Ex Parte 8043119 et al

Patent Trial and Appeal Board

Jan 12, 2018

95000695 (P.T.A.B. Jan. 12, 2018)

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.
95/000,695 09/14/2012 8043119 018092/475679 8092
826 7590 01/16/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/16/2018 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 2016-006893
Reexamination Control 95/000,695
Technology Center 3900
Patent 8,043,119 B2
____________

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

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Patent Owner Southwire Company appeals under 35 U.S.C. § 134(b)
and 35 U.S.C. § 315(a) (pre-AIA) the Examiner’s final decision to reject
claims 1–25 and 27–61. New claims 16–25 and 27–61 were added during
the proceeding. Requester Cerro Wire Inc. appeals the Examiner’s decision
not to reject claims 1–25 and 27–61 under certain grounds proposed by
Requester.
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We affirm-in-part.

STATEMENT OF THE CASE
A request for inter partes reexamination of U.S. Patent
No. 8,043,119 B2 (the ’119 patent), assigned Reexamination Control
No. 95/000,695, was filed on September 14, 2012, by Third-Party Requester
Cerro Wire, Inc.
The ’119 patent, entitled “Method of Manufacturing Electrical Cable,
and Resulting Product, with Reduced Required Installation Pulling Force,”
issued October 25, 2011 to Randy D. Kummer, David Reece, Hai Lam,
Philip Sasse, John Armstrong, and Terry Chambers, based on Application
No. 12/787,877.
The ’119 patent is assigned to Southwire Company, the real party in
interest.

The Claims
Independent claims 1 is exemplary:
1. In a power cable of the type comprising a conductor and
sheath surrounding said conductor, in which the sheath has at least its
exterior portion formed of nylon material, an improvement in which a
erucamide pulling lubricant is introduced in said material during the
manufacture of the cable but prior to the formation of said sheath, and
either permeates throughout, or migrates through, at least said exterior
portion of the sheath to be available at the exterior surface of said
sheath as said power cable is pulled along an installation surface
through building passageways in rafters or joists or conduit bends, and
in a concentration sufficient to reduce the required installation pulling
force for installation of the cable through building passageways in
rafters or joists or conduit bends.
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The Non-Adopted Rejections
Requester appeals the Examiner’s decision not to adopt numerous
proposed rejections,1 including the following:
1. Claims 40–54, 58, and 61 under 35 U.S.C. § 314(a) as enlarging
the scope of the claims of the patent being reexamined.
2. Claims 17, 18, 22–24, 27–30, 33, 35, 36, 40–42, 50, 51, 53, 54, 57,
and 59–61 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
3. Claims 18–20, 24, 25, 30, 31, 36–38, 41–43, 45, 46, and 51–53
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as the invention.
4. Claims 1–25 and 27–61 as unpatentable over Mehta (US
6,080,489; June 27, 2000) and Wiles (John Wiles, Clarifying Confusing
Cables, 66 HOME POWER 82–84 (1998)).

The Rejections
Patent Owner appeals the Examiner’s decision to reject the pending
claims as follows:
1. Claims 16, 19–21, 32, 34, 37–39, 43, 46, 49, 52, 56, and 60 stand
rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.

1 Rather than reproducing all 46 grounds, we refer to the relevant portions of
Requester’s Appeal Brief. (Requester App. Br. 12–15.)
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2. Claims 17, 21, 23, 27, 29, 32, 33, 35, 39, 40, 44, 45, 47–50, 53–58,
and 61 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite
for failing to particularly point out and distinctly claim the subject matter
which the applicant regards as the invention.
3. Claims 1–15 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Hauenstein (US 5,708,084; Jan. 13, 1998).
4. Claims 1–15 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Mehta.
5. Claims 3, 4, 6, 7, 9–12, 22–25, 27, 28–33, 59, and 60 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Wiles, Berry
(US 5,227,080; July 13, 1993), and Ryan (Kevin J. Ryan et al., Ultra-High-
Molecular-Weight Functional Siloxane Additives in Polymers. Effects on
Processing and Properties, 6 J. VINYL & ADDITIVE TECH. 7–19 (2000)).

