Ex Parte 6,597,854 et al

Patent Trial and Appeal Board

Mar 27, 2013

95000411 (P.T.A.B. Mar. 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.
95/000,411 11/06/2008 6,597,854 065484-0008B 4667
23552 7590 03/27/2013
MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/27/2013 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
____________

PANDUIT CORPORATION
Requester and Cross-Appellant

v.

ADC TELECOMMUNICATIONS
Patent Owner and Respondent
____________

Appeal 2012-003435
Reexamination Control 95/000,411
Patent 6,597,854 B2
Technology Center 3900
____________

Before RICHARD E. SCHAFER, RICHARD M. LEBOVITZ, and
DANIEL S. SONG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REHEARING
This is a request by Third Party Requester for a rehearing of our
Decision dated June 8, 2012 (“Decision 2”) on the Examiner’s determination
under 37 CFR § 41.77(d). Decision 2 is subsequent to and incorporates a
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Decision dated June 22, 2011 (“Decision 1”) in which a new ground of
rejection was entered under 37 CFR § 41.77(b). In response to the new
ground of rejection, Patent Owner reopened prosecution and amended
claims. Patent Owner’s Response Requesting Reopening of Prosecution
Under 37 C.F.R. § 41.77 (August 23, 2011). Third Party Requester
proposed new rejections which the Examiner did not adopt. Third Party
Requester Comments on Patentee’s Response Requesting Reopening of
Prosecution (September 22, 2011); Examiner’s Determination Pursuant to 37
CFR 41.77(d) (October 7, 2011). In Decision 2, we agreed with the
Examiner’s determination under 37 CFR § 41.77(d) not to adopt the
rejections. This is a rehearing by Requester on that decision. The Patent
Owner is ADC and Third Party Requester is Panduit.
Panduit identifies the following points that they believe to be an error
or misapprehended in Decision 2.

REJECTION OVER ZETENA, SCHEUERMANN, AND LONG
We affirmed the Examiner’s determination not to adopt the rejection
of claims of 8-10, 12-22, 37-49, 51, 52, 57-62, and 64-67 under 35 U.S.C.
§ 103(a) over Zetena, Scheuermann, and Long. We reasoned that it would
not have been obvious to modify Zetena’s strain reliever 54 by replacing the
cable holder 56 with the curved side walls 5 of Scheuermann because (1) the
cable holder 56 does not perform the same function as the curved sidewalls 5
of Scheuermann, and (2) the modification would eliminate the holding
function provided by Zetena's strain reliever 54. Decision 2, p. 13.
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Panduit contends this is an error because the combination of “the
cable holder 56 and protective grommet 58 together perform the function of
relieving strain in the cable (i.e., by preventing bending below a minimum
bend radius).” Req. Reh’g 4. Panduit argues that protective grommet 58 is
flexible, creating a curved pathway for the cable to enter and exit the cable
holder 56. Id. For this reason, Panduit argues that the holder 56 and
grommet 58 perform the same function as the side walls of Scheuermann.
Id.
Panduit also contends that the holding function is not the primary
function of the strain reliever. Id. Rather, Panduit contends that the primary
function of the holder and grommet is to relive strain. Id. Panduit argues
that, when Scheuermann’s side walls replaced the holder 56 and grommet
58, the holding function of the cable holder 56 would “no longer necessary
as a means to achieve the function of relieving strain in the fiber optic cable
because the curved side walls 5 of Scheuermann would perform that same
function.” Id. at 5.
We are not persuaded by Panduit’s arguments that we erred in finding
the claims as not obvious in view of Zetena, Scheuermann, and Long.
Panduit’s argument is based on their assertion that the cable holder 56 and
associated grommet 58 perform the function of “preventing bending below a
minimum bend radius.” Req. Reh’g 4. However, Panduit has not
introduced sufficient evidence that the combination of cable holder and
grommet are effective to prevent bending. In fact, Figure 8, reproduced
below, shows the cable bending in a loop outside the grommet.
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Figure 8 shows the strain reliever 54 with cable holder 56 and slots
57. As shown in the Figure 8, a “cable 3 is encircled with a protective
grommet 58 which is held in place with tie wraps 59. ... The slots 57 are
sized to receive and firmly hold grommet 58.” Zetena, col. 4, ll. 18-23. The
bend in the cable is shown to occur outside of the grommet. Thus, the
grommet does not appear to prevent the cable from bending beyond a
minimum radius as asserted by Panduit. While other more favorable
configurations may be possible, we are simply relying on this drawing to
establish that Panduit’s contention that the grommet 58 and cable holder 56
prevent cable bending beyond a certain minimum radius is not immediately
apparent from Zetena which neither describes nor shows this function.
Panduit contends that the rejection is not “impermissible hindsight
reconstruction.” Req. Reh’g 5. Panduit argues:
As demonstrated by Zetena, Scheuermann, and Long, these
features are well-known in the prior art for the exact same
purpose of preventing bending below a minimum bend radius,
and the skilled artisan could have easily combined them in a
single system for their disclosed purposes without the benefit of
the '854 Patent disclosure. As the Supreme Court made clear in
KSR v. Teleflex, "Common sense teaches, however, that
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familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be
able to fit the teachings of multiple patents together like pieces
of a puzzle." KSR International v. Teleflex Inc., 550 U.S.
398,417 (2007).
Id.
We do not dispute Panduit’s statement of the law. However, there is
inadequate evidence in this record that Zetena’s cable holder and grommet
have “the exact same purpose of preventing bending below a minimum bend
radius” as does the curved sides in Scheuermann.
Moreover, as explained, Zetena's "cable holder 56 is designed with
slots 57 to receive, firmly hold, and secure the grommet 58 that encircules
the fiber optic cable (Findings 3 &4)" thereby holding the cable. Decision 2,
pg. 13. We fail to see, and Panduit does not persuasively establish, how
such function of holding the cable can be attained by the replacing the cable
holder 56 with the curved side walls 5 of Scheuermann. If a proposed
modification would render the prior art invention being modified inoperable
for its intended purpose, then there may be no suggestion or motivation to
make the proposed modification. See In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984); see also In re Schulpen, 390 F.2d 1009, 1013 (CCPA 1968); In
re Sponnoble, 405 F.2d 578, 587 (CCPA 1969).
Thus, we conclude that we did not err in our conclusion of non-
obviousness over the combination of cited prior art.

