Ex Parte 6925242 et al

Board of Patent Appeals and Interferences

Jun 21, 2011

95000415 (B.P.A.I. Jun. 21, 2011)

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 06/22/2011
MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/22/2011 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 2011-003297
Reexamination Control 95/000,415
Patent 6,925,242 B2
Technology Center 3900
____________

Before RICHARD E. SCHAFER, ROMULO H. DELMENDO, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on an appeal and cross-appeal by the Patent Owner
and a Third-Party Requester, respectively, in an inter partes reexamination
of U.S. Patent No. 6,925,242. The Board’s jurisdiction for this appeal is
under 35 U.S.C. §§ 6(b), 134, and 315. We affirm-in-part, reverse-in-part,
and enter new grounds of rejection under 37 C.F.R. § 41.77.

STATEMENT OF THE CASE
The patent in dispute in this appeal is U.S. Patent No. 6,925,242 B2
(hereinafter, “the ‘242 patent”), which issued August 2, 2005. The Patent
Owner is ADC Telecommunications, Inc. (“ADC”) (ADC Appeal Brief 2
(March 24, 2010) (“ADC App. Br.”).
A request for inter partes reexamination of the ‘242 patent was filed
on November 6, 2008, by a Third-Party Requester under 35 U.S.C. §§ 311-
318 and 37 C.F.R. §§ 1.902-1.997 (Request for Inter Partes Reexamination
Transmittal Form). The Third-Party Requester is Panduit Corporation
(“Panduit”) (Third-Party Requester’s Notice of Cross-Appeal, January 20,
2010). An oral hearing was held on March 9, 2011 with arguments
presented by ADC and Panduit. A transcript of the hearing was entered into
the record on June 7, 2011.
According to ADC, there are three additional related patents (US
6,597,854, 6,868,220, and 7,167,625) also currently involved in inter partes
reexamination proceedings (ADC App. Br. 3). These proceedings are Nos.
95/000,411, 95/000,412, and 95/000,413, respectively. A fourth patent, US
6,192,181, is under ex parte reexamination (id.). There is also pending
district court litigation involving these patents (id.).
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The ‘242 patent states that with the accelerating use of optical fibers
for signal transmission, optical fiber management requires increasing
attention (col. 1, ll. 21-25). The patent explains that an important aspect of
routing systems is to protect optical fibers from damage, and states that “it is
recognized that the fibers should not be bent beyond a minimum radius of
curvature.” (Col. 1, ll. 43-45.) The claims of the ‘242 patent are directed to
a cable exit trough, and a method of routing optical cables involving the use
of the cable exit trough, which are used to manage and route optical fiber
cables.
Claims 1-25 are pending. Claims 1-18 were part of the original
patent. Claims 19-25 were added during the inter partes reexamination
proceeding.
ADC appeals the following rejections maintained by the Examiner in
the Right of Appeal Notice (December 14, 2009) (“RAN”):
1. Claims 6, 7, 9-14, 16, and 18 under 35 U.S.C. § 102(b) as
anticipated by Staber1 (RAN 4);
2. Claims 8, 15, 17, 20, 21, and 24 under 35 U.S.C. § 103(a) as
obvious in view of Staber and Scheuermann2 (RAN 5-6); and
3. Claims 19-25 under 35 U.S.C. § 112, second paragraph, as
indefinite (RAN 6-7).
Panduit cross-appeals the Examiner’s decision not to adopt the
following rejections (“non-adopted rejections”):

1 U.S. Patent No. 5,399,814 issued Mar. 21, 1995.
2 DE 37 42 448 A1 issued June, 29, 1989.
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4. Claims 1, 3, 4, and 6-18 under 35 U.S.C. § 102(e) as anticipated by
Meyerhoefer3 (RAN 2; Panduit’s Appeal Brief 8 (June 7, 2010) (“Panduit’s
App. Br.”);
5. Claims 6-8, 11-16, and 18 under 35 U.S.C. § 102(e) as anticipated
by Long4 (RAN 2; Panduit’s App. Br. 8);
6. Claims 6-18 under 35 U.S.C. § 102(b) as anticipated by
Scheuermann (RAN 3; Panduit’s App. Br. 8);
7. Claims 1 and 3-5 under 35 U.S.C. § 103(a) as obvious in view of
Staber and Long (id.); and
8. Claim 5 under 35 U.S.C. § 103(a) as obvious in view of
Meyerhoefer and Staber (id.).
Claims 1, 6, and 13, reproduced below, are representative of the
appealed claims. The underlining indicates amendments made to the claims
during the inter partes reexamination proceeding.
1. A cable exit trough mountable to a lateral trough section,
the lateral trough section including an upstanding side
terminating in a top edge, the cable exit trough comprising:
a U-shaped bracket portion sized to engage a portion of
the upstanding side of the lateral trough section adjacent to the
top edge of the lateral trough section, the bracket portion
including an outer projecting member, an inner projecting
member, and a connecting member to form the U-shaped
bracket portion, the outer projecting member positionable
outside the lateral trough section, the inner projecting member
positionable inside the lateral trough section, the connecting
member positionable above the top edge of the lateral trough
section;

3 U.S. Patent No. 6,044,194 issued Mar. 28, 2000.
4 U.S. Patent No. 5,872,336 issued Feb. 16, 1999.
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first and second lead-in portions interconnected to the U-
shaped bracket portion, the first and second lead-in portions
each defining a lead-in cable pathway; and
an exit trough portion interconnected to the first and
second lead-in portions, the exit trough portion including an
exit cable pathway extending in a direction away from the
lateral trough section when the exit trough is mounted to the
lateral trough section, the exit cable pathway being at least
partially defined by a curved bottom trough surface of sufficient
curvature to maintain a minimum cable bend radius;
wherein the first and second lead-in portions extend
upwardly toward the exit trough portion when the cable exit
trough is mounted to the lateral trough section, each of the
lead-in cable pathways of the first and second lead-in portions
being in communication with the exit cable pathway of the exit
trough portion.

6. A method of routing a cable in a cable routing system,
the method comprising the steps of:
providing a cable exit trough mountable to a lateral
trough section having an upstanding side, 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.

13. A cable exit trough mountable to a lateral trough section,
the cable exit trough comprising:
a mounting structure configured to releasably mount the
cable exit trough to the lateral trough section;
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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 after extending over an upstanding side of the lateral
trough section;
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.

CLAIM INTERPRETATION
Legal Principles
For a patent under reexamination, “the PTO must give claims their
broadest reasonable construction consistent with the specification . . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.” In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
“In some cases, the ordinary meaning of claim language as understood
by a person of skill in the art may be readily apparent even to lay judges, and
claim construction in such cases involves little more than the application of
the widely accepted meaning of commonly understood words … In such
circumstances, general purpose dictionaries may be helpful.” Phillips v.
AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).
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Discussion
There are a number of claim construction issues that arose during the
inter partes reexamination proceeding. We address the key ones below:

“releasably mounting”
Claim 6 provides a method of routing a cable in a cable routing
system that comprises a step of “releasably mounting the lower portion of
the cable exit trough adjacent to a top edge of the upstanding side of the
lateral trough section.” The ‘242 patent does not define the phrase
“releasably mounting.” We therefore adopt the ordinary meaning of these
terms consistent with the ‘242 patent’s written description. Consulting a
general purpose dictionary, we define “releasably” to mean that the claimed
cable exit trough is mounted in such a way that it can be freed from the
lateral section trough to which it is attached.5 The term “mount,” we
interpret, based on the dictionary definition, to mean “to put into position for
use.”6 In light of these definitions, “releasably mounting” the exit cable to
the lateral trough would be reasonably understood to mean that the exit
trough is placed into position on the lateral trough through a structural
element which permits it to be removed after installation.
This interpretation is consistent with the ‘242 patent which describes
the cable exit trough as having a bracket 102 with projecting members 104
which are shown as fitting or sliding on to the edge of a lateral trough over

