Ex Parte 7557301 et al

Patent Trial and Appeal Board

Apr 29, 2016

95000696 (P.T.A.B. Apr. 29, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,696 09/14/2012 7557301 018092/464810 7176
826 7590 05/02/2016
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
PATEL, HETUL B
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/02/2016 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 2015-004351
Reexamination Control 95/000,696
Patent 7,557,301 C1
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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On October 29, 2015, Patent Owner Southwire Company requested
rehearing under 37 C.F.R. § 41.79(a) of the Decision on Appeal entered
September 29, 2015 (“Decision”), which affirmed the Examiner’s final
decision to reject claims 1–42.
On November 30, 2015, Third-Party Requester Cerro Wire
Corporation filed comments under 37 C.P.R. § 41.79(c) in opposition to
Patent Owner’s request for rehearing.
The Request for Rehearing is granted-in-part.

DISCUSSION
First, Patent Owner argues “Summers never discloses what amount of
pulling force reduction its fiber optic cable achieves” and “also never
discusses which of the various factors noted above contribute to a reduced
pulling force, or by how much, if at all.” (PO Req. for Reh’g 6.)
Accordingly, Patent Owner argues,
[g]iven that all of the independent claims of Summers are
limited to the “surface irregularities” for reducing the contact
area (and tellingly do not recite friction reducing additives), it
seems probable that at least Summers himself thought that the
surface irregularities were the most important factor, and indeed
this seems to be the entire thrust of the Summers patent.
(Id.) Requester disagrees and argues “the argument in the PO Request that
Summers does not expressly disclose the 30% reduction characteristic is
irrelevant, and should be entirely disregarded, because it does not address
the basis for the rejection.” (Requester Comments 3 (citation omitted).)
As discussed on our Decision (Dec. 8–9), the Examiner adopted
(RAN 58–62) Requester’s argument that:
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[t]he finished electrical cable of Summers in view of Dow in
further view of UL-719 has the characteristic that an amount of
force required to install said cable through corresponding holes
. . . is at least about a 30% reduction in comparison to an
amount of force required to install a non-lubricated cable of the
same cable type and size through corresponding holes in said
arrangement
(Request for Reexamination 30–31) and “[t]his characteristic is an inherent
result of the cable being made in accordance with the method steps” (id. at
31). Accordingly, Patent Owner presents new arguments not raised in the
Briefs before the Board, because the original basis for the rejection was that
the combination of Summers, Dow, and UL-719 inherently teaches the
limitation “the finished electrical cable having the characteristic that an
amount of force required to install said cable . . . is at least about a 30%
reduction in comparison to an amount of force required to install a non-
lubricated cable of the same cable type and size through corresponding holes
in said arrangement.” Such new arguments will not be considered.
“Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted in the request for
rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this
section.” 37 C.F.R. § 41.79(b)(1). Patent Owner has not identified a reason
for meeting one of these exceptions.
Second, Patent Owner argues “Summers teaches five different factors
that could go into reducing pulling force, with the coefficient of friction
being only one of them” (PO Req. for Reh’g 6) and “does not say which of
these factors contributes how much to a reduction in pulling force, if at all”
(id. at 6–7). Requester disagrees and argues “Summers plainly states [in
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column 3 line 65 to column 4, line 4] that the friction reducing additive
reduces the coefficient of friction, as well as the pulling force:
Cable jackets 45,55 can be formed of a suitable plastic material,
for example polyethylene, and, to reduce resistance to a cable
pulling force, can include a friction reducing additive therein.
The friction reducing additive can function by migrating to the
