Ex Parte 7411129 et alDownload PDFPatent Trial and Appeal BoardJul 13, 201695000403 (P.T.A.B. Jul. 13, 2016) Copy Citation 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. 95/000,403 09/26/2008 7411129 018092/475678 3849 826 7590 07/13/2016 ALSTON & BIRD LLP BANK OF AMERICA PLAZA 101 SOUTH TRYON STREET, SUITE 4000 CHARLOTTE, NC 28280-4000 EXAMINER NGUYEN, TUAN H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 07/13/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CERRO WIRE, INC. Requester and Respondent v. SOUTHWIRE COMPANY Patent Owner and Appellant ____________ Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, MARC S. HOFF, and ERIC B. CHEN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON EXAMINER’S DETERMINATION UNDER 37 C.F.R. § 41.77(d) Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 2 This is a decision under 37 C.F.R. § 41.77 (f) on the Examiner’s determination under 37 C.F.R § 41.77(d) maintaining the rejections of claims 1–8. We have jurisdiction under 35 U.S.C. §§ 6(b), 134, and 315. We affirm. In a prior Decision on Appeal, entered January 31, 2014, we reversed the Examiner’s decision favorable to the patentability of claims 1–8 under 35 U.S.C. § 103(a) as proposed and appealed by Requester Cerro Wire Inc. These rejections were entered as a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.77(b). Patent Owner Southwire Company submitted a Request to reopen prosecution before the Examiner under 37 C.F.R. § 41.77(b)(1), dated February 28, 2014, accompanied by arguments and additional evidence,1 as follows: 1. Declaration under 37 C.F.R. § 1.132 of Philip A. Sasse, dated February 28, 2014 (“First Sasse Declaration”) (PO Ex. A). 2. Declaration under 37 C.F.R. § 1.132 of Philip A. Sasse, dated June 4, 2010 (“Second Sasse Declaration”) (PO Ex. D). 3. Supplemental Declaration under 37 C.F.R. § 1.132 of Philip A. Sasse, dated September 21, 2010 (“Supplemental Sasse Declaration”) (PO Ex. E). 4. Second Supplemental Declaration under 37 C.F.R. § 1.132 of Philip A. Sasse, dated December 22, 2010 (“Second Supplemental Sasse Declaration”) (PO Ex. F). 5. Declaration under 37 C.F.R. § 1.132 of William N. Unertl, Ph.D., dated February 25, 2011 (“Unertl Declaration”) (PO Ex. G). 1 This opinion only addresses arguments made by Patent Owner and Requester. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(iv). We have considered the declaration evidence to the extent raised by Patent Owner’s and Requester’s arguments. Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 3 6. Declaration under 37 C.F.R. § 1.132 of Gary P. Kiel, dated September 13, 2010 (“Kiel Declaration”) (PO Ex. H). 7. Declaration under 37 C.F.R. § 1.132 of Thomas C. Wright, dated September 22, 2010 (“Wright Declaration”) (PO Ex. I). 8. Declaration under 37 C.F.R. § 1.132 of Randy D. Kummer, dated January 14, 2013 (“Kummer Declaration”) (PO Ex. J). 9. Declaration under 37 C.F.R. § 1.132 of Brian McCardel, dated January 14, 2013 (“McCardel Declaration”) (PO Ex. K). 10. Declaration under 37 C.F.R. § 1.132 of Ron Adams, dated January 14, 2013 (“Adams Declaration”) (PO Ex. L). In response to Patent Owner’s Request, Requester Cerro Wire Inc. filed written comments to Patent Owner Southwire Company’s Request, dated March 28, 2014. The Examiner determined that claims 1–8 were unpatentable, and issued a Determination under 37 C.F.R. § 41.77(d), dated December 30, 2014 (“Determination”). Patent Owner contends that the Examiner’s Determination, in which the claim rejections were maintained, is erroneous and has submitted Patent Owner Comments, dated January 30, 2015 (“PO § 41.77(e) Comments”). Requester contends that the Examiner’s Determination maintaining these rejections was correct, and has submitted Requester Reply, dated March 2, 2015 (“Requester § 41.77(e) Reply”). Independent claim 1 is exemplary, with disputed limitations in italics, and underlining to show claim amendments relative to the original claims: 1. In a method of manufacturing a finished electrical cable having a conductor core and a sheath of material surrounding at least said conductor core and defining the Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 4 outermost exterior surface of the finished cable, the improvement comprising: (a) introducing sufficient lubricant into said material prior to the formation of said sheath to provide a reduced coefficient of friction of said outermost exterior surface and reduce the amount of force required to pull the cable during its installation, in which said lubricant is of the type which either migrates through, or permeates, said material to be available at said outermost exterior surface of the cable at the time of its installation; and (b) thereafter extruding said so-lubricated material to surround at least said conductor core. Claims 1–8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mehta (US 6,080,489; June 27, 2000) and Hardin (US 5,074,640; Dec. 24, 1991). ANALYSIS The Examiner’s Rejection The Examiner found that the