ANALYSIS
Patent Owner’s Appeal
§ 112 First Paragraph Rejections
Claims 16, 19, 21, 34, 37, and 39
The Examiner found that neither the Specification of the ’119 patent
nor Figures 2, 3, and 5 of the ’119 patent provides written description
support for newly added claims 16, 19, 21, 34, 37, and 39. (ACP 24–27.)
Requester agrees and argues that “[c]laims 16, 19, 21, 34, 37, and 39 each
require an erucamide lubricant . . . , and recite a range of values for
coefficient of friction,” however, “[t]he ’119 patent instead discloses pulling
force values for cables containing an erucamide lubricant . . . , but fails to
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disclose any corresponding coefficient of friction values” (Requester Resp.
Br. 8 (citations omitted)). We agree with the Examiner’s determination.
Dependent claim 16 recites the limitation “wherein the power cable
[with erucamide pulling lubricant] has the characteristic that the coefficient
of friction of said cable is between about 0.125 and about 0.150.”
Dependent claims 19, 21, 34, 37, and 39 recite similar limitations with a
range of “coefficient of friction” values.
Figure 2 of the ’119 patent illustrates “test data comparing the effect
of different pulling lubricants in small size THHN [Thermoplastic High Heat
Nylon] cable in which the outer sheath material is nylon.” (Col. 3, ll. 33–
35.) Moreover, ’119 discloses that following:
As shown in FIG. 2, small gauge THHN cable prepared,
as described, with nylon as the outer layer of the sheath, and
containing 0.25%, 0.50% and 0.85%, by weight, of stearyl
erucamide, had an average pulling force of 18.1 lbs, 16 lbs and
18.5 lbs, respectively. Even better, small gauge THHN cable
containing 0.25%, 0.50% and 0.85%, by weight, of erucamide
had an average pulling force of 13.2 lbs, 10.3 lbs and 9.6 lbs,
respectively.
(Col. 6, ll. 57–64 (emphasis added).) While the ’119 patent discloses
average pulling forces of 13.2 lbs., 10.3 lbs., and 9.6 lbs. for three different
concentrations of erucamide pulling lubricant, Patent Owner has not
explained how such values provide support for the “coefficient of friction”
values recited in claims 16, 19, 21, 34, 37, and 39.
Patent Owner argues that “[s]upport for Claims 19–21, 34, 37–39, and
56 is found in Figures 2 and 5 and in the specification” from column 4,
line 1 to column 5, line 25 and “[e]ach of these claims relates to a cable
containing a erucamide pulling lubricant, which is the lubricant used in
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connection with the tests discussed and documented in the referenced figures
and written description.” (PO App. Br. 7.) However, instead of rebutting
the Examiner’s findings, Patent Owner merely provides a conclusory
statement that the Specification and figures provide written description
support for the claims. Thus, Patent Owner did not provide sufficient
rebuttal evidence or arguments to undermine the Examiner’s conclusion that
the ’119 patent does not provide adequate written description support the
coefficient of friction values as recited in claims 16, 19, 21, 34, 37, and 39.
Accordingly, we affirm the Examiner’s decision to reject claims 16,
19, 21, 34, 37, and 39 under 35 U.S.C. § 112, first paragraph.