surface of cable jackets 45,55 and lubricating the interface
between the cable jackets and virtually any surface of or in the
cable passageway.
(Requester Comments 4 (emphasis omitted) (quoting col. 3 l. 65 to col. 4,
l. 4).) Accordingly, Requester argues, “[t]he fact that Summers also
discloses other aspects that can further reduce pulling force does not detract
from this explicit teaching that the friction reducing additive reduces both
the coefficient of friction and the pulling force.” (Id.)
As noted by Requester, Summers explains that “to reduce resistance
to a cable pulling force, [cable jackets 45,55] can include a friction reducing
additive” which “can function by migrating to the surface of cable jackets
45,55 and lubricating the interface between the cable jackets and virtually
any surface of or in the cable passageway” (col. 3 l. 65 to col. 4, l. 4), and
thus, implicitly compares cable pulling force for cable jackets 45,55 having a
friction reducing additive to cable pulling force for cable jackets 45,55 of
similar dimension, without a friction reducing additive. Moreover, although
Summers explains in the “Background of the Invention” section that other
factors can influence cable pulling force, such as: (i) surface area contact
between the cable jacket and cable passageway; (ii) cable weight; (iii) cable
flexibility; and (iv) cable size (col. 1, ll. 29–42), Patent Owner has not
directed us to an embodiment in Summers in which the pulling force for one
cable is compared with a reference cable, in which multiple factors (e.g.,
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surface area contact surface area contact between the cable jacket and cable
weight) were varied.
Third, Patent Owner argues “the Board engaged in improper picking
and choosing in selecting only the data from Mr. Sasse’s June 4, 2010
Declaration that allegedly supported the Board’s conclusions.” (PO Req. for
Reh’g 9.) In particularly, Patent Owner argues that “the Board ignored
evidence that supported Mr. Sasse’s conclusion that there is no necessary
relationship between the concentration of lubricant added to a polymeric
material and that material’s coefficient of friction” and “the Board omits
critical data from this exhibit, including the ‘Mineral Oil’ lubricant data that
runs directly counter to the Board’s conclusion that the trend for the
materials tested is that increasing the amount of lubricant in a material
decreases that material’s coefficient of friction.” (Id.)
However, Patent Owner’s Appeal Brief argues the following:
Appellant further submits that the Sasse declarations, among
others, support Appellant’s contention that prior art references
that simply suggest some reduced coefficient of friction during
processing or on a surface after processing is not the same as
what is claimed. In these declarations, Mr. Sasse described the
testing and provided clear support that a surface measurement,
or a slip test measurement of a surface does not satisfy what is
claimed.
(PO App. Br. 5 (emphasis added).) Thus, rather than providing citations to
the relevant paragraphs of the Sasse Declaration with respect to specific
lubricants, Patent Owner only provides a general allegation that “Mr. Sasse
described the testing and provided clear support that a surface measurement,
or a slip test measurement of a surface does not satisfy what is claimed.”
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(See id.) Furthermore, one relevant portion from paragraph 9 of the Sasse
Declaration states the following:
Each test sample [from Exhibit 1] is the plasticized PVC with
the additional lubricant listed, and in the respective percentage
listed. The test results shown prove that increased
concentrations of a lubricant added to the base polymer do not
always result in a decreased coefficient of friction. This 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, before additional concentrations
lowered the coefficient of friction.
(Sasse Decl. ¶ 9 (emphasis added).) Another relevant portion from
paragraph 10 of the Sasse Declaration states the following:
Specifically, these results [from Exhibit 2] show that while a
blend of a PVC polymer containing erucyl stearamide,
oleamide, and erucamide lubricants have respectively
increasing, and certainly not decreasing, measured coefficients
