Ex Parte 6884942 et al

Board of Patent Appeals and Interferences

Feb 26, 2009

90007588 (B.P.A.I. Feb. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PANDUIT CORP.1
____________________

Appeal 2009-1086
Reexamination Control 90/007,588
Patent US 6,884,942 B22
Technology Center 3900
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Decided:3 February 26, 2009
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Before WILLIAM F. PATE, III, KEVIN F. TURNER and DANIEL S.
SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Panduit Corp. is the real party in interest (App. Br. 2).
2 Issued April 26, 2005 to McGrath et al.
3 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. §§ 134(b) and 306 (2002)
from a Final Rejection of claims 1-15. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306 (2002).
The Appellant claims a cable managing device configured for
mounting in a network rack to route cables. The cable managing device
includes an opening which allows cables to be routed between the front and
rear cable routing sections.
Independent claim 6 reads as follows (App. Br. Appx. 16; emphasis
added):
6. A cable manager mountable to a network rack
having mounting legs, comprising:
a central section having a longitudinal width sized
to fit between the mounting legs of the network rack, a
predetermined height, a front side, a rear side, and rack
mounting holes provided on opposite longitudinal ends of
the central section;
a front cable routing section extending from the
front side of the central section, the front cable routing
section including a first plurality of spaced fingers
extending transversely from the front side of the central
section; and
a rear cable routing section extending from the rear
side of the central section, the rear cable routing section
including a second plurality of spaced fingers extending
transversely from the rear side of the central section,
wherein the central section includes at least one
passthrough opening that provides access between the
front cable routing section and the rear cable routing
section.

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Independent claim 1, which is the only other independent claim on
appeal, recites a similar cable manager with a passthrough opening as well
as a hinged cover, but does not require a rear cable routing section. The
prior art relied upon by the Examiner in rejecting the claims is:
1. Panduit Communication Products Catalog, pages D33-D36,
1998 (Tabs 6-7) (hereinafter "Panduit Products Catalog").
2. Panduit Product Bulletin: Pan-Net Cable Management Systems
Hinged Covers, Sept. 1999 (Tab 3) (hereinafter "Pan-Net").
3. Panduit Cable Management Hinged Cover Installation
Instructions, 1999 (Tab 4).

The Examiner rejected claims 6-8 under 35 U.S.C. § 103(a) as
unpatentable over pages D35 and D33 of the Panduit Products Catalog.
The Examiner also rejected claims 1-5 and 7-15 under 35 U.S.C.
§ 103(a) as unpatentable over pages D35 and D33 of the Panduit Products
Catalog in further view of Pan-Net.
The Appellant relies on Declaration of Michael McGrath filed on
November 15, 2007 in support of patentability of the claimed invention.
We AFFIRM the Examiner’s rejections.

ISSUE
The issue in the present appeal is whether the Appellant has shown
that the Examiner erred in concluding that provision of a passthrough
opening in a horizontal cable manager is obvious in view of the prior art.

FINDINGS OF FACT
The Appellant does not contest the Examiner’s findings of fact
relative to the “Horizontal Cable Management System” and the “Vertical
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Cable Management System” shown and described in the Panduit Products
Catalog (pgs. D35 and D33, respectively) (Final Office Action 3-5; Ans. 4-
6). The Examiner found that the “Horizontal Cable Management System”
(D35) describes all of the recited limitations of independent claim 6 except
for the limitation “wherein the central section includes at least one
passthrough opening that provides access between the front cable routing
section and the rear cable routing section” (Final Office Action 3-5; Ans. 4-
6). The Examiner found that the “Vertical Cable Management System”
(D33) describes a vertically configured cable management system having
“cable pass through holes” (i.e., passthrough openings) (Final Office Action
5; Ans. 6). We adopt these uncontested facts relied upon by the Examiner as
findings of the Board in the present appeal.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S.Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966).
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In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and stated that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 127 S.Ct. at 1739. The Court also explained that
“if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id. at 1740.
In Graham, the Supreme Court stated that “secondary considerations
as commercial success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding the origin of
the subject matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy.” Graham, 383 U.S. at
17-18. When evidence of nonobviousness based on secondary
considerations is presented, any initial obviousness determination in view of
the entire record is reconsidered anew. See In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976); In re Eli Lilly & Co., 90 F.2d 943, 945 (Fed. Cir. 1990).
The scope of the “objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.” In re Tiffin, 448 F.2d 791, 792 (CCPA 1971).