Claims 20, 32, 38, 43, 46, 49, 52, 56, and 60
The Examiner found that neither the Specification of the ’119 patent
nor Figures 2, 3, and 5 of the ’119 patent provides written description
support for claims 20, 32, 38, 43, 46, 49, 52, 56, and 60. (ACP 26, 28.)
Requester agrees and further argues that “the term ‘conduit fill’ [as recited in
the claims] is never used in the Specification of the ’119 patent, and there is
no disclosure of what the percentage of conduit fill was for any of the test
results . . . , how the percentage of conduit fill could be determined, or why
it matters.” (Requester Resp. Br. 8–9 (citation omitted).) We agree with the
Examiner’s determination.
Dependent claim 20 recites “wherein the PVC conduit fill is at least
about 30%.” Claims 32, 38, 43, 46, 49, 52, 56, and 60 recite similar
limitations. With respect to a coefficient of friction test apparatus, the ’119
patent discloses the following:
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The overall setup used a pulling rope threaded through
~40' of PVC conduit (appropriately sized for the cable being
pulled) with two 90° bends. Three 100' pieces of THHN cable
were cut and laid out parallel to one another in line with the first
straight section of conduit, and the rope connected to them using
industry-standard practice. The other end of the THHN cable
was attached to a metal cable which was wrapped around a
cylinder with an air brake to allow the application of constant
back tension on the setup.
(Col. 4, ll. 48–56 (emphasis added).) Other than disclosing a “PVC
conduit,” the ’119 patent is silent with respect to the term “conduit fill,”
much less a conduit fill greater than 30%.
Patent Owner reiterates the argument that “[s]upport for Claims 19–
21, 34, 37–39, and 56 is found in Figures 2 and 5 and in the specification”
from column 4, line 1 to column 5, line 25 and “[e]ach of these claims
relates to a cable containing a erucamide pulling lubricant, which is the
lubricant used in connection with the tests discussed and documented in the
referenced figures and written description.” (PO App. Br. 7.) Again, instead
of rebutting the Examiner’s findings, Patent Owner merely provides a
conclusory statement that the Specification and figures provide written
description support for these claims.
Thus, the Examiner’s determination that the ’119 patent does not
provide adequate written description support the claim limitation “conduit
fill” is supported by the evidence.
Accordingly, we affirm the Examiner’s decision to reject claims 20,
32, 38, 43, 46, 49, 52, 56, and 60 under 35 U.S.C. § 112, first paragraph.

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§ 112 Second Paragraph Rejection
Claims 17, 21, 23, 27, 29, 33, 35, 39, 40, 44, 47, 50, 54, and 61
The Examiner found that the limitation “the coefficient of friction
being determinable based on a frictional force between a cable and a PVC
conduit is not distinctly claimed because it has yet to be determined,” as
recited in dependent claims 17, 21, 23, 27, 29, 33, 35, 39, 40, 44, 47, 50, 54,
and 61, does not comply with 35 U.S.C. § 112, second paragraph, by
particularly pointing out and distinctly claiming the subject matter which
applicant regards as the invention. (ACP 33–34, 38, 43, 47, 50, 54, 58, 61,
64, 70.) In particular, the Examiner found that “the metes and bounds of the
claim are indistinct because they are a function of a[n] undetermined
quantity, i.e., the frictional force between another cable and a PVC conduit.”
(ACP 33–34; see also id. at 38, 43, 47, 50, 54, 58, 61, 64, 70.) Requester
agrees and argues “[t]he claims fail to recite which cable and which conduit
are used to determine the coefficient of friction, and thus the metes and
bounds of the claim are not distinctly defined.” (Requester Resp. Br. 10.)
We do not agree with the Examiner’s determination.
Dependent claim 17 recites
wherein the power cable has the characteristic that a coefficient
of friction of said power cable is about the same as or less than
a coefficient of friction of another power cable of the same type
and size having only externally applied lubricant and
substantially no other lubricant, the coefficient of friction being
determinable based on a frictional force between a cable and a
PVC conduit