Appeal 2012-003435
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LONG REJECTION
Panduit contends that Board overlooked Panduit’s argument that
ADC's “admitted configuration of Long anticipates at least claims 2-5, 7, 54,
and 56. Panduit also contends that Board misapprehended Panduit’s newly
proposed rejections over Long in conjunction with new evidence as a
restatement of Panduit’s previously proposed rejection over Long.
In Decision 1, we found that the preponderance of the evidence did
not support Panduit’s contention that Long is anticipatory to the claims.
Panduit tried to put Long before the Examiner again in their Comments on
the Patent Owner’s Response Requesting Reopening of Prosecution
(September 22, 2011). Comments, p. 26. In Decision 2, we did not consider
the Long rejection again because we already had made a determination on it
in Decision 1. Prosecution was not re-opened as to this rejection. Panduit
contends that this was an error. Req. Reh’g. 6. We do not agree.
ADC amended the claims when prosecution was re-opened. Patent
Owner’s Response Requesting Reopening of Prosecution (August 22, 2011).
The issue of whether Long anticipates the claims was not altered by ADC’s
amendments to the claims. However, for the sake of completeness, we shall
address the merits of the Long rejection again.
Long describe a device for protecting cables laid in switch cabinets
and other such equipment. Long, Abstract. The device is configured to
prevent bends below a minimum bending radius at the exits of the cable
ducts. Id. Long teaches that the exit opening of the cable duct guiding
device is “configured such that they prevent falling below the critical
bending radius and that they widen in the direction of exit and are rounded.”
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Id. Long describes only one guiding device and depicts it in Figure 2 as
follows:

The guiding device 3 of Figure 2 is said by Long to have a funnel-
shaped part 5 and a rounded guiding element 6 which can be “an integral
part of the exit opening 1” or “a separate part to be connected with the cable
duct 2 for fitting later.” Long, col. 2, ll. 16-31. Both ADC and Panduit
concede that Long does not explicitly depict sufficient structure in Figure 2
to determine whether Long anticipates claims 13 and 26. However, each of
ADC and Panduit has their own version of what structure is inherently
disclosed by Long, and each provided drawings to illustrate this “inferred”
structure.
Panduit provided Figures A-D, which did not appear in Long, but
which they drew based on alleged inferences from Long. Panduit Appeal
Br. 11-14. We found there was inadequate evidence that one skilled in the
art would have inferred the structure shown in these figures. Decision 1, pp.
33-34. The drawings are speculative and there is insufficient evidence that
they depict a structure necessarily described by Long.
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We also found that, FIGS. A-D do not show a trough as required by
the claims, but rather depict a completely enclosed structure. Id. at 34.
Long does not describe a cable exit trough (ADC App. Br. 35).
A trough is a "long, narrow, open receptacle," gutter, or
channel. [footnote omitted] Long's guide means, which
corresponds to the exit trough of the claims, comprises "funnel
shaped" and rounded elements (FF18 & FF19). The former
element would be understood to be an enclosed tube or shaft.
There is no evidence in the record that Long's guide means is a
trough open at one side as required by the claims. Panduit's own
drawings of Long's guide means show it as completely enclosed
(Panduit App. Br. 20). As an open receptacle is required by all
the claims in the rejection, and such a structure is not described
in Long . . .
Decision 1, p. 32.
Panduit’s new evidence (Declaration of David E. Rapp, dated June 22,
2011) submitted after prosecution was re-opened did not address this issue.
ADC offered another viewpoint of what was depicted in Long’s
Figure 2 (see supra for figure). According to ADC, Long’s Figure 2 is a top
view of one side of the funnel-shaped part 5, and the part facing into the
paper has a rounded bottom to guide the cables, although this rounded part is
never shown by Long. ADC’s drawings are reproduced below:
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ADC Respondent Br. 9.
While ADC’s drawing may be consistent with Long’s teachings, ADC
has not provided sufficient evidence that the guide has a rounded bottom
shape as depicted in the drawing. Rather, as indicated by Panduit in their
own inferred drawings, other configurations are possible, such as an open
bottom and rounded sides. We therefore are not persuaded that the rounded
bottom is necessarily present in Long’s cable exit trough. “Inherent
anticipation requires that the missing descriptive material is ‘necessarily
present,’ not merely probably or possibly present, in the prior art.” Trintec
Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002).
Panduit contends that ADC’s drawing are admitted prior art by ADC,
and that ADC should be bound to such admission. Req. Reh’g 1-2. We do
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not agree that ADC has admitted this structure is prior art. Rather, ADC
indicated it was consistent with Long. ADC Respondent Br. 8. In any
event, we simply do not agree there is sufficient evidence to establish that
ADC’s drawings constitute admitted prior art. Instead, they are speculative.
Even assuming that ADC’s drawing are admitted prior art, we do not
agree that they would meet all the limitations of the claims. As argued by
ADC, the funnel shaped part 5 and guiding element 6 do not cooperate to
form a “cable exit trough” as required by the claims. A cable exit trough is
described in the ‘854 patent as providing a cable exit pathway from the
lateral trough section. Col. 1, ll. 49-50. As stated in the “Summary of the
Invention” of the ‘854 patent”
The exit trough portion includes a convexly curved bottom
trough surface, and two convexly curved upstanding sides on
opposite sides of the bottom trough surface. The exit trough
defines a cable pathway leading upwardly and away from the
lateral trough section.
Col. 1, ll. 55-60.
Based on this written description of the ‘854 patent, we interpret the
claimed cable exit trough to comprise a trough section, i.e., the curved
bottom surface, that serves as the exit pathway along which the cables
traverse. The trough section depicted in ADC’s figures, when mounted in
the lateral trough section, is enclosed on four sides and could not provide a
pathway for the cable. Accordingly, as argued by ADC, Long does not
describe a cable exit pathway as that term would be properly interpreted in
view of the ‘854 patent.
REHEARING DENIED

Appeal 2012-003435
Reexamination Control 95/000,411
Patent 6,597,854 B2

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FOR PATENT OWNER:

MERCHANT & GOULD, P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903

FOR THIRD-PARTY REQUESTER:

DYKEMA GOSSETT PLLC
10 S. WACKER DR., STE. 2300
CHICAGO, IL 60606