5 RANDOM HOUSE DICTIONARY 1114 (College ed. 1968).
6 RANDOM HOUSE DICTIONARY 872.
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the attachment members 34 (‘242 patent, col. 3, ll. 9-28; col. 1, ll. 56-57;
Figs. 1-3; [Finding of Fact (“FF”) 1]). The cable exit is therefore “releasably
mounted” to the lateral trough by a bracket which slides over the top edge of
the trough. The latter features are illustrated in Figure 1 of the ‘242 patent,
reproduced below:

Figure 1 above shows bracket 102 and members 104 on the cable exit
trough; attachment member 34 on the lateral trough.
The ‘242 patent also describes portions 104 as having a slot for
receiving a fastener 170, where the fastener is shown as fitting into an
attachment member 34 on the lateral trough with a nut (id.) [FF2]. Thus, the
exit trough is removed by unfastening fastener 170 and sliding the cable exit
off the lateral trough. While this embodiment is depicted in the ‘242 patent,
we do not read such fastener limitation into claim 6 because the claim
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language recites “releasably mounting,” but does not require that the trough
is attached by a fastener or otherwise secured to the trough edge.

“lateral trough section”
Claim 6 recites a step of “providing a cable exit trough mountable to a
lateral trough section having an upstanding side.” The ‘242 patent does not
define “lateral trough section.” Consistent with the definition in a general
purpose dictionary, we interpret “lateral trough section” to mean a “long,
narrow, open receptacle,” gutter, or channel7 which extends to the sides.
The claim is drawn to a trough “section,” and thus reads on a “part” of a
trough.

“without cutting”
The phrase “without cutting” is not defined in the ‘242 patent. The
‘242 patent, however, states that the “exit trough is mountable to the lateral
trough section without modification to the lateral trough section.” (‘242
patent, col. 1, ll. 66-67.) As explained above, the mounting is achieved by a
bracket 102 and projecting members 104, which are received over the lateral
top edge by simply sliding the exit trough onto the lateral trough section. In
this light, we interpret releasably mounting “without cutting” to mean that
the lateral trough is provided in a form that does not require cutting, i.e.,
making a change to it during installation, in order to attach the exit trough to
it.

7 RANDOM HOUSE DICTIONARY 757, 1409.
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1. ANTICIPATION BY STABER
Claims 6, 7, 9-14, 16, and 18 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Staber.
Principles of Law
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Thus,
once “the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
“[W]hile it is true that claims are to be interpreted in light of the
specification and with a view to ascertaining the invention, it does not follow
that limitations from the specification may be read into the claims.” Sjolund
v. Musland, 847 F.2d 1573, 1581 (Fed. Cir. 1988). “[L]imitations are not to
be read into the claims from the specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993).

Findings of Fact (“FF”)
The following facts are from the Staber patent.
FF3.
Certain equipment racks used in the telephone industry have
narrow protruding side flanges. Because these racks are used to
house telephone equipment, it is sometimes necessary to route
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cables past the exposed flanges. During installation or during
later rearrangements of equipment, communications cables can
experience sharp bends or kinks impressed against the flanges,
resulting in unwanted deterioration of the cable or even cable
failure.
(Col. 1, ll. 6-15.)
FF4. The “improved cable bridge advantageously preserves the minimum
bend radius of cable 6, maintains a low profile over flange 9” (col. 2, ll. 28-
30).
FF5. Figures 1 and 2 from Staber are reproduced below:

Figures 1 and 2 show the second and first sides of a cable bridge,
respectively.
FF6.
The cable bridge first embodiment as shown in FIG. 1 is a
frame that provides a second side 11 having a convexly curved
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external surface 12 between two outwardly extending sidewalls
13, 14. A cable to be routed over an exposed flange is seated in
the channel formed by surface 12 and sidewalls 13, 14. A
flexible tie may be inserted around slots such as 15, 16 or 21 in
order to secure the cable within the channel.
(Col. 2, ll. 4-11.)
FF7.
First side 5 of the cable bridge is displayed in FIG. 2. First side
5 contains non parallel slots 17, 18 which in the preferred
embodiment intersect each other at an angle. Slots 17, 18 allow
the cable bridge to be angled to the direction desired [and used
for either side of the equipment rack].
(Col. 2, ll. 12-16; col. 1, ll. 29-33.)
FF8. The first side 5 is described as “having first and second non-parallel
slots therein, each of said slots capable of receiving the edge of a flange”
(col. 1, ll. 22-24).
FF9. “Side holes may be used to seat a screw holding the cable bridge on an
exposed flange.” (Col. 2, ll. 16-17.)
FF10. Figure 3 is reproduced below:

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Figure 3 shows a cable bridge installed over a flange, with a cable routed
over it. The numbered elements are as follows: Cable 6, flexible tie 7,
screw 8 inserted in a hole, and flange 9 (col. 2, ll. 21-25).
FF11.
The cable bridge second embodiment is shown as installed in
FIG. 3, with screw 8 inserted in a hole in the side of the cable
bridge to secure the cable bridge to exposed flange 9. Flexible
ties 7 secure cable 6 within the channel of the cable bridge. In
this embodiment, holes rather than slots are used to secure the
ties.
(Col. 2, ll. 21-26.)
Discussion
1. “releasably mounting . . . without cutting the top edge or the
upstanding side of the lateral trough section”

ADC contends that Staber does not describe a cable bridge which is
“releasably” mounted “without cutting” as recited in claim 6 (ADC App. Br.
12). ADC contends that Staber’s cable bridge is mounted by cutting holes
into the flange, where the holes receive screws (id. at 14). ADC also argues
that the flange is vertical and “simply placing the bridge on the flange (and
doing nothing more) is not a mounting of the bridge because without the
screw gravity alone will cause” it to fall off the flange (id.).
The phrase “releasably mounting” the exit trough to the top edge of
the lateral trough section, when given its broadest reasonable interpretation
in light of the ‘242 patent’s written description, means that the exit trough
can be removed from the lateral trough, after it has been placed into position
on the lateral trough top edge. As found by the Examiner, this function is
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performed by the non-parallel slots 17 and 18 on the first side 5 of Staber,
which receive the flange edge (FF7 & FF8). This operation does not involve
cutting the top edge. The claim language also does not require the exit
trough to be secured by an attachment structure or to be held in place in such
a way that it does not fall off. ADC’s argument about needing a screw to
counteract gravity is therefore not persuasive. ADC has not provided
sufficient evidence that such a narrow interpretation of the claim is
warranted.
Staber does not require the bridge to be held in place by a screw.
While such a structural arrangement is illustrated in Figure 3 of Staber
(FF10), the patent states that “holes may be used to seat a screw holding the
cable bridge” on the flange edge (FF9; emphasis added) and characterizes
this arrangement as a second embodiment (FF11). The use of a screw is
optional. ADC’s argument to the contrary, on pages 14-15 of its Appeal
Brief, ignores the plain language of Staber, and also discounts embodiments
in which a flexible tie is used to hold the cable bridge in place (FF6). In
sum, we do not interpret the step of “releasably mounting” to be anything
more than positioning the exit trough on the lateral flange, absent any
express language in the claim that necessitates a narrower reading. As
explained above, this limitation is met by installation of Staber’s bridge on
the flange using slots 17 and 18.