(emphasis added). Accordingly, claim 17 recites a comparison between: (i)
a “power cable” with a pulling lubricant having a coefficient of friction; and
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(ii) “another power cable” with an externally applied lubricant instead of the
pulling lubricant, also having a coefficient of friction. Claims 21, 23, 27, 29,
33, 35, 39, 40, 44, 47, 50, 54, and 61 recite similar limitations.
The ’119 patent discloses the following:
Referring now to FIG. 4, diagrammatically illustrated is
the apparatus for a coefficient of friction test. The coefficient of
friction test apparatus was developed to give a consistent way to
determine the input values necessary to use the industry-
standard program published by PolyWater Corporation to
calculate a real-world coefficient of friction for a given cable
being pulled in conduit.
(Col. 4, ll. 36–42.)
The ’119 patent further discloses the following:
Using the data obtained from the small scale pull test of
FIG. 5, FIG. 2 illustrates a comparison of the different required
pulling forces for a small gauge cable consisting of multiple
(AWG) size 12 THHN conductors. The test subjects had 0.25-
0.85% of two different potential pulling lubricants, erucamide
and stearyl erucamide, mixed into the outer nylon sheath.
Results of the test are shown in FIG. 2 and compared to the
results for the standard THHN product without any pulling
lubricant and with the externally applied industry-standard Y77.
This test shows that erucamide is one preferred lubricant for
small gauge THHN cable, in an optimum percentage of
approximately 0.85%, by weight.
(Col. 5, ll. 14–25 (emphasis added).)
Next, large gauge Type THHN cable was tested. Using the
coefficient of friction test of FIG. 4, FIG. 3 illustrates the
different values of surface coefficient of friction of the exterior
surface of the sheath, for cables consisting of three individual
large gauge AWG 4/0 THHN conductors, for varying
percentages of the pulling lubricant, silicone oil, of varying
molecular weights. The two lubricants compared in FIG. 3 are a
high-molecular weight silicone oil (HMW Si) and a lower
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molecular weight silicone oil (LMW Si). Comparison results are
shown for this same THHN cable arrangement lubricated with
industry-standard Y77, as well as with respect to three other trial
pulling lubricants, fluorinated oil, molydisulfide, and stearyl
erucamide.
(Col. 5, ll. 26–38 (emphasis added).) Thus, the Specification of the ’119
patent provides a comparison between: (i) a THHN cable with an erucamide
(or high-molecular weight silicone oil) pulling lubricant having a coefficient
of friction; and (ii) the same THHN cable with an externally applied Y77
lubricant, instead of a pulling lubricant, also having a coefficient of friction.
Moreover, the Specification of the ’119 patent provides a generic description
of the coefficient of friction test apparatus, which includes a “cable being
pulled in [a] conduit,” used to determine the coefficient of friction for: (i)
the THHN cable with an erucamide (or high-molecular weight silicone oil)
pulling lubricant; and (ii) the same THHN cable with an externally applied
Y77 lubricant, instead of a pulling lubricant.
Accordingly, in view of the disclosure in the Specification of the ’119
patent that the THHN cable having a pulling lubricant and the same THHN
cable having an externally applied Y77 lubricant are both tested using a
coefficient of friction test apparatus, one of ordinary skill would interpret the
limitation “the coefficient of friction being determinable based on a
frictional force between a cable and a PVC conduit” as a reference to the
coefficient of friction test apparatus.
Thus, we are persuaded by Patent Owner’s arguments that “the claims
not only reference conducting tests that one of ordinary skill in the art would
understand, the claimed tests are explicitly discussed in the specification and
shown in Figures 4 and 5” and “the specification also identifies that . . . the
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tests were developed so that an industry standard program published by
PolyWater Corporation could be used.” (PO App. Br. 9.)
Accordingly, we reverse the Examiner’s decision to reject claims 17,
21, 23, 27, 29, 33, 35, 39, 40, 44, 47, 50, 54, and 61 under 35 U.S.C. § 112,
second paragraph.

