Ex Parte 6925242 et al

Patent Trial and Appeal Board

Feb 27, 2013

95000415 (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.
95/000,415 11/06/2008 6925242 065484-0015 7623
23552 7590 02/27/2013
MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

PANDUIT CORPORATION
Requester and Cross-Appellant

v.

Patent of ADC TELECOMMUNICATIONS
Patent Owner and Respondent
____________

Appeal 2012-003436
Reexamination Control 95/000,415
Patent 6,925,242 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
C.F.R. §41.77(d). Decision 2 is subsequent to and incorporates a Decision dated
June 22, 2011 (“Decision 1”) in which a new ground of rejection was entered
under 37 C.F.R. §41.77(b). In response to the new ground of rejection, Patent
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Patent 6,925,242 B2

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Owner reopened prosecution, amended claims, and added new claims. Third Party
Requester proposed new rejections which the Examiner did not adopt. In Decision
2, we affirmed the Examiner‟s determination under 37 C.F.R. §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.
In accordance with 37 C.F.R. §41.79, Panduit requests rehearing and
identifies the following points that they believe to be an error or misapprehended in
Decision 2.
CLAIMS (emphasis added)
13. A cable exit trough system comprising:
a cable exit trough and a lateral trough having a lateral trough section, the
lateral trough section having a base and an upstanding side, the cable exit trough
mountable to a lateral trough section, the lateral trough and lateral trough section
being horizontal to the ground to define a horizontal cable pathway for routing
cables horizontally to the ground, wherein the lateral trough has an upstanding side
that includes the upstanding side of the lateral trough section, wherein the
upstanding side of the lateral trough has a substantially uniform cross section
between a first end and a second end of the lateral trough; the cable exit trough
comprising:
a mounting structure configured to releasably mount the cable exit trough to
the lateral trough section;
a first inner portion positioned inside the lateral trough when the cable exit
trough is mounted to the lateral trough section;
a second outer portion positioned outside of the lateral trough when the
cable exit trough is mounted to the lateral trough section;
a cable trough portion defining a cable exit pathway that extends between
the first inner portion and the second outer portion, the cable trough portion
including a curved bottom surface constructed to maintain a minimum cable bend
radius, the bottom surface including a curved portion that leads upwardly and away
from the lateral trough section after extending over an upstanding side of the lateral
trough section;
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wherein a cable passes over a top edge of the lateral trough section when
routed in the cable exit pathway of the cable trough portion; and
wherein the cable exit trough further includes an upper surface, wherein
the upper surface curves upward relative to the base of the lateral trough section
and defines a top boundary of at least a portion of a cable path.

26. A method of routing a cable in a cable routing system, the method comprising
the steps of:
providing a lateral trough section and a cable exit trough mountable to the
lateral trough section, the lateral trough section being horizontal to the ground to
define a cable pathway so that cables routed through the lateral trough section also
run horizontal to the ground along the cable pathway, the lateral trough section
having an upstanding side of substantially uniform height between a first end and a
second end of the lateral trough section, wherein the distance
between the first and second ends of the lateral trough section is longer than the
longest dimension of the cable exit trough in a direction horizontal to the ground
along the cable pathway when mounted to the lateral trough section, the cable exit
trough having an upper portion and a lower portion;
releasably mounting the lower portion of the cable exit trough adjacent
to a top edge of the upstanding side of the lateral trough section, without
cutting the top edge or the upstanding side of the lateral trough section; and
routing a cable from the lateral trough section over the top edge of the lateral
trough section and into a cable exit pathway defined by the upper portion of the
cable exit trough: and
wherein the upper portion that defines the cable exit pathway includes a
curved bottom surface that, while maintaining a minimum bend radius, transitions
to substantially vertical to guide cables exiting the lateral trough section to a
substantially vertical orientation relative to the ground.