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.
(Sasse Decl. ¶ 10 (emphasis added).) Contrary to Patent Owner’s argument
that “the Board engaged in improper picking and choosing” (PO Req. for
Reh’g 9), Patent Owner’s own expert, Mr. Sasse, selectively omitted any
discussion of “Mineral Oil” from Exhibit 1 (Sasse Decl. ¶ 9) and any
discussion of “EBS wax” from Exhibit 2 (id. ¶ 10). Additionally, Patent
Owner has failed to explain how the Sasse Declaration, which tests
plasticized PVC with selected lubricants (id. ¶¶ 9–10) persuasively
established “no necessary relationship between the concentration of
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lubricant added to a polymeric material and that material’s coefficient of
friction” (PO Req. for Reh’g 9) when Summers is silent with respect to PVC
as a cable jacket material (see, e.g., col. 3, ll. 45–48, 65–66).
Fourth, Patent Owner argues “[t]he Board also seems to
misunderstand what tests are shown in Sasse’s June 4, 2010 declaration,”
for example, “the Board states that ‘Mr. Sasse used two additional pulling
cable tests, which appear to be different than the ‘joist pull’ test described in
paragraph 9 of the Sasse Declaration.’” (PO Req. for Reh’g 10 (citing Dec.
13).) In particular, Patent Owner argues “[p]aragraph[s] 10 and 11
respectively explain that in Sasse’s Exhibits 2 and 3, both the coefficient of
friction of a material and the required pulling force of cables jacketed with
that material are being tested, thus providing that both the coefficient of
friction and joist pull tests are being employed.” (Id.)
Exhibit 2 of the Sasse Declaration indicates that two separately
labelled force measurements, “Load Cell Pull Force (lbs.)” and “Tugger Pull
Force (lbs.).” Exhibit 3 of the Sasse Declaration indicates a third separately
labeled force measurement, “Pulling Force (lbs.).” Because of the
inconsistent labeling for such force measurements in Exhibits 2–3 of the
Sasse Declaration and Patent Owner’s insufficient explanation with respect
to such exhibits (see PO App. Br. 5), the actual number of tests performed is
ambiguous. However, in view of Patent Owner’s additional explanation (PO
Req. for Reh’g 10) and in view of paragraph 8 of the Sasse Declaration,
which states that “wire or cable jacketed with the materials . . . is then
threaded through the joist structure, and pull force data measured using a
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load cell and/or tugger” (emphasis added), we modify our Decision to delete
the following sentence from page 13:
Without adequate explanation, Mr. Sasse used two additional
cable pulling tests, which appear to be different than the “joist
pull” test described in paragraph 9 of the Sasse Declaration.
Fifth, Patent Owner argues “the Board discounts Sasse’s June 4, 2010
declaration for not being sufficiently statistically thorough while at the same
time relying on Sasse’s Declaration to support its own misguided
conclusions that claims 1–42 are obvious” (PO Req. for Reh’g 10), however,
“the Board itself was comfortable relying on those same data in supporting
the Board’s conclusion that the ‘general trend’ that increasing the weight
percentage of a lubricant results in a lower coefficient of friction and pulling
force” (id. at 11 (footnote omitted)). Requester disagrees and argues
“Exhibit 1 of Mr. Sasse’s June 4, 2010 Declaration includes data points
where the amount of various lubricants did not result in a reduced coefficient
of friction” but “[i]nstead of excluding such data points as irrelevant, Mr.
Sasse improperly relied on those data points.” (Requester Comments 6.)
One relevant passage from paragraph 9 of the Sasse Declaration
states:
The test results shown [from Exhibit 1] prove that increased
concentrations of a lubricant added to the base polymer do not
always result in a decreased coefficient of friction. This 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 . . .
(Sasse Decl. ¶ 9 (emphases added).) Furthermore, Exhibit 1 of the Sasse
Declaration, which summarizes test results for the PVC control sample and
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select lubricants (i.e., erucamide, polytetrafluoroethylene (Teflon), zinc
sulfate, and siloxane), is reproduced below, for only the lowest
concentrations of lubricants:
Material/wt% COF
CONTROL 0.495