Claims 55–57
The Examiner found that claims 55–57 do not comply with 35 U.S.C.
§ 112, second paragraph, by particularly pointing out and distinctly claiming
the subject matter which applicant regards as the invention. (ACP 34.) In
particular, the Examiner found that “[c]laims 55–57 are indefinite because
they . . . are process claims that depend from an apparatus claim [1].” (Id.
(emphasis omitted).) Requester agrees and argues that “[c]laims 55–57 are
indefinite because they are process claims that depend from apparatus
claim 1.” (Requester Resp. Br. 9.) We agree with the Examiner’s
determination.
Claim 1 recites “[i]n a power cable of the type comprising a conductor
and sheath surrounding said conductor” (emphasis added). Claims 55–57,
which depend indirectly from claim 1, recite that limitation “[t]he process as
defined by claim 26” (emphasis added).2 Thus, claim 1 is directed towards
the statutory category of an article of manufacture, while dependent claims
55–57 are directed towards the statutory category of a process. Because
dependent claims 55–57 are construed to incorporate by reference all the
limitations of claim 1, claims 55–57 are indefinite under 35 U.S.C. § 112,

2 Claim 26 has been cancelled.
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second paragraph, for reciting both an apparatus and process steps of using
the apparatus. See IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005).
Accordingly, we affirm the Examiner’s decision to reject claims 55–
57 under 35 U.S.C. § 112, second paragraph.

Claims 44 and 61
The Examiner found that independent claims 44 and 61 do not comply
with 35 U.S.C. § 112, second paragraph, by particularly pointing out and
distinctly claiming the subject matter which applicant regards as the
invention. (ACP 54, 70.) In particular, the Examiner found that “there is
insufficient antecedent basis for the claim limitation of ‘said THHN cable.’”
(Id.) Requester agrees and argues that “[c]laims 44 and 61 are indefinite
because there is insufficient antecedent basis for ‘said THHN cable.’”
(Requester Resp. Br. 9.) We agree with the Examiner’s determination.
Independent claim 44 recites “the coefficient of friction based on a
frictional force between said power cable and a PVC conduit as a function
of an average back tension applicable to said power cable and an average
amount of force required to pull said THHN cable through the test
apparatus” (emphasis added). Independent claim 61 recites a similar
limitation. However, the claims provide no earlier recitation of “said THHN
cable” and accordingly, the claims are unclear as to what element “said
THHN cable” refers.
Accordingly, we affirm the Examiner’s decision to reject claims 44
and 61 under 35 U.S.C. § 112, second paragraph.
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Claims 45 and 48
The Examiner found that claims 45 and 48 do not comply with
35 U.S.C. § 112, second paragraph, by particularly pointing out and
distinctly claiming the subject matter which applicant regards as the
invention. (ACP 54, 58.) In particular, the Examiner found that the “range
or limitation together with a narrow range or limitation that falls within the
broad range or limitation (in the same claim) is considered indefinite, since
the resulting claim does not clearly set forth the metes and bounds of the
patent protection.” (ACP 54; see also id. at 58.) Requester agrees and
argues “[c]laims 45 and 48 recite improper range limitations.” (Requester
Resp. Br. 9.) We do not agree with the Examiner’s determination.
Independent claim 44 recites “wherein the power cable [with a
silicone based pulling lubricant] has the characteristic that a coefficient of
friction of said cable is less than or equal to about 0.25” (emphasis added).
Claim 45 depends from claim 44 and recites “wherein the power cable has
the characteristic that the coefficient of friction of said cable is between
about 0.125 and about 0.25” (emphasis added). Similarly, independent
claim 47 recites “wherein the finished power cable has the characteristic that
a coefficient of friction of said cable is less than or equal to about 0.20” and
claim 48, which depends from claim 47, recites “wherein the finished power
cable has the characteristic that a coefficient of friction of said cable is
between about 0.125 and about 0.20” (emphases added). Accordingly,
dependent claims 45 and 48 appropriately narrow the scope of the
coefficient of friction to from “less than or equal to about 0.25” to “between
about 0.125 and about 0.25.”
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Accordingly, we reverse the Examiner’s decision to reject claims 45
and 48 under 35 U.S.C. § 112, second paragraph.