2. “lateral trough section”
In addition to the cable exit trough, the claims also comprise a “lateral
trough section.” ADC contends that Staber does not describe a “lateral
trough section.” ADC contends that the flange described in Staber does not
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run horizontally, that Staber’s equipment rack is not a trough, and that the
flange is not an “upstanding side” as recited in the claims (ADC App. Br.
15-18).
The term “lateral” would not have been reasonably interpreted to be
limited to a horizontal orientation. The plain meaning of the term “lateral”
is “of or pertaining to the side,”8 a meaning that does not restrict the
direction in which the trough must run. The ‘242 patent in one instance, as
pointed out by ADC, refers to a lateral trough section in which the cable it
holds is “extending generally horizontally to the ground through [the] lateral
trough section” (‘242 patent, col. 3, l. 67 to col. 4, l. 1). However, it is
improper to read limitations from the Specification into the claims, absent
language in the claim which would require such an interpretation. Sjolund,
847 F.2d at 1581; Van Geuns, 988 F.2d 1181 at 1184. Consequently, the
orientation of Staber’s flange is not dispositive because the claimed lateral
trough reads on a trough that runs horizontally, vertically, or in other
directions.
ADC also contends that Staber does not depict a trough. Rather, ADC
argues that Figure 3 of Staber shows an empty space next to the flange 9
(ADC App. Br. 17).
“Where . . . the claimed and prior art products are identical or
substantially identical . . . , the PTO can require an applicant to prove that
the prior art products do not necessarily or inherently possess the
characteristics of his claimed product.” Best, 562 F.2d at 1255. However,
the PTO must have a “sound basis” for believing that the prior art and

8 RANDOM HOUSE DICTIONARY 757.
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claimed product are the same. Cf. Spada, 911 F.2d at 708. In this case, the
Examiner gave a sound rationale as to why Staber taught a trough:
In Fig. 3 of Staber et al., the rack or lateral trough section is
illustrated as having a generally U-shape, with the flange 9 and
a second flange (shown to the far left in Fig. 3) extending from
a bottom portion (the portion located beneath/behind the cable 6
in Fig. 3) of the rack.
(ACP 8.)
ADC contends that the “bottom portion” is actually an empty space,
but does not provide evidence or expert testimony as to why its
interpretation of Figure 3 is more reasonable than the Examiner’s.
ADC also contends that Staber’s equipment rack flange is not “an
upstanding side” and that the cable is not routed over the top edge (ADC
App. Br. 17-18) as recited in claim 6. ADC contends that “it is a
mischaracterization to describe the flange (9) as a side wall of a lateral
section trough. The flange is very short, not even taller than the thickness of
the cable (6).” (Id. at 17.)
Claim 6 recites the “upstanding side of the lateral trough section.”
The height of the upstanding side is not defined nor characterized by its
relative size to the cable thickness. Accordingly, the claimed upstanding
side is not distinguishable from the flange described and illustrated in the
Staber patent. Staber’s Figure 3 shows that cable crossing over the top of
edge of the flange 9, meeting the corresponding limitation of the claim.

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Claim 7
Claim 7 is directed to the cable routing method of claim 6, where “the
cable has a length between the lateral trough section and an exit of the cable
exit pathway, the method further including maintaining a minimum bend
radius along the length of the cable.”
ADC contends that the Staber bridge does not maintain the minimum
bend angle, but “impinges a sharp corner or edge where the cable enters and
exits the bridge.” (Id. at 19.) On page 20 of ADC’s Appeal Brief, they
provided a drawing of a cable mounted in the cable bridge which is bent at
an angle when exiting the bridge.

The figure reproduced above is said by ADC to show the cable bent at an
angle as it exits the cable bridge.
ADC’s proposed drawing is inconsistent with Staber. First, Staber
expressly discloses that the “cable bridge advantageously preserves the
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minimum bend radius of cable 6” (FF4). Second, in Figure 3 (FF10), Staber
shows a cable routed over the cable bridge to preserve the minimum bend
angle and without “imping[ing] a sharp corner or edge,” in contrast to
ADC’s drawing. Thus, Staber does not show or guide the skilled worker to
the configuration represented by ADC’s proposed drawing in which the
cable is bent around a sharp corner, but teaches away from such an
arrangement (FF4). ADC’s drawing is simply not described in Staber nor is
it one that would be necessarily arrived at upon reading the Staber patent’s
written description.

Claims 10 and 14
Claim 10 depends from claim 9, which in turn depends on claim 6.
Claim 10 further recites a flange “at least partially” defining “a lead-in
pathway in communication with the cable exit pathway” and “routing the
cable through the lead-in pathway and into the cable exit pathway.” Claim
14 has a similar limitation.
ADC defines the claimed “lead-in pathway” by pointing to separate
structures which are shown in the drawings of the ‘242 patent (ADC App.
Br. 20-21). However, structural limitations from the drawings are not read
into the claims, absent language that requires such a structure. Sjolund, 847
F.2d at 1581; Van Geuns, 988 F.2d 1181 at 1184. In this case, the claim
simply recites a “lead-in pathway,” without any specific structural features
that define it. The walls 13 and 14 of Staber’s bridge form a flange that
guide the cable on to the cable bridge surface 12 and thus constitute a “lead-
in pathway” within the scope of claim 11 (Panduit’s Respondent’s Br. 11,
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dated June 7, 2010; see reproduced and annotated figure; FF5 & FF6). The
claim does not require the “lead-in pathway” to be a separate element of the
cable exit trough.

Claim 11
Claim 11 is directed to the method of claim 6, where “the cable is
routed upwardly from the lateral trough section prior to being routed into the
cable exit pathway defined by the upper portion of the cable exit trough.”
ADC contends that Staber does not disclose this feature. ADC argues that
the cable “descends along the flange (9) but does not route upwardly to
reach the Staber cable bridge.” (ADC App. Br. 22.)
The claim recites that the cable is “routed upward from the lateral
trough prior to being routed into the cable exit pathway.” We interpret this
to mean that the cable, as it exits the lateral trough, must move upwardly
before it enters the cable exit pathway. Panduit’s annotated drawing of
Staber’s cable bridge shows the claimed limitation (Panduit Respondent’s
Br. 12):

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The reproduced figure above shows the surface of the cable bridge that leads
the cable upwardly (surface to right of flange 9) prior to being led or routed
into the cable exit pathway (surface to the left of the flange 9).
ADC contends that “only after the cable enters the bridge is the cable
routed upwardly.” (ADC App. Br. 22.) However, the claim does not require
the upward routing to occur in the lateral trough section – rather the claim
recites that the cable is “routed upwardly from the lateral trough section.”
The term “from” means the starting point,9 and thus the skilled worker
would have interpreted this to mean that the upward movement begins at the
trough, where the cable exit pathway provides the upward routing.

Claim 12
Claim 12 is drawn to a method of claim 6, “further including curving
the cable upward and in a direction transverse to the lateral trough section.”
This feature is clearly described in Staber as illustrated in the figure above
and in Figure 3 (FF10), showing the cable exit bridge extending over the
flange 9. ADC contends that the bridge does not “extend ‘transversely,’”
but “extends at an acute angle relative to the flange.” (ADC App. Br. 22).
As established by Panduit, the term “transverse” means “across,” an
orientation met by Staber’s bridge as it crosses over flange 9 (Panduit’s
Respondent’s Br. 12). ADC has not provided evidence that a narrower
meaning is justified.