combination of Mehta and Hardin teaches the limitation “to provide a reduced coefficient of friction of said outermost exterior surface and reduce the amount of force required to pull the cable during its installation.” (Determination 7–8.) In particular, the Examiner found that Mehta clearly discloses a cable sheath in which “at least 0.5 part by weight of a siloxane blend” and/or “up to about 30% by weight” of lubricants including erucamide are incorporated in order to reduce the coefficient of friction of an extruded article. Mehta further teaches that when additional ingredients (including erucamide at up to about 30% and/or a siloxane at least 0.5 part by weight) are added, the surface properties improve, including having reduced coefficient of friction Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 5 (id.) and accordingly, “because the lubricants of Mehta are the same as those disclosed as being advantageous in the ’129 patent, they are necessarily and inherently of a type that provide the same physical properties” (id. at 8). We agree with the Examiner’s determination. First, Patent Owner argues that “Exhibit 1 under Exhibit D [Second Sasse Declaration] is a summary of test data collected using a coefficient of friction test, in which the coefficient of friction measurements of various lubricants blended with plasticized PVC, and of different concentrations, were recorded.” (PO § 41.77(e) Comments 6.) In particular, Patent Owner argues that “[t]he test results prove that increased concentrations of a lubricant added to the base polymer do not always result in a decreased coefficient of friction” and “[t]his is shown, for example, by the fact that when erucamide, polytetrafluoroethylene (Teflon), zinc sulfate and siloxane lubricants were added to the plasticized PVC, the coefficient of friction of the resulting lubricated blended polymer initially increased and certainly did not decrease in accordance with the Examiner’s assumption.” (Id.) Exhibit 1 of the Second Sasse Declaration with test results for the PVC control sample and select lubricants (i.e., erucamide, polytetrafluoroethylene (Teflon), zinc sulfate, and siloxane) is reproduced below: Material/wt% COF CONTROL 0.495 Erucamide 14% 0.191 10% 0.216 0.5% 0.307 0.2% 0.366 0.1% 0.423 Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 6 0.05% 0.537 Teflon 10% 0.391 2% 0.404 0.5% 0.543 Zinc Sulfate 5% 2.5% 0.308 0.5% 0.357 0.3% 0.404 0.25% 0.496 Siloxane 10% 0.37 0.5% 0.547 (Second Sasse Decl. Ex. 1 (emphases added).) As indicated in Exhibit 1 of the Second Sasse Declaration, the general trend for erucamide, polytetrafluoroethylene (Teflon), zinc sulfate, and siloxane lubricants is that increasing the weight percentage of the lubrication results in a lower coefficient of friction (COF). Exhibit 1 of the Second Sasse Declaration illustrates that only at the lowest concentration of lubricant did the COF appear to be higher than the control. Without any information with respect to standard deviation, we are unable to determine if the coefficient of friction (COF) for erucamide, Teflon, zinc sulfate, or siloxane is truly greater than the control sample or merely constitutes measurement error. Nonetheless, even if these points are significantly different from the control, claim 1 recites “to provide a reduced coefficient of friction of said outermost exterior surface and reduce the amount of force required to pull the cable during its installation,” indicating that the claims require an amount of lubricant which Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 7 meets the stated reduction in COF, which excludes amounts that do not accomplish this function. Second, Patent Owner argues that Exhibit 2 of the Second Sasse Declaration “directly refutes the Examiner’s statement that ‘[i]t is clear that lower coefficient of friction will always result in lower pulling force as long as other physical properties of the cable (i.e. rigidity, abrasion resistance, etc.) remain the same . . . .’” (PO § 41.77(e) Comments 7 (emphasis omitted).) In particular, Patent Owner argues that “[t]hese results show that while a blend of a PVC polymer containing erucyl stearamide, oleamide, and erucamide lubricants have respectively increasing measured coefficient of friction of 0.40, 0.42, and 0.43, the corresponding measured required pulling forces have decreasing values of 81 lbs., 73 lbs., and 66 lbs., respectively.” (Id. at 6–7.) Exhibit 2 of the Second Sasse Declaration, which summarizes test results for the PVC control sample and select lubricants (i.e., erucamide, oleamide, and erucyl stearamide), is reproduced below: Lubricant Dynisco CoF Tugger Pull Force (lbs.) Control 0.51 97 Erucamide 0.43 66 Oleamide 0.42 73 Erucyl Stearamide 0.4 81 However, Exhibit 2 does not necessary demonstrate lack of a correlation between coefficient of friction and pulling force. Instead, Exhibit 2 demonstrates the lack of a correlation between coefficient of friction and Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 