Claims 40, 53 and 58
The Examiner found that claims 40, 53, and 58 do not comply with
35 U.S.C. § 112, second paragraph, by particularly pointing out and
distinctly claiming the subject matter which applicant regards as the
invention. (ACP 50–51, 61, 67.) In particular, the Examiner found that “the
industry-standard program published by the PolyWater corporation would
. . . require regular updates to the software” and thus, the “metes and bounds
of the claim would not be fixed because it is subject to an ever-changing
computer program.” (ACP 50–51; see also id. at 61, 67.) Requester agrees
and argues “software is not static, and regular updates would be expected”
(Requester Resp. Br. 9–10) and “the ’119 patent fails to identify the program
by name, version, or release date, making it impossible for a competitor to
even determine which program is required” (id. at 10). We agree with the
Examiner’s determination.
Again, the Specification of the ’119 patent states that following:
Referring now to FIG. 4, diagrammatically illustrated is
the apparatus for a coefficient of friction test. The coefficient of
friction test apparatus was developed to give a consistent way to
determine the input values necessary to use the industry-
standard program published by PolyWater Corporation to
calculate a real-world coefficient of friction for a given cable
being pulled in conduit.
(Col. 4, ll. 36–42 (emphasis added).) However, a generic reference to an
“industry-standard program published by PolyWater Corporation” does not
clearly and precisely inform persons skilled in the art of the boundaries of
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protected subject matter. For example, the claims do not recite the software
title, version, or release date, such that one of ordinary skill can specifically
identify the claimed “program published by the PolyWater corporation.”
Accordingly, we affirm the Examiner’s decision to reject claims 40,
53, and 58 under 35 U.S.C. § 112, second paragraph.