9 RANDOM HOUSE DICTIONARY 531.
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Claims 13 and 18
Independent claim 13 is directed to a cable exit trough. As with claim
6, ADC argued that a lateral trough section is not described. However, for
the reasons already discussed for claim 6, we find this structure described in
Staber. Moreover, claim 13, and dependent claim 18, are directed to the
cable exit trough and do not require the presence of the lateral trough.
ADC also contends that Staber does not describe the claimed structure
of a “bottom surface including a curved portion that leads upwardly after
extending over an upstanding side of the lateral trough section.”
ADC argues:
From FIG. 3 of Staber, it is clear that the round cable in the
bridge does not lead upwardly outside the flange as required by
the claim. The cable reaches its apex directly over the flange
and then goes downward.
(ADC Rebuttal Br. 10, Oct. 25, 2010.)
In support of the rejection, Panduit produced the following annotated
drawing based on Staber’s Figure 1 (Panduit Respondent’s Br. 14, dated
June 7, 2010):

The annotated drawing, reproduced above, shows the cable bridge
mounted on a flange (“path of flange 9”) with a curved surface 12 leading
upwardly on one side of the flange (the upwardly leading area is circled)
(id.).
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ADC contends:
Requester’s drawing shows an incorrect apex that is not
centered on the flange and relies on parallax error between two
of their lines to exaggerate the size and location of a triangle-
shaped area on Staber’s bridge.
(ADC Rebuttal Br. 10, Oct. 25, 2010.)
Based on Figure 2 of Staber (FF5), the skilled worker would have
recognized that the parallel slots 17 and 18 cross at the apex of the cable
bridge. However, because the cable bridge is mounted at an angle with
respect to the flange (FF5-F8), rather than perpendicular to it, the cable
bridge surface that extends over the flange will also necessarily include both
upward and downward portions. Thus, even if Panduit’s drawing is
exaggerated, and the “path of flange 9” should be closer to the apex of the
bridge, a portion of the surface will remain that leads upwardly as required
by the claim. As the cable follows this pathway, the claimed limitation is
met.

Claim 16
Claim 16 depends on claim 13, and further recites that the second
outer portion of the cable exit trough “includes a downspout.”
ADC cites structure and description in the ‘242 patent which
characterizes a downspout as “a U-shaped configuration that forms a
pathway for routing cables vertically.” (ADC App. Br. 25.) However, the
claim does not require that a vertical direction is achieved – the only
requirement is that it be downward, an orientation met by Staber’s
downward curvature upon crossing the flange 9.

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Summary
We affirm the rejection of claims 6, 7, 9-14, 16, and 18 as anticipated
by Staber. The patentability of any grouped claim not argued separately
shall not be considered independently from the group. 37 C.F.R. §
41.37(c)(1)(vii).

2. STABER AND SCHEUERMANN
Claims 8, 15, 17, 20, 21, and 24 stand rejected under 35 U.S.C. §
103(a) as obvious in view of Staber and Scheuermann (RAN 5-6).
Claim 8 depends on claim 7, which in turn depends on independent
claim 6. Claim 8 further recites that “the cable exit pathway includes a
pathway portion extending in a direction generally perpendicular to the
lateral trough section.” The Examiner relied upon Scheuermann for
teaching the latter limitation. The Examiner concluded:
From these teachings of Scheuermann et al., it would have been
obvious to one of ordinary skill in the art at the time the
invention was made to modify Staber et al. by providing the
cable exit trough with curved sidewalls forming lead-in
portions and causing the cable to exit the cable exit trough in a
direction generally perpendicular to the lateral trough section
because this enables the cable to be guided to a position
laterally of the lateral trough section while maintaining a
minimum bend radius for the cable.
(RAN 5.)
ADC argues that the combination of cited publications do not describe
routing a cable over a top edge of a trough without cutting (ADC
Appellant’s Br. 25-27). ADC contends that Scheuermann teaches to cut
down the walls and that the cable does not extend over the top edge of the
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side walls (id.). However, ADC’s arguments are directed to Scheuermann,
despite the Examiner’s express findings that the disputed limitation was met
by Staber alone. As we have already addressed these limitations with
respect to claim 6, there is no need to discuss them further.
ADC also contends that one of ordinary skill in the art would not have
combined Staber and Scheuermann because the design and principles of
operation differ significantly. On pages 27-28 of ADC’s Appeal Brief, ADC
characterizes these differences between Staber and Scheuermann.
The issue, as recognized by Panduit, is whether the references are
analogous art to the claims.
“Two separate tests define the scope of analogous art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed, and (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004). . . . “If a reference disclosure has the same purpose
as the claimed invention, the reference relates to the same
problem, and that fact supports use of that reference in an
obviousness rejection.” [In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992).]
Innovation Toys, LLC v. MGA Entm’t, Inc., 98 USPQ2d 1013, 1018
(Fed. Cir. 2011).
It is not disputed that Staber and Scheuermann describe different
structures. However, both publications describe devices for carrying cable
and are thus from the same field of endeavor, i.e., design of cable ducts.
Like Staber (FF4), Scheuermann addresses minimizing the bend radius of
the cable. Scheuermann teaches that the “object” of its “invention is to
design a cable duct . . . such that insertion and/or removal of the optical
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cable at practically any desired location is made possible without allowing
the bending radius to be less than a certain specified minimum.”
(Scheuermann, p. 2) [FF12]. As each publication has the same objective, the
Examiner reasonably found that persons of ordinary skill in the art would
have seen the advantage of Scheuermann’s perpendicular exit on Staber’s
bridge to facilitate a change in direction of the cable. ADC did not provide
any objective evidence that the skilled worker would have been dissuaded
from using Scheuermann’s exit trough portion on Staber. To the contrary,
the evidence is that the skilled worker recognized that different structures,
such as those taught in Scheuermann and Staber, could be used to solve the
same problem. In sum, Staber and Scheuermann were properly combined by
the Examiner.
ADC also contends that modifying Staber by making its exit pathway
perpendicular to the lateral trough would “likely interfere” with using it on
the opposite wall (ADC App. Br. 28). They assert it would block other
cables not exiting out the system and cause extreme bend problems (id.). In
sum, they assert the combination would be “inoperable” (id.).
In view of the teachings of Scheuermann, the Examiner reasonably
found that such design would be advantageous in Staber’s cable bridge and
would maintain the bend angle, as taught by both publications. ADC did not
provide adequate evidence that adding a perpendicular exit to Staber would
require completely realigning the receiving slots 17 and 18, or that
modifying the slots would prevent the device from being used on either edge
of the flange. Moreover, even if ADC’s statements are correct, persons of
ordinary skill in the art would have recognized the advantage of adding a
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perpendicular exit pathway in favor of losing the ability to use of the device
on either edge of the flange. The determination that the prior art suggested
modifying Staber “need not be supported by a finding that the prior art
suggests that the combination claimed by the patent applicant is the
preferred, or most desirable, combination.” In re Fulton, 391 F.3d 1195,
1200 (Fed. Cir. 2004). A teaching that a result would be inferior or less
desirable is not a teaching away unless the use “would render the result
inoperable.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1381
(Fed. Cir. 2007).
As both Staber and Scheuermann are directed to cable ducts, with
differing structures, the evidence supports a finding that the level of skill in
the art was such that the skilled worker could routinely make the type of
modification suggested by the Examiner to produce an operable device.