8 pulling force among different lubricants. Moreover, each of the selected lubricants resulted in a COF and pulling force that is lower than the control. Third, Patent Owner argues that “Exhibit 3 under Exhibit D [Second Sasse Declaration] provides data concerning pulling force for sample wires jacketed with PVC having increasing amounts of a lubricant, specifically, Oleamide” and “demonstrates that there is not necessarily a correlation between the measured coefficient of friction of the material from which a wire jacket is formed and the measured pulling force required to install the jacketed wire.” (PO § 41.77(e) Comments 7.) In particular, Patent Owner argues: With respect to a wire jacketed with PVC with no added lubricant (i.e., the control sample) that has a required pulling force of 31.4 lbs, the addition of 0.1% of oleamide lubricant increased the required pulling force to 33.1 lbs, rather than decreasing it, as assumed by the Examiner. In addition, the increase of oleamide lubricant from 0% to 0.2% resulted in an increase of the required pulling force over the control sample to 32.9 lbs. It is also significant that when the amount of lubricant increased from 0.8% to 2.0%, i.e., nearly doubling the lubricant concentration, the pulling force actually increased from 21.6 lbs. to 23.8 lbs., rather than decreasing as assumed by the Examiner. Similarly, when the amount of lubricant increased from 4.0% to 6.0%, the pulling force again increased from 21.4 lbs. to 24.8 lbs., rather than decreasing as expected by the Examiner. (Id.) Exhibit 3 of the Second Sasse Declaration with test results for the PVC control sample and oleamide lubricant is reproduced below: Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 9 Sample CoF Pulling force (lbs.) Control 0.500 31.4 Oleamide 0.1% 0.487 33.1 0.2% 0.454 32.9 0.4% 0.429 34.2* 0.8% 0.324 21.6 2.0% 0.318 23.8 4.0% 0.327 21.4 6.0% 0.284 24.8 8.0% 0.282 15.1 * suspect reading (Second Sasse Decl. Ex. 3.) As indicted in Exhibit 3 of the Second Sasse Declaration, the general trend for oleamide is that increasing the weight percentage of the lubricant results in a lower coefficient of friction (COF) and a lower pulling force, beginning at 0.8%. Again, without any information with respect to standard deviation, we are unable to determine if the reported decrease in coefficient of friction or the increase in pulling force are truly different than the control sample or merely constitutes measurement error. Additionally, Patent Owner has not provided any explanation as to why the pulling force for 0.4% oleamide is considered a “suspect reading,” while other data points (e.g., 0.1 % and 0.2% oleamide) are not. Fourth, Patent Owner argues that “Exhibit E [Supplemental Sasse Declaration] contains data demonstrating that there is a non-predictable relationship and a lack of correlation between variations in the coefficient of friction of a lubricant blended polymer material and the force required to Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 10 pull, through building passageways, a wire jacketed with that same polymer material.” (PO § 41.77(e) Comments 7.) In particular, Patent Owner argues that “Exhibit E demonstrates that in a wire jacketed with PVC that is blended with the lubricant polytetrafluoroethylene (PTFE) micropowder, the pulling force increased in at least one instance when the average coefficient of friction decreased.” (Id.) However, Patent Owner has failed to explain how Mr. Sasse’s Supplemental Declarations persuasively established “a lack of correlation between variations in the coefficient of friction of a lubricant blended polymer material and the force required to pull,” when the basis for the rejection of claim 1 is the siloxane blend of Mehta. Fifth, Patent Owner argues this evidence [Unertl Declaration] is clearly relevant because it refutes the Examiner’s erroneous assumption “that lower coefficient of friction will always result in lower pulling force as long as other physical properties of the cable (i.e. rigidity, abrasion resistance, etc.) remain the same by the materials modifications required to reduce the coefficient of friction.” (PO § 41.77(e) Comments 13–14.) Paragraph 13 of the Unertl Declaration states that: As discussed below, the measurements reported by Sasse not only fail to meet these reporting criteria but are also used to make invalid conclusions about correlations with pull-force data. Additionally, the test may not be relevant for the installation of cables because the test conditions are far from those encountered during sliding. Furthermore, the sled samples tested by Sasse were prepared by molding, whereas the sheathing on the cables were formed by an extrusion process and will have different surface properties. This is a second reason the CoF determined Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 11 using the sled test cannot be assumed to be reliable estimates for the actual cable sheathing. (Unertl Decl. ¶ 13 (second emphasis