§ 102 Rejection—Mehta
The Examiner adopted Requester’s proposed rejection of claims 1–15
as anticipated by Mehta. (ACP 71.) In particular, the Examiner adopted
Requester’s argument that “[s]ince Mehta describes the same lubricants
being incorporated in the same amounts as recited in independent claims 1
and 9 of the ’119 patent, the resultant properties of the material and the
finished product would necessarily be the same.” (Request for
Reexamination 15–16.) Requester also stated “[t]he amounts of lubricant
taught in Mehta are thus inherently ‘sufficient’ to result in the performance
characteristics recited in the independent claims of the ’119 patent.”
(Requester Resp. Br. 12–13.) We agree with the Examiner’s determination.
Mehta relates to thermoplastic compositions “having reduced coefficient of
friction, consistent coefficient of friction over time, increased
hydrophobicity, and improved abrasion resistance.” (Col. 1, ll. 6–9.) Mehta
describes a thermoplastic resin (A) (e.g., nylon) (col. 1, ll. 48–51) that
includes a siloxane blend (B) (col. 2, ll. 28–30). Mehta explains that the
thermoplastic compositions can further contain a lubricant “up to about
30 percent by weight” such as erucamide. (Col. 3, l. 63 to col. 4, l. 20.)
Mehta also explains that the “siloxane blend (B) . . . added to the
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thermoplastic resin (A) . . . serves as a 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.) Mehta further
explains that “[h]igher amounts of component (B) (up to 50 parts) can be
used to form a masterbatch (or concentrate) of the composition for further
processing” and “[f]or finished products, it is preferred that about 0.5 to
about 7 parts by weight of component (B) are used for each 100 parts by
weight of component (A).” (Col. 3, ll. 24–29.) Mehta further explains that
its method of extrusion is applicable in the production of wire or cable
extrusion. (Col. 4, ll. 42–45.) Because Mehta explains that “up to 50 parts”
of siloxane blend is used for each 100 parts, Mehta discloses the limitations
“the concentration, by weight, of the silicone based pulling lubricant is at
least 9% by weight,” as recited in dependent claim 6 and “the concentration,
by weight, of the silicone based pulling lubricant is at least 9% by weight,”
as recited in dependent claim 12.
As held in In re Best, 562 F.2d 1252, 1255 (CCPA 1977), where the
claimed and prior art products are identical or substantially identical in
structure or composition, or are produced by identical or substantially
identical processes, a prima facie case of either anticipation or obviousness
has been established. Thus, because Mehta describes production of a wire or
cable that is extruded from a thermoplastic resin (e.g., nylon) (col. 1, ll. 47–
54) containing a lubricant (e.g., siloxane and erucamide) that acts as a
surface modifier such that “the resulting extrudate has a reduced coefficient
of friction” (col. 4, ll. 22–28), which is the same one as claimed, the
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evidence supports the Examiner’s findings and conclusion that the lubricants
of Mehta (e.g., siloxane and erucamide) would achieve the claimed purpose.
Thus, the burden shifted to Patent Owner to show that Mehta does not
describe all the limitations of the claimed subject matter.
Patent Owner argues that “[t]he Examiner relies on the disclosure in
Mehta that up to about 30% by weight of any of a number of additional and
possible (but not identified) additives may also be added ‘in the modification
of polyolefins’ to support the conclusion that the claimed percentage of at
least 9% by weight of silicone based lubricant in Claims 6, 7, 11, and 12 is
shown by Mehta,” but “Mehta does not support that conclusion.” (PO App.
Br. 12.) Similarly, Patent Owner argues that “Mehta suggests a much lower
percentage, as Mehta specifically discloses that its component (B) (its
processing aid, which the Examiner has construed as the claimed lubricant)
is preferably a blend of siloxane polymers in an amount of about 0.5% to
about 6.5% by weight in the composition.” (Id.) However, as discussed
previously, Mehta explains that up to 50% siloxane blend can be used and
0.5 to 7% siloxane blend is only a preferred embodiment.
Accordingly, we affirm the Examiner’s decision to reject claims 1–15
under 35 U.S.C. § 102(b).

103 Rejection—Wiles, Berry, and Ryan
The Examiner found that Ryan teaches the limitation “silicone based
pulling lubricant.” (Id. at 35.) The Examiner concluded that “it would have
been obvious to one of ordinary skill in the art (e.g., a chemical engineer) to
add silicone of a concentration up to 20% to a thermoplastic polymer, such
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as nylon, for advantage of reduced coefficient of friction.” (Id. at 36.) We
do not agree with the Examiner’s determination.
Ryan relates to ultra-high molecular-weight (UHMW) siloxanes, in
particular, “[u]ltra-high molecular-weight siloxanes [that] can be
compounded into masterbatch pellets at higher siloxane concentrations . . . ,
e.g., up to 50%” and “impart improved processing and release, lower
coefficient of friction, and broader performance latitude compared to
conventional lower-molecular-weight silicones.” (Abstract.) Ryan explains
that “[w]ith proper dispersion of a sufficiently high-molecular-weight
siloxane polymer in a thermoplastic polymer, the siloxane will form a stable
dispersion in the polymer matrix,” such that “[t]he siloxane does not migrate
to the polymer surface during processing, even at temperatures above the
glass transition temperature.” (P. 9, col. 1, para. 2.) Ryan further explains
that “[s]iloxane selectively moves to the surface only when the thermoplastic
is in the melt phase.” (P. 14, col. 2, para. 3.)
Although the Examiner cited the UHMW siloxane of Ryan, the
Examiner has not provided sufficient evidence to support a finding that the
UHMW siloxane of Ryan is necessarily “of the type which permeates
throughout the at least one outer layer of the sheath to be available at the
said exterior surface as said power cable is pulled along an installation
surface,” as recited in claim 3. In particular, Ryan explains that “siloxane
does not migrate to the polymer surface during processing, even at
temperatures above the glass transition temperature” when the siloxane is
properly dispersed in the thermoplastic polymer (p. 9, col. 1, para. 2) and
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that “[s]iloxane selectively moves to the surface only when the thermoplastic
is in the melt phase” (p. 14, col. 2, para. 3).
Accordingly, we are persuaded by Patent Owner’s argument that
“Ryan expressly states, ‘Siloxane selectively moves to the surface only when
the thermoplastic is in the melt phase’” and “[a]ccording to Ryan, the
UHMW siloxane does not migrate in the final power cable.” (PO App.
Br. 15.)
Accordingly, we reverse the Examiner’s decision to reject claims 3, 4,
6, 7, 9–12, 22–25, 27, 28–33, 59, and 60 under 35 U.S.C. § 103(a).