Claim 15
Claim 15 depends on claim 13, and further recites that the “first inner
portion defines first and second lead-in pathways in communication with the
cable exit pathway.”
ADC makes many of the same arguments made for claim 6. These
arguments are redundant and have already been addressed and found
deficient.
As for the limitation that first and second lead-in pathways are
required by the claim, the evidence supports Panduit’s arguments that the
cable bridge of Staber could be used for two cables, with the lead-in
pathways as described above for claims 10 and 14 (Panduit Respondent’s
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Br. 11). Also, Scheuermann illustrates in its Figure 1 [FF27 reproduced
infra.], an exit trough carrying two cables and therefore teaches pathways for
first and second cables. ADC has not structurally distinguished the claimed
lead-in in pathways from the corresponding pathways described in the cited
publications.

Claim 17
Claim 17 depends on claim 13, and further recites that “the cable
trough portion includes curved sidewalls located on opposite sides of the
curved bottom surface, the curved sidewalls being constructed to maintain a
minimum cable bend radius.”
ADC contends that Staber teaches not to make curved sidewalls (ADC
App. Br. 30). To support this argument, ADC points to Staber’s disclosure
that the sidewalls are not parallel to the bottom slots 17 and 18 (id. at 31).
This argument has no merit. First, the rejection is based on Staber and
Scheuermann, not Staber alone. The reason for adding the curved side walls
was based on the Scheuermann publication (ACP 8-9). Thus, Staber’s
teaching about the relationship between “slots” and “walls” is for its straight
device, not the device arrived at by the combination of Staber and
Scheuermann. Staber’s statements about the configuration of its cable
bridge are a characterization of the existing bridge structure, and does not
disparage or teach away from other structures.

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Claims 20 and 21
As for claims 20 and 21, the arguments made by ADC appear largely
redundant to those made for claim 6 and other dependent claims with similar
limitations. Consequently, for the reasons already stated, we find the
arguments unpersuasive and lacking sufficient evidence to support them.

Summary
We affirm the rejection of claims 8, 15, 17, 20, 21, and 24 as obvious
in view of Staber and Scheuermann. The patentability of any grouped claim
not argued separately shall not be considered independently from the group.
37 C.F.R. § 41.37(c)(1)(vii).

3. 112, SECOND PARAGRAPH REJECTION
Claims 19-22 are stated by the Examiner to be indefinite because they
depend from a method claim, but fail to set forth any further method step
(RAN 6).
We reverse the rejection of claims 19-22. Each of the claims adds
further structural limitations to the devices utilized in the method claim.
The Examiner has not identified an ambiguity or indefiniteness in the claim
language that would contravene the requirements of § 112, second
paragraph, to “particularly point[ ] out and distinctly claim[ ] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2
(MPEP 8th ed. July 2010).
As no arguments were presented by ADC as to the § 112, second
paragraph rejection of claims 23-25, we summarily affirm it.
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Summary
We reverse the rejection of claims 19-22 under § 112, second
paragraph, but affirm the rejection of claims 23-25 under the same ground.

4. ANTICIPATION BY MEYERHOEFER
Panduit appeals the Examiner’s decision not to adopt the rejection of
claims 1, 3, 4, and 6-18 under 35 U.S.C. § 102(e) as anticipated by
Meyerhoefer.
Findings of Fact (“FF”)
FF13. Meyerhoefer describes a cable bend radius control device for
controlling the bend radius of fiber optic cables (col. 1, ll. 8-10; col. 2, ll. 6-
10). The device has curved surfaces “which provide smooth, continuous
surfaces for guiding, protecting and controlling the bend radius of fiber
optical cables” (col. 2, ll. 20-24).
FF14. Figure 4,10 reproduced below, shows a duct with a fiber optical cable
bend radius control device.

10 Figure 4 was described in the Meyerhoefer patent, but the figure was not
contained in the published copy of the patent accessed from
http://www.uspto.gov (accessed April 4, 2011). However, Patent
Application No. 09/261,610, upon which the patent was based, contained
Figure 4. This figure is reproduced in FF14. It was not disputed by the
parties that Figure 4 is prior art.
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Figure 4 above shows the fiber optical cable bend device 20’ in a channel
member (cut-away of trough).
FF15. Channel member 2 (the original figure was missing the “2”; the side
portion of channel member 2 is shown in Figure 4 as the portion between 16
and 6) has slots 10 in sidewall 6 and a narrow portion 16 through which a
fiber optic cable is pushed through toward the wide portion 14 of slot 10
(col. 4, ll. 42-55).
FF16. The fiber optical cable bend radius control device 20’ is a U-shaped
one-piece trumpet design, which fits into channel member 2 (col. 4, ll. 11-
12).
FF17. Device 20’ (reproduced below in Figure 6) attaches to the wide
portion 14 of slot 10 of channel member 2 (col. 4, ll. 5-10).
FF18. Figure 6 is reproduced below:

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Device 20’, reproduced above, has projections 42, 44, 46, and 48,
which cooperate to secure the device 20’ in the wide portion 14 of slot 10
(col. 4, ll. 12-16).
Discussion
Claim 1
Claim 1 is directed to a “cable exit trough mountable to a lateral
trough section.” The claim recites that “the lateral trough
section including an upstanding side terminating in a top edge” and
describes how certain portion of the exit trough are to be positioned with
respect to the lateral trough section.
When comparing claim 1 to the prior art, we treat the claim as
directed solely to the cable exit trough. The recitation in the claim about the
structure of the lateral trough section does not limit the scope of the claim
because the lateral trough is not a required claim element. The limitations in
the claim about the orientation of the cable exit trough with respect to the
lateral trough are an “intended use” of the claimed trough that state the
purpose for which the exit trough is to be used. However, absent evidence
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to the contrary, the stated purpose does not limit the scope of the claim
unless it adds a structural element to the exit trough structure. Cf. Schumer
v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002); NTP, Inc.
v. Research In Motion, Ltd., 418 F.3d 1282, 1305-06 (Fed. Cir. 2005).

Top edge
Claim 1 recites:
a U-shaped bracket portion sized to engage a portion of the
upstanding side of the lateral trough section adjacent to the top
edge of the lateral trough section.
Meyerhoefer’s fiber optic bend radius device 20’ is comparable to the
claimed cable exit trough (FF14, FF17, & FF18). ADC contends that
Meyerhoefer’s device 20’ does not meet the recited limitation because the
device is located inside the slot “well below the top edge of the side wall [of
the channel member, i.e., the section that corresponds to the claimed lateral
trough].” (ADC Respondent’s Br. 8, submitted Sept. 8, 2010).
The recited limitation is an intended use of the claimed cable exit
trough because it requires the bracket to have a size which, when used with a
lateral trough, allows it to engage the lateral trough’s side “adjacent to the
top edge.” The claim does not include a lateral trough or require the exit
trough to be mounted to one. Thus, the issue is not where Meyerhoefer s
device 20’ is mounted to a top edge, but rather whether the device 20’ has
the same structural features as recited in the claim. It is the cable exit trough
which is claimed and that is what must be described by Meyerhoefer.
Moreover, while ADC repeatedly insists that device 20’ is not
mounted to a top edge, ADC did not demonstrate with adequate evidence
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that the projections used to secure the device (FF16-18) could not be
attached to a lateral trough section top edge in the manner recited in the
claims.
ADC also contends that Meyerhoefer does not describe the claimed
“first and second lead-in portions interconnected to the U-shaped bracket
portion, the first and second lead-in portions each defining a lead-in cable
pathway.” ADC’s argument is that the pathways described in Meyerhoefer
are exiting the trough, and lead in a different direction than required by the
claim (ADC Respondent’s Br. 8-10).
We are not persuaded that Meyerhoefer does not meet the latter
limitation. The claim is directed only to the exit trough. The direction in
which the cable is lead is not an element of the claim, but satisfied only
when the exit is mounted on a lateral trough. As to the intended use, ADC
did not provide sufficient evidence that the exit trough could not be mounted
in a configuration, that when used in combination with a lateral trough,
would lead a cable in the recited direction.
ADC states that claim 1 is distinguished from Meyerhoefer because
the latter “does not disclose ‘a lateral trough section.’” (ADC Respondent’s
Br. at 10-11.) This argument had no merit because the claim, as discussed
above, is drawn to the cable exit trough and does not require a lateral trough
section. Similar arguments for claim 3 are also not supported by sufficient
evidence.
In sum, we conclude that the Examiner erred in not adopting the
rejection of claims 1 and 3 as anticipated by Meyerhoefer.