added).) However, Dr. Unertl’s statement that “the test may not be relevant for the installation of cables because the test conditions” was made in the context of alleged deficiencies with respect to the testing methodology in the Sasse Declarations, rather than a broad statement encompassing the lack of a correlation between coefficient of friction and pulling force of a cable under all circumstances. Accordingly, the Sasse Declarations and the Unertl Declaration do not persuasively establish nonobviousness of the claimed subject matter, including the Examiner’s finding that the limitation “to provide a reduced coefficient of friction of said outermost exterior surface and reduce the amount of force required to pull the cable during its installation” is inherently present in Mehta. Commercial Success and Evidence of Copying The Examiner found that the McCardel Declaration (PO Ex. K) and Adams Declaration (PO Ex. L) were insufficient to establish non- obviousness of the claimed subject. (Determination 11.) In particular, the Examiner found that: [w]ith respect to the assertions of . . . commercial success . . . that there is no nexus established between the claimed invention and the commercial success, that the Patent Owner has failed to establish the essential nexus and because it has failed to show whether any of its commercial products embody the subject matter recited in any of the claims of the ’129 patent that are currently at issue. (Id.) Requester agrees and further argues that with respect to Patent Owner’s declarations “substantial weight need not be given to unsupported Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 12 conclusory statements.” (See Requester § 41.77(e) Reply 11.) We agree with the Examiner’s determination. First, Patent Owner argues that “the declaration of Gary P. Kiel (Exhibit H) illustrates that it was the reduction in pulling force caused by the self-lubricated nature of the Simpull cable that convinced him to use the product.” (PO § 41.77(e) Comments 15.) A relevant portion of the Kiel Declaration states: We were also told that with this new Southwire [NoLube Simpull] cable, it would not be necessary to add any external lubricant in order to install the cable to accomplish the installation. Having been required for decades to use the external soaps during cable installation, and during that time never presented with any successful alternatives that eliminated such requirement, we simply did not believe that the Southwire cable would demonstrate the properties claimed. However, when we purchased the cable and successfully installed the cable in building passageways without any damage to the cable, and without the use of any external lubricant, we were convinced. This was the solution for which we had been looking for a long time. (Kiel Decl. ¶ 4 (emphases added).) Although Mr. Kiel states that “we purchased the cable and successfully installed the cable in building passageways without any damage to the cable, and without the use of any external lubricant,” Patent Owner has not persuasively demonstrated a “nexus” between the purposed commercial success and claimed invention because “the asserted commercial success of the product must be due to the merits of the claimed invention beyond what was readily available in the prior art.” J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). As found by the Examiner, Mehta explains that the “siloxane blend (B) . . . added to the thermoplastic resin (A) . . . serves as a Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 13 surface modifier” such that “the resulting extrudate has a reduced coefficient of friction, consistent coefficient of friction over time, and improved abrasion resistance over films not containing siloxane blend (B)” (col. 4, ll. 22–28) and thus, would have been reasonably be expected “to provide a reduced coefficient of friction of said outermost exterior surface and reduce the amount of force required to pull the cable during its installation.” Therefore, while there may have been no available commercial product, Mehta clearly taught a solution to the same problem asserted by Patent Owner. Second, Patent Owner argues that “[t]he declaration made by Brian McCardel (Exhibit K) presents evidence that the Patent Owner has increased its market share in the THHN market during the economic downturn of 2008–2009, attributing the increase market share to the incorporation of the features of Claims 1–8 into the commercial THHN product sold by Patent Owner” (PO § 41.77(e) Comments 15–16) and “competitors entered the marketplace attempting to copy the success of the patented invention” (id. at 16). With respect to Patent Owner’s purported evidence of commercial success, paragraph 5 of the McCardel Declaration states the following: In 2008, the overall housing market experienced a serious decline as part of the overall recession in the U.S. and commercial construction starts dropped by over 17% from the year before, as reported by McGraw Hill