95000573 - (R) (P.T.A.B. Mar. 28, 2014)

Ex Parte 7749024 et al

Patent Trials and Appeals BoardMar 28, 2014

95000573 - (R) (P.T.A.B. Mar. 28, 2014)

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. 95/000,573 10/08/2010 7749024 023944.008686-1 2557 32914 7590 11/03/2014 GARDERE WYNNE SEWELL LLP INTELLECTUAL PROPERTY SECTION 3000 THANKSGIVING TOWER 1601 ELM ST DALLAS, TX 75201-4761 EXAMINER PATEL, HETUL B ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 11/03/2014 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 ____________ ENCORE WIRE CORPORATION Requester and Respondent v. SOUTHWIRE COMPANY Patent Owner and Appellant ____________ Appeal 2014-000135 Reexamination Control 95/000,573 Technology Center 3900 Patent 7,749,024 ____________ Before RICHARD M. LEBOVITZ, MARC S. HOFF, and ERIC B. CHEN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2014-000135 Reexamination Control 95/000,573 Patent No. 7,749,024 2 On April 22, 2014, Third-Party Requester Encore Wire Corporation (“Requester”) requested rehearing under 37 C.F.R. § 41.79 (a) of the Decision on Appeal entered March 28, 2014 (“Decision”), which reversed the Examiner’s final rejection of claims 6, 7, 11, and 12. On May 22, 2014, Patent Owner Southwire Company filed comments under 37 C.P.R. § 41.79 (c) in opposition to Requester’s request for rehearing. The Request for Rehearing is denied. DISCUSSION Requester argues “that Grounds 2, 3, 6, 8, and 9 are particularly relevant and material to the patentability of Claims 6, 7, 11, and 12 and should be considered on rehearing.” (Req. for Reh’g 2.) In particular, Requester argues that “JP-601 . . . explicitly teaches that an electrical cable can be constructed with an outer jacket formed with a polyorganosiloxane lubricant of 10% for reducing the cable surface coefficient of friction” and “JP-601 directly remedies the deficiency found by the Board with respect to the combination of Chu-Ba, Brown, and Dow Corning.” (Id. at 3.) We do not agree. The process of claim 6 involves combining a silicone lubricant with the nylon material on the exterior surface of a finished cable. In the “Prior Art” section, JP ’601 explains “it has also been conceived to use, as the outer coating layer of the optical cable, nylon composed of polyamide resin, which is high in hardness and whose resin material has in itself a low friction coefficient” (emphasis added). (JP ’601 ¶ 4.) Furthermore, in the “Problems Appeal 2014-000135 Reexamination Control 95/000,573 Patent No. 7,749,024 3 To Be Solved by the Invention” section, JP ’601 explains “although the friction coefficient of polyamide resin is low, it has a high elastic modulus, and therefore its bending rigidity is high, which results in the problem that strength is required for winding up or rewinding to the cable drum, and handling is not easy” and “[t]here is also the problem that cost is relatively high” (emphasis added). (Id. at ¶ 5.) As a solution to this problem of nylon coated optical cables having high bending rigidity and high cost (id.), JP ’601 explains that [t]he inventors discovered that the pulling force of cable can be markedly reduced when the outer coating layer of the cable is formed by adding grease-type or silicon resin lubricant to straight-chain, low-density polyethylene, and they noted that in the case of low-density polyethylene, it has suitable flexibility and is low in cost, and therefore enables avoidance of the problem of difficulty in handling that stems from the hardness of polyamide resin and the problem of high cost, and thereby completed the present invention. (Id. at ¶ 12 (emphases added).) Thus, JP ’601 provides an explanation that a silicon resin lubricant can be applied to a low-density polyethylene cable material with greater flexibility, as an alternative to replace the rigid nylon cable material, as described in the prior art. (See id. at ¶¶ 4, 5.) Accordingly, JP ’601 provides no express teaching that the silicon resin lubricant can be applied to a nylon coated cable. CONCLUSION The Request for Rehearing has been considered and denied. REHEARING DENIED Appeal 2014-000135 Reexamination Control 95/000,573 Patent No. 7,749,024 4 Gardere Wynne Sewell, LLP Intellectual Property Section 3000 Thanksgiving Tower 1601 Elm Street Dallas, TX 75201-4761 Third Party Requester: Thompson & Knight, LLP Patent Property Department 1722 Routh Street Suite 1500 Dallas, TX 75201-2533