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Claim 4
Claim 4 depends on claim 1 and further recites that the exit trough has
first and second exit trough portions where the second exit trough portion
has “a downwardly curved shape defining a downspout when the exit trough
is mounted to the lateral trough section.”
ADC contends that Meyerhoefer does not describe a “downspout”
which “extends in a substantially vertical direction, ninety degrees from the
direction of a horizontally-running lateral trough.” (ADC Respondent’s Br.
11,)
As shown in Figure 6 (FF18), device 20’ has a downwardly curved
portion, as indicated at numerals 40 and 50, meeting the claimed limitation.
ADC has not provided sufficient evidence that the skilled worker would
have interpreted the claimed “downspout” to require a vertical extension.
We therefore conclude that the Examiner erred in not adopting the rejection
of claim 4 as anticipated by Meyerhoefer.

Claims 6-12
Claim 6 is a method claim. Claims 7-12 depend from claim 6. We
agree with ADC that claims 6-12 are not anticipated by Meyerhoefer. The
claim requires that the exit trough is mounted “adjacent to a top edge of the
upstanding side” and “routing a cable . . . over the top edge of the lateral
trough section.” As indicated in findings 13 through 18, the fiber optic cable
in Meyerhoefer extends over surfaces 40 and 50, which is located under the
top edge of the channel member 2 (Figure 4; FF14; the section between 6
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and 16 corresponds to the claimed lateral trough section; 16 points to the top
edge of the lateral trough).
Panduit contends that Figures 4 and 5 of Meyerhoefer show that the
top edge limitation is met. Panduit argues that an object can have more than
one top edge “and any surface or edge of the object that faces upwards can
be properly termed a ‘top edge’ of the object.” (Panduit App. Br. 13.)
Panduit’s interpretation ignores the term “top.” The claim does not
simply require an edge. The edge must be a “top edge.” The conventional
meaning of top is “the uppermost point, area, surface, or section of
anything.”11 As illustrated in Figure 4 (FF14), the edge upon which device
20’ is mounted is not the uppermost edge, but is clearly beneath another
edge (16 in Figure 4 points to the top edge; the device is mounted to edge
10, which is underneath the top edge 16).

Claims 13-18
Claim 13, as with claim 1, is drawn only to the cable exit trough.
ADC’s arguments as to these claims appear to be largely repetitive
and are similar to the ones made for claim 1. ADC largely focuses on
limitations that are relevant only when the cable exit trough is mounted to a
lateral trough section. However, since the claims are limited to the exit
cable trough, we consider these arguments about surface orientation and the
spatial direction of the cables cradled by the device to be unpersuasive. For
example, ADC contends that the claimed “curved portion that leads
upwardly . . . after extending overran an upstanding side of the lateral trough

11 RANDOM HOUSE DICTIONARY 1385.
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section” is missing from Meyerhoefer (ADC Respondent’s Br. 13-15). The
surfaces 40 shown in Figure 6 are clearly “curved” portions (FF18).
Whether a surface is upward or downward is relative to the lateral trough
section, an element which is not required by the claim. The disputed claim
language is not a structural feature of the claimed cable exit trough, but an
“intended use” of it, which, absent evidence to the contrary, does not further
limit its structure.
As ADC has not clearly identified a structure in claim 13, and
dependent claims 14-18, which is absent from Meyerhoefer, we reverse the
Examiner’s decision not to adopt the rejection of these claims.

5. ANTICIPATION BY LONG
Panduit appeals the Examiner’s decision not to adopt the rejection of
claims 6-8, 11-16, and 18 under 35 U.S.C. § 102(e) as anticipated by Long.

Findings of Fact (“FF”)
Long discloses the following:
FF19. Long describes a device for protecting cables which attaches to the
cable ducts of switching cabinets and other cabinets or chassis housing
electrical components.
FF20. “The guide means includes a rounded guide element [6 in Figure 2]
which can be formed in one piece with the cable duct and extends outward
from the exit opening along a curve towards a radius larger than or equal to
the minimum bending radius of the cable.” (Col. 1, ll. 29-33.) A portion of
Figure 2 is reproduced below:
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Figure 2 shows funnel shaped part 5 and rounded guide element 6.
FF21. “The guide means also includes a funnel shaped part [5 in Figure 2]
which is insertable into the exit opening of the cable duct. . . . A flare end of
the funnel extends outwardly and the rounded guiding element follows the
direction of the flare end.” (Col. 1, ll. 33-42.)

Analysis
The Examiner did not err in failing to adopt the rejection. As argued
by ADC, 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. 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
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described in Long, we affirm the Examiner’s decision not to reject claims 6-
8, 11-16, and 18 as anticipated by Long.

6. ANTICIPATION BY SCHEUERMANN
Panduit appeals the Examiner’s decision not to adopt the rejection of
claims 6-18 under 35 U.S.C. § 102(b) as anticipated by Scheuermann.

Findings of Fact (“FF”)
The following facts are disclosed by Scheuermann:
FF22. Scheuermann describes a cable duct having a trough-shaped part with
side walls that are subdivided into protruding tongues, producing slots
arranged with distances between them (p. 2).
FF23. “The slots form cable guides which serve to guide wires or cables
into and/or out of the cable duct at practically any location.” (P. 2.)
FF24. “It is possible to break out one or more tongues situated side by side,
so that a broader inner space is created and cables with a larger cross section
can also be passed through the duct.” (P. 3.)
FF25. A cable guide part with a wall part 10 is inserted into the slots 3
between tongues 4. (Id.)
FF26. The guide has a downwardly curving portion. Scheuermann teaches
that the “bending radius of the side walls corresponds to the minimum
allowed bending radius of individual optical fibers and/or fiber optic cables.”
(Id.)
FF27. Figure 1 of Scheuermann is reproduced below.

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Figure 1 shows curved side walls 6, 8, and 9, slots 3, tongues 4, and walls 10
of the cable guide part inserted to the cable duct.