Construction. In 2009, the drop continued at over 43% as also reported by McGraw Hill Construction. During the same time, Southwire’s market share of SIMpull copper THHN Feeder Sizes (1 - 1000) actually increased during this time period at least an estimated 33% to 50% over 2007. In view of the drop in the construction market, Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 14 I attribute that increase to the patented features of that cable, as I understand they are set forth in the claims of the patent at issue that include a silicone-based lubricant. (McCardel Decl. ¶ 5 (emphasis added).) Although Patent Owner articulates a market share increase from 33% to 50% in 2007, Mr. McCardel only provides a general allegation, without supporting evidence, to support the statement “I attribute that increase to the patented features of that cable, as I understand they are set forth in the claims of the patent at issue that include a silicone-based lubricant.” Thus, Mr. McCardel’s statements from paragraph 5 of the McCardel Declaration lack persuasive factual support because the McCardel Declaration does not cite to sufficient corroborating evidence. See In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992) (“[D]eclarations themselves offer only opinion evidence which has little value without factual support.”). Accordingly, Patent Owner has provided insufficient evidence to establish a “nexus” between the increase in market share of the Southwire SIMpull THHN® products and the claimed invention. With respect to Patent Owner’s purported evidence of copying, paragraphs 7 and 8 of the McCardel Declaration state the following: I recall Cerro entering the market with competitive cable around spring of 2008, about a year after Southwire’s product was introduced. At the time, they called it LaborSaver. Cerro later changed the name to SLiPWire, but it is my understanding that the product was the same. I am attaching a printout from Cerro’s website where it describes its SLiPWirc products as cable with self-lubricating polymer jacket such that no pulling lube is required for cable installation. (McCardel Decl. ¶ 7.) Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 15 I recall Encore entering the market with its competitive cable around the latter half of 2009, well after Southwire’s product was introduced. I am attaching a printout from Encore’s website where it describes its SuperSlick Elite cable as “a great alternative to eliminate the need for lube” with a “Slick Nylon jacket for easy pulling.” (Id. ¶ 8.) Although Mr. McCardel cites to the websites of Cerro and Encore, Patent Owner has provided insufficient evidence that any product similarities are the result of copying, rather than independent product development based on studying the prior art. Moreover, the websites of Cerro or Encore do not corroborate the purported release dates of competitive products manufactured by either Cerro or Encore. Therefore, Patent Owner’s evidence of commercial success and evidence of copying does not persuasively establish the nonobviousness of the claimed subject matter. Long-felt Need Without Solution The Examiner found that since the prior art relied on in these proceedings makes it clear that incorporation of lubricant into the cable jacket (even some of the same lubricants taught in the ’129 patent) in order to reduce the installation pulling force was known at least as early as 1969 (e.g., Decoste at p. 70) there is no longer a long-felt need or problem to be solved. (Determination 11–12.) Requester agrees and further argues that with respect to expert declarations “substantial weight need not be given to unsupported conclusory statements.” (See Requester § 41.77(e) Reply 11.) We agree with the Examiner’s determination. First, Patent Owner argues “the Examiner incorrectly and impermissibly relies on a reference (DeCoste) that is not included in these Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 16 rejections” and “[b]ecause there are no rejections based on DeCoste before the Examiner at this time, it is improper for the Examiner to base its position on that reference.” (PO Comment § 41.77(e) 17.) Our Decision, at page 17, which affirmed the Examiner’s decision to reject claims 1–5 under 35 U.S.C. § 103(a) as unpatentable over McAmis and DeCoste, states the following: DeCoste explains that prewiring of new construction for telephone service and the expansion of existing facilities has “created a need for low-friction vinyl wire coatings,” which provides the characteristic of “reducing the pulling force required for placing the wire, smaller lower-strength wire structures may be used with a considerable savings in cost.” (P. 67, col. 1.) In the “Experimental” section of DeCoste, plastic compounds are formulated to study frictional properties, using a base PVC resin (p. 67, table 1) with a lubricant (e.g., stearamide, mineral oil (p. 68, table 2)). DeCoste also explains that “[v]inyl plastics generally show some decrease in friction with