● The Board misconstrued the term “cable exit trough” (Req. Reh‟g 4).
Panduit proposed, but the Examiner did not adopt, a rejection of claims 26-
28, 31, 32, and 35 under 35 U.S.C. §102(b) as anticipated by Zetena.
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Independent claim 26 requires “a cable exit trough mountable to the lateral
trough section.” We found that Zetena did not describe a cable exit trough and
therefore the Examiner properly did not adopt the rejection. (Decision 2, p. 7.)
Panduit contends that the slot depicted in Figures 7 and 8 of Zetena serves as
a cable exit trough. Figures 7 and 8 are reproduced below (arrowhead does not
appear in original figure):

Figure 7 of Zetena shows a perspective view of strain reliever 54 to hold
fiber optic cables; 56 is the cable holder with slots 57. Figure 8 shows an exploded
view of the strain reliever 54 in use. Figure 8 shows strain reliever 54 mounted to
a channel member 5.
It was stated in Decision 2:
Cable holder 56 comprises a "slot" 57, not a "trough." A trough has a
more substantial length than the slot 57 depicted by Zetena. Because
Zetena does not describe a cable exit trough, the Examiner properly
did not adopt the anticipation rejection by Zetena.
(Decision 2, p. 8.)
Panduit contends:
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. . . substantial length is not required by the broadest reasonable
interpretation of "trough" in view of the specification of the '242
Patent. Broadly construed in view of the specification, "trough"
means nothing more than a structure that holds and routes cables.
The structure of the disclosed exit trough 100 in the '242 Patent does
not remotely resemble anything that is more commonly termed a
"trough." Further, the exit trough 100 shown in the '242 Patent has a
greater width than length. Thus, the Board has impermissibly read a
substantial length requirement into the definition that is not expressly
required by the specification of the '242 Patent.
(Req. Reh‟g 4.) (emphasis added)
We do not agree that the term “trough” means “nothing more than a
structure that holds and routes cables.” Id. “Trough” has a specific meaning with
a defined structure which we described in the original Decision 1 as follows:
“Consistent with the definition in a general purpose dictionary, we interpret „. . .
trough section‟ to mean a „long, narrow, open receptacle,‟ gutter, or channel
[footnote omitted] . . ..” Decision 1, p. 9. The cable exit trough 100 shown in
Figure 1 of the „242 patent fits this definition because it is long and narrow, which
we characterized in Decision 2 as having “substantial length.” Figure 1 of the „242
patent, contrary to Panduit‟s contention, is clearly a trough as that term would be
understood by one of ordinary skill in the art. Trough 100 is reproduced below and
speaks for itself:
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Figure 1 shows cable trough 100 mounted on the lateral trough. The trough
100 is more than just a “slot” cut into a strain reliever as described in Zetena.
For the foregoing reasons, we decline to modify our Decision 2 based on an
improper interpretation of “trough.”

● The Board Misapprehended the Structure of the Curved Bottom Surface of
Zetena’s Strain Reliever (Req. Reh‟g 4).
Claim 26 includes a cable exit trough with an “upper portion” and “lower
portion.” Claim 26 recites the following:
the upper portion that defines the cable exit pathway includes a curved
bottom surface that, while maintaining a minimum bend radius,
transitions to substantially vertical to guide cables exiting the lateral
trough section to a substantially vertical orientation relative to the
ground.
In Decision 2, we found Zetena deficient because Zetena didn‟t describe
“the claimed method of routing a cable in a cable routing system because Zetena
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does not describe a cable exit trough with an upper portion that has a curved
bottom surface.” (Decision 2, p. 11.) We found that the curved bottom surface
146 of Zetena is not an “upper portion” as recited in the claim because not all of
the bottom surface is higher than the “lower of portion” of the strain reliever
described by Zetena.
Figure 8 as annotated by Panduit is reproduced below:

Figure 8 shows strain reliever 54 mounted to channel member 5. The curved
surface pointed at by the arrowhead (labeled “Substantially Vertical”) is the
claimed “upper surface.” Claim 26 recites “releasably mounting the lower portion
of the cable exit trough adjacent to a top edge of the upstanding side of the lateral
trough section.” We found that lip 55 of strain reliever 54 meets the claimed
requirement of a cable exit trough‟s “lower portion.” When the strain reliever 54 is
mounted to the channel member 5 top edge through lower portion 55, the lip 55 on
the strain reliever 54 is shown as being higher than a portion of curved bottom
surface and thus the curved bottom surface cannot reasonably be characterized as
an upper portion because a part of it is not higher than the lower portion (lip 55) of
the strain reliever. (See Decision 2, p. 10-11.)
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Panduit contends that “least the portion of the curved bottom surface of the
strain reliever 54 in Zetena that becomes „substantially vertical‟ is entirely above
the lip 55.” (Req. Reh‟g 5.) However, we have interpreted the claim to require
that the entire bottom surface must be included in the cable exit pathway‟s upper
surface. Panduit‟s own figure shows a portion of the bottom surface is lower than
lip 55 of the lower surface.
Panduit argues:
Furthermore, to the extent any of the curved portion is below the
boundary, at least the portion of the curved bottom surface of the
strain reliever 54 in Zetena that becomes "substantially vertical" is
entirely above the lip 55.
(Req. Reh‟g 5.) However, the claim as we have interpreted it requires the upper
portion and bottom surface within it to above the lower portion, not just the portion
of the bottom curves surface which is “substantially vertical.” Thus, we do not
find Panduit‟s argument persuasive.

● The Board Erred in Affirming the Examiner's Refusal to Adopt Panduit's
Proposed Rejection of Claims 13-16, 18, 33, and 34 Under 35 U.S.C. §103(a)
over Zetena in view of Long and Scheuermann (Req. Reh‟g 6)
Claim 13 is drawn to a cable exit trough system comprising a cable exit
trough and a lateral trough section. The cable exit trough is recited to have the
following features:
[1] “a first inner portion positioned inside the lateral trough when the cable
exit trough is mounted to the lateral trough section”;
[2] “a second outer portion positioned outside of the lateral trough when the
cable exit trough is mounted to the lateral trough section”;
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[3] “a cable trough portion defining a cable exit pathway that extends
between the first inner portion and the second outer portion, the cable trough
portion including a curved bottom surface constructed to maintain a minimum
cable bend radius, the bottom surface including a curved portion that leads
upwardly and away from the lateral trough section after extending over an
upstanding side of the lateral trough section”; and
[4] “wherein the cable exit trough further includes an upper surface, wherein
the upper surface curves upward relative to the base of the lateral trough section
and defines a top boundary of at least a portion of a cable path.”
Panduit proposed that limitations [1] and [4], the first inner portion
positioned inside the lateral trough and the upper surface that defines a top
boundary of at least a portion of a cable path, respectively, are the same structural
element. We stated the issue as follows:
The issue is whether claim 13 is reasonably interpreted to encompass
a cable exit trough in which limitations [1] and [4] are represented by
the same structural element. We answer this question in the negative.
Claim 13, when referring to the upper surface [4], expressly recites
that the "the cable exit trough further includes an upper surface,
wherein the upper surface curves upward relative to the base of the
lateral trough section and defines a top boundary of at least a portion
of a cable path." (Emphasis added.) The phrase "further includes"
unambiguously indicates that the "upper surface" is an additional
feature to those already recited in the claim, particularly the first inner
portion [1].
(Decision 2, p. 15.)
Panduit contends that we erred because, based on claims 14 and 15, and the
„242 patent Specification, it would be reasonable to construe the “first inner
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portion” and “upper surface” of claim 13 as the same surface. We address this
argument below.
Claims 14 and 15 recite that the first inner portion “defines” lead-in
pathways. The “first inner portion” is thus reasonably construed to encompass a
“lead-in pathway” as in claim 14 and “first and second lead-in pathways” as in
claim 15. The „242 patent discloses: “First lead-in 124 includes an upper surface
portion 126 having an upwardly curved shape . . . Second lead-in 134 includes a
similarly configured upwardly curved surface 136 . . .” („242 patent, col. 3, lines
36-43.) Based on the disclosure that the lead-in pathway includes an upper
surface, and that the inner portion “defines” the lead-in pathways, Panduit argued
“it is entirely reasonable to construe the claimed „first inner portion‟ and „upper
surface‟ as being the same surface.” (Req. Reh‟g 6.)
We do not agree that this construction is reasonable for the reasons already
stated in Decision 2, p. 15. We have these additional comments based on Panduit‟s
argument.
Cable trough 100 disclosed in the „242 patent Specification includes a
bracket portion 102 that comprises an outer projecting member 104, an inner
projecting member 106, and a connecting member 108 that connects 104 and 106.
These correspond to [1], [2], and [3], respectively, of claim 13. Figure 1,
reproduced above, shows lead-in pathway 124 that includes an inner portion 106
and upper surface 126. The inner portion is therefore illustrated in this
embodiment as having two parts: 1) a projecting member 106 and 2) an upper
surface 126. The claimed an “inner portion” thus could be directed to the inner
projecting member alone, or, to both the inner projecting member and the “upper
surface” 126. Claim 13 does not exclude the “upper surface” from being part of
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the “first inner portion.” The recitation of the lead-in pathways as being part of the
inner portion therefore does not result in the interpretation of the inner portion and
upper surface as being the same surfaces, which is an unreasonable. The recitation
of that the cable exit trough “further includes” an upper surface militates against
this interpretation.