Discussion
Claim 6
Method claim 6 comprises: 1) providing a cable exit trough with
upper and lower portions; 2) releasably mounting the lower portion of the
cable exit to the side of a lateral trough “without cutting the top edge or the
upstanding side of the lateral trough section”; and 3) routing a cable over the
top edge of the lateral section. These steps are described in Scheuermann.
The cable guide part defined by walls 6, 8, and 9 meet the claimed
limitation of a cable exit trough (FF27; Figure 1). The cable guide is
inserted into the slots 3 between tongues 4 (FF25), and is therefore
“releasably” mounted “without cutting the top edge or the upstanding side of
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the lateral trough section.” The slot 3 is open at its top and therefore has a
top edge at its opening. For that portion (“section”) of the lateral trough, the
slot edge is also the topmost edge as is not covered or underneath another
edge (Scheuermann’s Figure 1 shows several narrow slots and one wide slot
over which the cable guide part is mounted). The cable passes over the top
edge of a slot opening of the lateral trough section and therefore meets the
last routing step of the claimed method (numbered 3 above).
ADC contends that Scheuermann does not show an exit trough
mounted “without cutting.” ADC argues that Scheuermann’s slots have
been cut into the side walls and that Scheuermann teaches breaking off the
tongue (ADC Respondent’s Br. 22-23).
The phrase “without cutting” is not defined in the ‘242 patent.
However as discussed in the “Claim Interpretation” section, we interpret
releasably mounting “without cutting” in the light of the ‘242 Specification
to mean that the lateral trough is provided in a form that does not require
cutting to attach the cable exit trough to it at the time of installation. Thus,
how the slots are produced in the lateral trough section is not relevant since
the trough is provided by Scheuermann, once manufactured, with the slots in
place. Scheuermann meets the “without cutting” limitation also because no
cutting is required to secure the cable guide to the cable duct (“lateral
trough”). Contrary to ADC’s argument, the tongues 4 are not required by
Scheuermann to be broken off. Scheuermann states that it is “possible to
break out one or more tongues” to create larger spaces to accommodate
cables with larger cross sections (FF24), indicating that such modification is
optional and not necessary.
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ADC also states that Scheuermann does not meet the limitation of
claim 7 of maintaining a minimum bend radius (ADC Respondent’s Br. 24).
This argument is not persuasive since Scheuermann expressly mentions that
the guide’s walls are configured to maintain a minimum bend radius (FF26).
In sum, we conclude that the Examiner erred in not adopting the
rejection of claim 6, and dependent claims 7-12, as anticipated by
Scheuermann.

Claims 13, 14, 15, and 17
ADC contends that Scheuermann “lacks a bottom surface with ‘a
curved portion that leads upwardly after extending over an upstanding side
of the lateral trough section. . . .’” (ADC Respondent’s Br. 24.)
Claim 13 is directed to a cable exit trough. The recitation in claim 13
that the curved portion extends upwardly into the lateral trough is not a
structural requirement of the claimed device, but a feature that is satisfied
when the cable exit trough is used with a lateral trough. It is an intended use
of the claimed exit trough. ADC has not identified a structure in the claimed
exit trough that would be necessarily present in order for it to be used in the
recited way. Consequently, we find that such “intended use” limitation does
not further limit the structure of the claimed cable exit trough.
As Scheuermann’s guide has curved surfaces (FF27), we find that
Scheuermann describes the corresponding limitation of the claim. We
reverse the Examiner’s decision not to adopt the rejection of claims 13, 14,
15, and 17 as anticipated by Scheuermann.

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Claim 16
Claim 16 depends on claim 13 and further requires a “downspout.”
ADC contends that Scheuermann’s guide part does not have a downspout
that extends in a vertical direction (ADC Respondent’s Br. 24).
ADC has not established by a preponderance of the evidence that the skilled
worker would have necessarily understood a “downspout” to require an
extension in the vertical direction. As Scheuermann describes a downwardly
extending portion of its cable guide part (FF27), we find the claim limitation
met and reverse the Examiner’s decision not to adopt the rejection.

Claim 18
Claim 18 is drawn to the cable exit trough of claim 13, where the wall
to which it is mounted has “substantially uniform height.” ADC contends
that Scheuermann lacks this structure because its cable duct is slotted (ADC
Respondent’s Br. 25). This argument is not persuasive because the claim is
directed to the cable exit trough. The wall to which it is attached is not part
of the claim, and therefore does not further limit it.

7. REJECTION OVER STABER AND LONG
Panduit appeals the Examiner’s decision not to adopt the rejection of
claims 1 and 3-5 and under 35 U.S.C. § 103(a) as obvious in view of Staber
and Long.
Panduit acknowledged that Staber lacked “first and second lead-in
pathways interconnected to the U-shaped bracket” for engaging an
upstanding side of a lateral trough as in claim 1, but identified such missing
elements in Long (Panduit App. Br. 42). Panduit argued that “[m]odifying
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the cable bridge of Staber to include the lead-in portions of Long would have
been nothing more than combining prior art elements according to known
methods to yield predictable results.” (Id.)
In the combination, the cable bridge of Staber would be
performing its function of managing cables, and the lead-in
portions of Long would be performing their function of
improving cable management. Finally, the results would be
predictable at least because the lead-in portions taught by Long
would predictably help the cables to exit the cable bridge into a
cable trough in a manner that maintains a minimum bend radius
in the cable.
(Id.)
The Examiner did not adopt the proposed rejection for two reasons.
First, the Examiner found that Long’s device was curved perpendicularly
and Staber’s was linear and that “[a]s a result of these differences, it would
not have been obvious to modify the exit trough of Staber et al. to include
curved side walls or lead-in portions based on the teaching in Long of
curved guide surfaces.” (Office Action 4, Jan. 12, 2009.) Second, the
Examiner found that the combination of Staber and Long does not teach “the
first and second lead-in portions interconnected to the U-shaped bracket
portion and extending upwardly toward the exit trough portion.” (Id.)
We do not agree with the Examiner’s determination. While there are
acknowledged structural differences between the devices of Staber and
Long, it is undisputed that each publication is from the same field of
endeavor and thus properly combinable. Innovation Toys, 98 USPQ2d at
1018. Neither the Examiner nor ADC provided evidence that these
structural differences would have discouraged a person of ordinary skill
from combining the features of Long with Staber. As indicated by Panduit,
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persons of ordinary skill in the art would have recognized that Long’s lead-
in portions would help maintain the minimum bend radius of the cables, a
stated purpose of Staber as well, giving the skilled worker adequate reason
to have combined their teachings.
ADC argued that Staber’s purpose is to not to transition the cable, but
to maintain its routing direction as much as possible, making it non-obvious
to incorporate the curved portion of Long into Staber’s linear bridge (ADC
Respondent’s Br. 26-27).
This argument is not supported by adequate evidence. Long
establishes the need to redirect cables into a desired direction, providing a
simple rationale as to why persons of ordinary skill in the art would have
modified the U-shaped type bracket of Staber with Long’s teachings.
As to the second reason for not adopting the rejection, we do not agree
with the Examiner that the claimed “interconnected lead-in” portions require
separate structures. Rather, guiding element 6 (FF20 & FF21), with space
to accommodate more than one cable, would have interconnected regions for
leading first and second cables.
ADC also argued that neither Staber nor Long describes a trough. We
agree that Long’s device is not a trough. However, for the reasons already
discussed above, we found that the Examiner properly found, based on the
preponderance of the evidence, that Staber described a trough.
For the foregoing reasons, we reverse the Examiner’s decision not to
adopt the rejection of claim 1 and dependent claim 5.
As for claim 3’s recitation that the first and second lead-in portions
“converge toward one another,” Panduit did not provide evidence that Long
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described lead-in portions that incline toward each other and then meet, as
the term “converge” would be understood to mean.12 As such evidence was
not provided, we affirm the Examiner’s decision as to claim 3 not to adopt
the rejection.
Separately argued claim 4 further comprises a “downspout.” For the
reasons already discussed in other rejections, we conclude that a
downwardly curved surface meets the limitation of a downspout and reverse
the Examiner’s decision not to rejection this claim.