Erucamide
0.05% 0.537

Teflon
0.5% 0.543

Zinc Sulfate
0.25% 0.496

Siloxane
0.5% 0.547

(Sasse Decl. Ex. 1.) Without any information with respect to standard
deviation, we are unable to determine if the coefficient of frication (COF)
for erucamide, Teflon, zinc sulfate, or siloxane is truly greater than the
control sample or merely constitutes measurement error. The reference to a
“general trend” in our Decision is based upon all data points from Exhibit 1
of the Sasse Declaration (Dec. 12–13), rather than focusing on two closely
spaced data points (e.g., COF for the control vs. COF for 0.05% erucamide)
in which the standard deviation is unknown, and drawing a conclusion based
on these two closely spaced data points.
Sixth, Patent Owner argues “the Board substituted its own judgment
for Sasse’s” and that “[t]his is improper.” (PO Req. for Reh’g 11.) In
particular, Patent Owner argues “Mr. Sasse opines that ‘there is not
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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 that jacketed wire’” and “Mr. Sasse cites several instances
in his data where an increase in pulling lubricant concentration decreases the
coefficient of friction of a PVC material formed with the same lubricant, but
the pulling force of a cable jacketed with that same material actually
increases as compared to an unlubricated control cable” but “[t]he Board
disregards Sasse’s reasoned opinion regarding the data in his Exhibit 3.”
(Id.) Requester disagrees and argues “despite individual data points where
the amount of a given lubricant may be too small to exhibit both reduced
coefficient of friction and reduced pulling force, the trends are clear that
‘sufficient’ amounts of the lubricants do reduce both the coefficient of
friction and the pulling force.” (Requester Comments 7.)
One relevant passage from paragraph 11 of the Sasse Declaration
states:
This data [from Exhibit 3] also proves that not only is there 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 that jacketed wire
. . . . For example, 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 would be expected. The
increase of oleamide lubricant to 0.2% still resulted in an
increase of the required pulling force over the control sample to
32.9 lbs.
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(Sasse Decl. ¶ 11 (emphasis added).) Furthermore, Exhibit 3 of the Sasse
Declaration, which summaries test results for the PVC control sample and
oleamide lubricant, is reproduced below, at the two lowest concentrations:
Sample CoF Pulling force (lbs.)
Control 0.500 31.4