time” such that “[c]oefficients measured after 5-6 months of shelf aging were significantly lower than those measured after 1-2 weeks” due to “[l]ubricants [that] may migrate to the surface to alter the surface characteristics.” (P. 69, col. 1.) Accordingly, DeCoste is a reference of record in the current inter partes proceeding. Second, Patent Owner argues that “DeCoste does not solve the pertinent problem solved by the ’129 patent, i.e., reducing pulling force necessary to install the cable without the use of external lubricant or ‘soap’” but “[i]nstead, DeCoste is concerned with reducing coefficient of friction in a cable generally” and “there remained a long-felt need even in view of the disclosure of DeCoste.” (PO Comment § 41.77(e) 17 (emphasis omitted).) Contrary to Patent Owner’s arguments, DeCoste offers a solution in which a Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 17 lubricant (e.g. stearamide or mineral oil) (p. 68, table 2) is incorporated into a base PVC resin (p. 67, table 1), such that the lubricant migrates to the surface (p. 69, col. 1). Last, Patent Owner argues that “the Examiner’s argument is clearly rebutted by Patent Owner’s evidence which demonstrates that purchasers were skeptical of using a wire without additional lubricant or ‘soap’ at the time of invention of the ’129 patent.” (PO Comment § 41.77(e) 17.) In particular, Patent Owner argues In addition to Mr. Keil’s statements . . . are the statements of Mr. Aaron Hicks and Mr. Clete Meyers, respective project manager and Labor Superintendent of Dynalectric, Mr. Morris Lindsay and Mr. Trevor Rorison, electricians with Conaway Electric, and Mr. John Setter, senior project manager with Broadway Electric, describing the value of the patented invention, Simpull, over the external application “soap” process long plaguing the industry and points to the Kiel Declaration and the Wright Declaration. (Id. at 17– 18.) Similarly, Patent Owner argues “[p]aragraphs 4, 5 and 6 of Exhibit A [First Sasse Declaration] are statements of fact based on the experience of Mr. Sasse in the field of wire manufacturing and installation and show a long-felt need in the industry for the invention of the ’129 patent.” (Id. at 11.) Although Patent Owner’s evidence establishes that there was an art- recognized problem of finding an alternative solution to the current industry trend of applying a pulling lubricant (e.g., “soap”) to an exterior surface of a cable, so as to reduce the installation pulling force, such evidence does not persuasively establish that a long-felt need without solution existed. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 18 problem to be solved . . . .”). As discussed previously, DeCoste offers a solution in which a lubricant (e.g., stearamide or mineral oil) (p. 68, table 2) is incorporated into a base PVC resin (p. 67, table 1), such that the lubricant migrates to the surface (p. 69, col. 1). Furthermore, the “Background of the Invention” section of the ’129 patent acknowledges the following: In one solution, the core of the cable passes via a first extruder which applies a conventional sheath thereto i.e., a jacket and/or insulation, often made of polyethylene. The sheathed core then passes through a second extruder which applies a lubricant layer thereto, such as an alloy of silicone resin and polyethylene. The cable lubricated in that way then passes in conventional manner through a cooling vessel. (Col. 1, ll. 29–36 (emphasis added).) Thus, while a commercial embodiment might not have been available, DeCoste provides an express disclosure of a lubricant migrating to the cable exterior surface, the same property which Patent Owner has relied upon to establish both commercial success and a solution to a long-felt need. While we acknowledge praise by customers, it is not sufficient to establish the nonobviousness of the claimed invention because the praised feature appears to have been taught by DeCoste, and accordingly, Patent Owner has not demonstrated a nexus. See Rambus Inc. v. Rea, 731 F.3d. 1248, 1257–58 (Fed. Cir. 2013). Therefore, Patent Owner’s evidence that a long-felt need without solution does not persuasively establish the nonobviousness of the claimed subject matter. Accordingly, we agree with the Examiner that the rejection of claims 1–8 under 35 U.S.C. § 103(a) as unpatentable over Mehta and Hardin should be maintained. Appeal 2016-006081 Reexamination Control 95/000,403 Patent 7,411,129 B2 19 DECISION We affirm the Examiner’s decision to maintain the rejection of claims 1–8 under 35 U.S.C. § 103(a) over Mehta and Hardin. 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. This is final decision. Parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. AFFIRMED PATENT OWNER: Alston & Bird LLP Bank of America Plaza 101 South Tryon Street, Suite 4000 Charlotte, NC 28280-4000 THIRD PARTY REQUESTER: Patent Group DLA PIPER US LLP 203 N. LaSalle Street Suite 1900 Chicago, IL 60601-1293 Copy with citationCopy as parenthetical citation