● Long (Req. Reh‟g 1 & 7)
In Decision 1, we found that the preponderance of the evidence did not
support Panduit‟s contention that Long is anticipatory to the claims. Despite this
decision, Panduit tried to put Long before the Examiner again in their Comments
on the Patent Owner‟s Response after Board decision (September 22, 2011).
(Comments, p. 12.) In Decision 2, we did not consider the Long rejection again,
because we already had made a determination on it in Decision 1. Panduit
contends that this was an error. (Req. Reh‟g. 7.) We do not agree. 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.” (Id.) Long describes only one guiding
device and depicts it in Figure 2 as follows:
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The guiding device 3 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 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. 23.) We
found that Long‟s guide means as shown in Figures A-D in Panduit‟s Appeal Brief
did not meet the claimed requirement of a cable exit trough. We explained this in
Decision 1 at pages 37-38 (emphasis added):
. . . Long does not describe a cable exit trough. As discussed above in
the Claim Interpretation section, a trough is a long, narrow open
receptacle. Long's guide means 5 (FF20 & FF21) - the structure that
corresponds to the cable exit trough of the claims - is a "funnel shaped
part," which would be understood to be an enclosed tube or shaft.
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There is no evidence in the record that Long's guide means is 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. 24;
Fig. B). As an open receptacle is required by all the claims in the
rejection, and such a structure is not described in Long . . .
Thus, Panduit‟s drawings are merely speculative. There is insufficient
evidence that such drawings depict a structure necessarily described by Long.
Panduit contends our interpretation of “trough” is not proper, and provided
an alternative definition that defines a “cable trough” as an “enclosed channel,
usually beneath a floor, that provides a path for cables.” (Requester‟s Comments
on Patent Owner‟s Response, p. 12-13.) This argument is not persuasive.
Panduit‟s definition would exclude the cable trough 100 shown in Figure 1 which
is open on the top and not enclosed on four sides. It is rare to interpret a claim
term to exclude preferred embodiments. Accent Packaging, Inc. v. Leggett &
Platt, Inc., _F. 3d_, 2013 WL 407363 (Fed. Cir. 2013).
Moreover, Panduit has not introduced evidence that a cable trough would be
reasonably interpreted to include both enclosed and unclosed structures.
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. 18.
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, 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 admissions. (Req. Reh‟g 1-2.) We do not agree
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that ADC has admitted this structure is prior art. Rather, ADC indicated it was
consistent with Long. (ADC Respondent Br. 18: 1-5.) 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 „242
patent as providing a cable exit pathway from the lateral trough section. Col. 1, ll.
54-56. As stated in the “Summary of the Invention” of the „242 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. 61-66.
Based on this written description of the „242 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 „242 patent.

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SUMMARY
We have considered Panduit‟s arguments, but decline to modify Decision 2.

REHEARING DENIED

PATENT OWNER:
MERCHANT & GOULD PC
P.O. Box 2903
Minneapolis, MN 55402-0903

THIRD PARTY REQUESTER:

OLIFF & BERRIDGE, PLC
P.O. Box 320850
Alexandria, VA 22320