ANALYSIS
Initially, we note that the Appellant argues the patentability of all of
the claims 1-15 together (App. Br. 10-13). Hence, we select independent
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claim 6 for determining the present appeal, claims 1-5 and 7-15 standing or
falling with independent claim 6. See In re Nielson, 816 F.2d 1567, 1572
(Fed. Cir. 1987).
The Examiner establishes a prima facie case of obviousness stating
that independent claim 6 merely improves the “Horizontal Cable
Management System” known in the art by providing passthrough holes
which are also known in the art of cable management systems as evidenced
by the “Vertical Cable Management System” (Ans. 7 and 8). The Examiner
states that it would have been obvious to one of ordinary skilled in the art to
apply the known improvement technique of providing passthrough holes to
improve the Horizontal Cable Management System by providing
passthrough holes as claimed (Ans. 6 and 7). See KSR, 127 S.Ct. at 1740.
The Appellant initially argues that “the horizontal cable manager
depicted on page D35 does neither show nor suggest a passthrough
opening,” and “neither shows nor suggests a hinged cover” (App. Br. 11).
However, this argument is not persuasive because non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. In re Merck, 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA
1981). As discussed supra, the Examiner relies on pages D33-D36 of the
Panduit Products Catalog, and specifically cites pages D35 and D33 thereof,
in making the obviousness rejection, not merely on page D35.
The Appellant also contends that the invention is “not obvious over
the prior art for the following reasons - all of which are secondary
considerations: (1) the application of the passthrough holes would not have
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been predictable; (2) there was a long-felt need in the industry; and (3) there
was no reasonable expectation of success in making the combination, i.e. in
applying passthrough openings and hinged covers to horizontal cable
managers” (App. Br. 11 and 12). In support, the Appellant relies on the
Declaration of Michael J. McGrath (hereinafter “Declaration”), a named
inventor of the ‘942 patent, the contents of the Declaration being repeated in
the Appeal Brief (App. Br. 11 to 13).
We preliminarily note that predictability and reasonable expectation
of success are requirements for establishing a prima facie case of
obviousness, and are not “secondary considerations,” per se. Hence, we
view the arguments and evidence set forth by the Appellant and the
declarant as contesting the Examiner’s prima facie case of obviousness, as
well as contending non-obviousness based on secondary considerations.
Moreover, in view of the Appellant’s alleged evidence of nonobviousness
based on secondary considerations, we reconsider the Examiner’s
obviousness determination in view of the entire record anew. In re Rinehart,
531 F.2d at 1052; In re Eli Lilly & Co., 90 F.2d at 945.
Based on our review, the record fails to show that the Examiner erred
in rejecting claims 1-15. Firstly, while we credit declarant Mr. Michael J.
McGrath as an expert and skilled in the relevant field of cable management
systems, the focus of declarative evidence should be on the knowledge and
skill of one of ordinary skill in the art at the time of patent filing in order for
such evidence to be given substantial weight. Instead, the Declaration is
directed to the personal knowledge or opinion of Mr. McGrath (Decl. ¶¶ 5, 8
and 10).
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Secondly, the evidence and arguments proffered in the Declaration of
Mr. McGrath and repeated in the Appeal Brief are deficient for the reasons
discussed in detail infra.

Predictability
The Declarant contends that at the time of the invention, vertical cable
managers were used to route cable from one section of the rack to another,
and horizontal cable managers were only used to route cable between
adjacent racks in a limited capacity (Decl. ¶¶ 5 and 6; App. Br. 12). Thus,
the Declarant contends that it was not predictable to use a horizontal cable
manager to route cable from front to back, or top to bottom, of the same
network rack because “such a configuration would not have been optimal or
ideal due to the size of the equipment and the logistics associated with
routing cable” (Decl. ¶¶ 5 and 6; App. Br. 12).
The basis of the alleged unpredictability is unclear. To the extent that
the Declarant is trying to establish lack of reason to provide such
passthrough holes in horizontal cable managers, we find persuasive, the
Examiner’s statement that vertical and horizontal cable managers are
“similar and do substantially the same thing (holding and routing cables),
just in different (vertical vs. horizontal) orientations; both systems have front
and rear ducts, therefore both systems would have a similar reason to have
passthrough holes (i.e. so that cables may be accessed/routed between the
front and back ducts)” (Ans. 7) which undermines the conclusory declarative
statements. Moreover, while not specifically relied upon by the Examiner in
the rejection, we note that the “Open-Access Cable Management
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Components” of the Panduit Products Catalog (page D36) in the record
shows a horizontal cable management system having passthrough openings
which also weighs against any assertion that there is no reason to provide
such passthrough openings in horizontal cable management systems.
To the extent that the Appellant is seeking to show unexpected results,
we find the proffered evidence to be inadequate. The Examiner is correct in
stating that “[t]he result of the combination is predictable if one skilled in the
art would have seen how to combine the devices and how the combined
devices would operate” (Ans. 15). The provision of passthrough openings in
a horizontal cable manager merely provides the predictable and expected
result of being able to route wires from one side of the cable manager to the
other via the passthrough openings.
Therefore, the Appellant has not shown that the rejected claims are
“unpredictable” and that the Examiner failed to establish a prima facie case
of obviousness.