Oleamide
0.1% 0.487 33.1
0.2% 0.454 32.9

(Sasse Decl. Ex. 3.) 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. The reference to a
“general trend” in our Decision is based upon all data points from Exhibit 3
of the Sasse Declaration (Dec. 15), rather than focusing on three closely
spaced data points, in which the standard deviation is unknown, and drawing
a conclusion based on these three closely spaced data points.
Seventh, Patent Owner argues that “the Board simply neglected to
consider two of the Sasse Declarations” and “three Sasse Declarations were
made of record in this inter partes reexamination and submitted with
Southwire’s Appeal Brief.” (PO Req. for Reh’g 12.) Patent Owner further
argues that
[b]oth of these [supplemental] declarations contain highly
relevant evidence that conclusively shows (i) there is no
necessary relationship between the concentration of lubricant
added to a polymeric material and that material’s coefficient of
friction and (ii) there is no necessary relationship between a
reduction in coefficient of friction of a polymeric material and
the reduction in pulling force of a cable.
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(Id.) Requester disagrees and argues “although the PO Request alleges that
the Board erred in not explicitly evaluating Mr. Sasse’s Exhibits B and C
(the September 21, 2010 and December 22, 2010 Declarations), it fails to
provide any explanation of how the evidence therein ties to the basis for the
rejection” and “Mr. Sasse’s Exhibits B and C relate only to the Lee reference
(U.S. Patent No. 6,977,280), which is not relied upon in the adopted
rejection, or in any of the rejections in this proceeding.” (Requester
Comments 7.)
Contrary to Patent Owner’s arguments, and as noted by Requester,
Mr. Sasse’s supplemental declarations were submitted for the purpose of
overcoming a reference (i.e., Lee) not relied upon as a prior art basis by the
Examiner in the current inter partes reexamination proceedings. Moreover,
Patent Owner has failed to explain how the Mr. Sasse’s supplemental
declarations persuasively established that “(i) there is no necessary
relationship between the concentration of lubricant added to a polymeric
material and that material’s coefficient of friction and (ii) there is no
necessary relationship between a reduction in coefficient of friction of a
polymeric material and the reduction in pulling force of a cable” (PO Req.
for Reh’g 12) when Summers is silent with respect to PVC as a cable jacket
material (see, e.g., col. 3, ll. 45–48, 65–66).
Eighth, Patent Owner argues “the Board raises two new grounds for
disregarding Southwire’s commercial success evidence.” (PO Req. for
Reh’g 13.) In particular, Patent Owner argues that “the Board articulated
two entirely new reasons for discounting Southwire’s evidence of
commercial success and copying” because “the Board found that the
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statement in the McCardel Declaration attributing the increase in
Southwire’s market share to the sales of the commercial embodiment
SIMPull cable lack persuasive factual support” (PO Req. for Reh’g 15) and
“the Board found that the McCardel and Adams Declarations lack
persuasive factual support because they allegedly contain only ‘general
allegation[s]’ that competitors have been copying Southwire’s patented
invention” (id. at 16). Requester disagrees and argues “the reasoning
expressed by the Board cannot be considered a new ground because the
Patent Owner had ample opportunity to respond to the assertion that the
Declarations lack factual support when the Requestor raised that assertion
both to the Examiner and to the Board on appeal.” (Requester Comments
10.)
It is not a new ground of rejection for the Board to respond to Patent
Owner’s arguments using different language, or restating the reasoning of
the rejection in a different way, so long as the evidence relied upon is the
same and the “basic thrust of the rejection” is the same. See In re Kronig,
539 F.2d 1300, 1303 (CCPA 1976). In Requester’s Comments, filed March
13, 2013, responsive to the Patent Owner’s response to a Non-final Office
Action, Requester argued that with respect to the McCardel and Adams
Declarations, “[t]he evidence and arguments submitted by the Patent Owner
completely fail to establish any such nexus, much less provide any showing
that such a nexus is tied to novel aspects of the claims, and thus should not
be given any evidentiary weight.” (P. 35.) Requester’s arguments with
respect the McCardel and Adams Declarations were implicitly adopted by
the Examiner in the Right of Appeal Notice. (See RAN 58.) Accordingly,
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Patent Owner’s arguments that “the Board articulated two entirely new
reasons for discounting Southwire’s evidence of commercial success and
copying” (PO Req. for Reh’g 15) are inaccurate. Thus, the finding in our
Decision that McCardel and Adams Declarations lack persuasive factual
support (Dec. 16–20) is not it new ground, because such a finding restates
the reasoning of the rejection in a different way without changing the “basic
thrust of the rejection.” See Kronig, 539 F.2d at 1303.
Ninth, Patent Owner argues that “the Board erred as a matter of law in
affirming the Examiner’s reasoning that Southwire must show evidence of
commercial success for each and every potential embodiment of the claims.”
(PO Req. for Reh’g 14.)
However, our decision to sustain the Examiner’s findings that the
McCardel and Adams Declarations were insufficient to rebut the prima facie
case of obviousness was not based upon Patent Owner’s failure to “show
evidence of commercial success for each and every potential embodiment of
the claims” (PO Req. for Reh’g 14), as argued by Patent Owner. (See Dec.
16–20.) Accordingly, Patent Owner has failed to “state with particularity the
points believed to have been misapprehended or overlooked [by] the
Board[]” as required by 37 C.F.R. § 41.79(b)(1).
Last, Patent Owner argues “the long-felt need had not been solved by
Summers because Summers does not disclose whether its optional friction-
reducing additive causes any reduction in the installation pulling force of a
cable.” (PO Req. for Reh’g 17.) In particular, Patent Owner argues that
”because Summers fails to disclose whether there is any reduction of pulling
force as compared to a non-lubricated cable of the same type and size, and is
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completely silent with regards to the claimed 30% reduction, it fails to solve
the long-felt need.” (Id.) Requester disagrees and argues “Summers
expressly discloses [in column 3, line 65 to column 4, line 4] that the friction
reducing additive results in reduced coefficient of friction and pulling force”
(Requester Comments 10) and “there is certainly no evidence of any long-
felt need tied to the claimed 30% reduction in pulling force as measured by
the joist-pull test” (id. at 11).
Other than reiterating an argument that was previously presented (PO
Req. for Reh’g 17), Patent Owner has failed to “state with particularity the
points believed to have been misapprehended or overlooked [by] the
Board[]” as required by 37 C.F.R. § 41.79(b)(1).

CONCLUSIONS
The Request for Rehearing has been considered. As discussed
previously, we grant the Request for Rehearing to modify page 13 of our
original Decision. The Request for Rehearing is otherwise denied.
Accordingly, the Request for Rehearing is granted-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING GRANTED-IN-PART

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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