8. REJECTION OVER MEYERHOEFER AND STABER
Panduit appeals the Examiner’s decision not to adopt the rejection of
Claim 5 under 35 U.S.C. § 103(a) as obvious in view of Meyerhoefer and
Staber. We reverse the Examiner’s decision.
Claim 5 depends on claim 1 and further comprises first and second
exit trough portions. Panduit contends that the claimed exit trough portions
are absent from Meyerhoefer but described by Staber. Panduit identified
disclosure in Staber where the recited structure is found (Panduit App. Br.
47). The Examiner’s reason for not adopting the rejection was that the
cable protection devices in Meyerhoefer and Staber are structurally different.
However, neither the Examiner nor ADC provided an adequate explanation
as to why the acknowledged structural differences would have discouraged
the skilled worker from combining the teachings of the two publications,
when each is in the same field of endeavor.

12 RANDOM HOUSE DICTIONARY 294.
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ADC contends that certain structures are absent from Meyerhoefer.
However, such structures are the same as those already addressed in the
anticipation rejection of claim 1. We refer back to that discussion supra as
to why ADC’s arguments were not persuasive.

CROSS-APPEALED NON-ADOPTED REJECTIONS OF CLAIMS 19-25
In addition to those claims listed in the non-adopted rejections
summarized above, Panduit also cross-appealed non-adopted rejections of
claims 19-25. Both the Examiner and ADC contend that the appeal of these
claims is improper because Panduit did not propose the rejections prior to
the Action Closing Prosecution or the Right of Appeal Notice. The
following facts are relevant to this determination:
1. Claims 19-25 were added by ADC in an amendment dated March
12, 2009.
2. On April 13, 2009, Panduit filed a reply to ADC’s response and
amendment. Panduit’s reply contained a section, beginning on page 19,
titled “Patent Owner’s New Claim Elements Do Not Distinguish Its Claims
Over The Prior Art.” Panduit did not expressly include a statement of a
proposed ground of rejection of claims 68-80.
3. An Action Closing Prosecution (ACP) was mailed by the Examiner
on July 14, 2009. Claims 19-25 were not included in the statement of the
proposed non-adopted rejections.
4. A Right of Appeal Notice (RAN) was mailed by the Examiner on
December 14, 2009. Claims 19-25 were not included in the statement of the
non-adopted rejections.
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5. A Notice of Cross-Appeal by the Third-Party Requester Panduit
was mailed to the PTO on January 20, 2010. In the summary of the
rejections not adopted by the Examiner, Panduit included claims 19-25 in
the statement of the proposed rejections.
We agree with the Examiner and ADC that we do not have
jurisdiction over the cross-appeal of the non-adopted rejections of claims 19-
25.
According to 35 U.S.C. § 134(c):
(c) THIRD-PARTY.- A third-party requester in an inter partes
proceeding may appeal to the Board of Patent Appeals and
Interferences from the final decision of the primary examiner
favorable to the patentability of any original or proposed
amended or new claim of a patent, having once paid the fee for
such appeal.
According to 37 C.F.R. § 41.61(a)(2) and (d):
(2) Upon the issuance of a Right of Appeal Notice under §
1.953 of this title, the requester may appeal to the Board with
respect to any final decision favorable to the patentability,
including any final determination not to make a proposed
rejection, of any original, proposed amended, or new claim of
the patent by filing a notice of appeal within the time provided
in the Right of Appeal Notice and paying the fee set forth in §
41.20(b)(1).
(d) An appeal or cross appeal, when taken, must be taken from
all the rejections of the claims in a Right of Appeal Notice
which the patent owner proposes to contest or from all the
determinations favorable to patentability, including any final
determination not to make a proposed rejection, in a Right of
Appeal Notice which a requester proposes to contest.
In accordance with 35 U.S.C. § 134 and 37 C.F.R. §§ 41.61(a)(2) and
(d), a third-party requester may appeal to the Board from the Examiner’s
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final decision not to adopt a rejection, as set forth in the Right of Appeal
Notice. The Examiner did not include claims 19-25 in the statement of the
non-adopted rejections in the Right of Appeal Notice (see 4. above). The
rejections of claims 19-25 listed in the Notice of Cross-Appeal and argued in
Panduit’s Appeal Brief were therefore not appealable and not within the
Board’s jurisdiction to decide. To the extent Panduit viewed the Examiner’s
ACP and RAN as inappropriately excluding reference to certain prior art
rejections, Panduit’s remedy was by way of a timely-filed petition.
Furthermore, an appellant’s brief may not raise new grounds of
rejection. Under 37 C.F.R. § 41.67(c)(vi):
No new ground of rejection can be proposed by a third party
requester appellant, unless such ground was withdrawn by the
examiner during the prosecution of the proceeding, and the
third party requester has not yet had an opportunity to propose
it as a third party requester proposed ground of rejection.
As the proposed rejections of claims 19-25 were never made or
withdrawn by the Examiner, we consider them to be new grounds of
rejections, as well, and not properly before us.

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SUMMARY
(Rejections are numbered as on pages 3-4 supra.)
1. We affirm the rejection of claims 6, 7, 9-14, 16, and 18.
2. We affirm the rejection of claims 8, 15, 17, 20, 21, and 24.
3. We reverse the rejection of claims 19-22 and affirm the rejection
of claims 23-25.
4. We reverse the Examiner’s decision not to adopt the rejection of
claims 1, 3, 4, and 13-18 and affirm the Examiner’s decision not to adopt the
rejection of claims 6-12.
5. We affirm the Examiner’s decision not to adopt the rejection of
claims 6-8, 11-16, and 18.
6. We reverse the Examiner’s decision not to adopt the rejection of
claims 6-18.
7. We reverse the Examiner’s decision not to adopt the rejection of
claims 1, 4, and 5, and affirm the Examiner’s decision not to adopt the
rejection of claim 3.
8. We reverse the Examiner’s decision not to adopt the rejection of
claim 5.

NEW GROUNDS OF REJECTION
37 C.F.R. § 41.77(a) states that “[t]he reversal of the examiner’s
determination not to make a rejection proposed by the third party requester
constitutes a decision adverse to the patentability of the claims which are
subject to that proposed rejection which will be set forth in the decision of
the Board of Patent Appeals and Interferences as a new ground of
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rejection . . . .” As we have reversed the Examiner’s decision not to adopt
certain proposed rejections, we are compelled to enter new grounds of
rejection.
37 C.F.R. § 41.77(b) states:
(b) Should the Board reverse the examiner’s determination not
to make a rejection proposed by a requester, the Board shall set
forth in the opinion in support of its decision a new ground of
rejection; or should the Board have knowledge of any grounds
not raised in the appeal for rejecting any pending claim, it may
include in its opinion a statement to that effect with its reasons
for so holding, which statement shall constitute a new ground of
rejection of the claim. Any decision which includes a new
ground of rejection pursuant to this paragraph shall not be
considered final for judicial review. When the Board makes a
new ground of rejection, the owner, within one month from the
date of the decision, must exercise one of the following two
options with respect to the new ground of rejection to avoid
termination of the appeal proceeding as to the rejected claim:

(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
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AFFIRMED-IN-PART; REVERSED-IN-PART; 37 C.F.R. § 41.77(b)

bim

FOR PATENT OWNER:

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

FOR THIRD-PARTY REQUESTER:

OLIFF & BERRIDGE, PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850