Long-felt Need
The Declarant states that because of the disadvantages of products in
the industry at the time of invention, there was a long-felt need for the
claimed invention (Decl. ¶ 8; App. Br. 12). In this regard, the Declarant
states that the claimed invention allows cables to be routed to different
sections on the same network rack without using vertical cable managers or
disassembling network rack system as required at the time of the invention
(Decl. ¶ 8; App. Br. 12). The Declarant further states that the claimed
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feature has contributed to product sales so that the Appellant has the largest
share of horizontal cable managers in the industry (Decl. ¶ 8; App. Br. 12).
However, as noted by the Examiner (Ans. 17), establishing long-felt
need requires objective evidence showing existence of a persistent problem
recognized by those of ordinary skill in the art for which a solution was not
known, and evidence that others have failed to provide such a solution. See
In re Gershon, 372 F.2d 535, 539 (CCPA 1967); In re Piasecki, 745 F.2d
1468, 1475 (Fed. Cir. 1984). In the present appeal, we do not find
persuasive evidence that supports findings of long-felt need and/or failures
of others. Mere assertion of long-felt need is not objective evidence.
With respect to alleged commercial success, we find the evidence to
be entirely lacking because no information regarding actual sales, relevant
market share, sales growth, or a nexus between sales and the merits of the
claimed invention is provided. If commercial success is relied upon, the
Appellant must offer proof of commercial success in the relevant market,
and “that the sales were a direct result of the unique characteristics of the
claimed invention-as opposed to other economic and commercial factors
unrelated to the quality of the patented subject matter.” In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996); Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144,
1150-51 (Fed. Cir. 1983) (“There was no evidence of market share, of
growth in market share, of replacing earlier units sold by others or of dollar
amounts, and no evidence of a nexus between sales and the merits of the
invention). “Under such circumstances, consideration of the totality of the
evidence, including that relating to commercial success, does not require a
holding that the invention would have been nonobvious at the time it was
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made to one skilled in the art.” Kansas Jack, Inc. v. Kuhn, 719 F.2d at 1150-
51.
Therefore, we find the proffered evidence of secondary considerations
and arguments related thereto, insufficient to show long-felt need and that
the rejected claims are unobviousness.

Expectation of Success
The Declarant states that there was no reasonable expectation of
success because no other competitor “succeeded in producing the
combination of a horizontal cable manager with passthrough openings and a
hinged cover” and that “[i]f the claimed invention was obvious or if there
had been an expectation of success, one or more of the other competitors
should have introduced the design” (Decl. ¶ 10; App. Br. 13).
The basis for this declarative statement is unclear because the fact that
the inventor is first to develop and market a particular product does not
establish that there was no expectation of success to one of ordinary skill in
the art. Reasonable expectation of success is required to establish a prima
facie case of obviousness, and we must determine whether there would have
been a reasonable expectation of success in combining the prior art to
achieve the claimed invention. See Brown & Williamson Tobacco Corp. v.
Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000); In re O’Farrell,
853 F.3d 894 (Fed. Cir. 1988). However, all that the Declaration in the
record establishes is that the Appellant was the first to market a horizontal
cable manager with passthrough openings.
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No evidence is proffered in the Declaration to support the contention
that it is not reasonable to expect that a passthrough opening would allow for
cables to be routed between the front and rear sections of the horizontal
cable manager. In this regard, we fail to see how one of ordinary skill in the
art would not expect the provision of passthrough openings in a horizontal
cable manager to function as intended, i.e., to allow routing of wires from
one side of the cable manager to the other via the passthrough openings.
Therefore, the Appellant has failed to show that the there was “no reasonable
expectation of success” and that the Examiner failed to establish a prima
facie case of obviousness.

Having considered the Examiner’s obviousness rejection in view of
the arguments and evidence against the Examiner’s prima facie case, as well
as the evidence of secondary considerations present in the record, we find
that the Appellant has not shown that the Examiner erred in rejecting claims
1-15 as unpatentable.

CONCLUSIONS
1. The Appellant has not shown that the Examiner erred in
rejecting claims 6-8 as unpatentable over the Panduit Products Catalog.
2. The Appellant has not shown that the Examiner erred in
rejecting claims 1-5 and 7-15 as unpatentable over the Panduit Products
Catalog and Pan-Net.
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ORDER
The Examiner’s rejections of claims 1-15 are 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

ack

cc:

PANDUIT CORP.
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