evidence in the record.
The Examiner correctly observed that “Parc[é] demonstrates that one of
ordinary skill in the art would know that twist lay, dielectric constant and
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

17
insulation thickness could be manipulated to achieve certain characteristic
impedance and attenuation in a conductor.” Ans. 14. Given the knowledge
from Parcé that changing insulation thickness would affect attenuation, we
do not agree with Appellant that the Examiner erred in concluding that the
claimed invention would have been obvious to try. For these reasons, we
affirm the rejection of claims 4 and 5.
b. Claims 12-13
Appellant argues claims 12 and 13 as a group. App. Br. 23. We
select claim 12 as representative for purposes of deciding the appeal.
Appellant refers to its arguments concerning patentability of claims 1,
4, and 9. App. Br. 28-29. Appellant‟s only additional argument is that
“Beggs does not remedy the deficiencies of Parc[é] and Sidi.” Id. As we
find no “deficiencies” in these references as applied by the Examiner, we
affirm the rejection of claims 12 and 13 for reasons similar to those given
above with respect to claims 1, 4, and 9.

DECISION
The Examiner‟s Final Rejection of claims 1-16 is AFFIRMED.

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

alw
Appeal 2012-000943
Reexamination Control 90/009,467
Patent No. 5,424,491

18
Patent Owner:

FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON DC 20007

Third Party Requester:

KING & SPALDING LLP
1180 PEACHTREE STREET
ATLANTA GA 30309