§ 103 Rejection—Hauenstein
We do not reach the additional cumulative rejection of claims 1–15
under 35 U.S.C. § 102(b) as anticipated by Hauenstein. Affirmance of the
anticipation rejection based on Mehta renders it unnecessary to reach the
remaining rejection, as all of pending claims have been addressed and found
unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not
reaching additional obviousness rejections).

Requester’s Appeal
§ 314 Rejection
During the reexamination proceedings, Patent Owner added new
claims 40–54, 58, and 61. The Examiner interpreted “pulling lubricant” as a
functional limitation and thus, “the adjective ‘pulling’ is not given patentable
weight and a disclosure of ‘silicone lubricant’ in the prior art is sufficient to
meet the claim limitation.” (ACP 15 (emphases omitted).) The Examiner
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found that “new claims 40–43 replace the phrase ‘in rafters or joists or
conduit bends’ with the word ‘enclosures’, i.e., as the power cable is pulled
along building passageways in enclosures rather than pulled along building
passageways in rafters, joists, or conduit bends” and “[t]his shift in claim
language raises the issue of a . . . broadening rejection as enlarging the
scope of the claims of the patent being reexamined.” (Id. at 15–16
(emphases omitted.) However, the Examiner further found that “[i]f the
claim language pertaining to pulling the cable through passageways in
rafters, joists, or conduit bends were to be given patentable weight” then
“the claim would likely be rejected under pre-AIA 35 USC §314(a) as
broadening.” (Id. at 16.) Patent Owner argues “[a]lthough the new claims
contain terms that are not identical to the originally issued claims, they do
not improperly expand the scope of the claims.” (PO Resp. Br. 4.) We do
not agree with the Examiner’s determination with respect to claim
broadening.
During a reexamination proceeding, “[a] new claim enlarges if it
includes within its scope any subject matter that would not have infringed
the original patent.” Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691,
692 (Fed. Cir. 1997) (citing Quantum Corp. v. Rodime, PLC, 65 F.3d 1577,
1580 (Fed. Cir. 1995)). Original claims 1, 3, 5, 9, and 13 recite “building
passageways in rafters or joists or conduit bends” (emphasis added). New
claims 40, 44, 47, 50, 54, 58, 61 recites “building passageways and
enclosures” (emphasis added). The term “enclosures” is broader than a
rafter, joist, or conduit because the latter are specific types of enclosures.
Thus, the recitation of “enclosures” enlarges the scope of the new claims,
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because the limitation “enclosures” is broader in scope than “rafters or joists
or conduit bends.” Even if the Examiner is correct that the “pulling
lubricant” is a functional limitation and the recitation of “rafters, joists, or
conduit bends” should not be given patentable weight, such functional
limitation is applicable only to establishing a prima facie case of anticipation
or obviousness.
Thus, we are persuaded by Requester’s argument that “[t]he statute
[35 U.S.C. § 314(a)(pre-AIA)] is not limited in its application to claim
language that is given patentable weight, and thus must be applied to reject
the broader new claims.” (Requester App. Br. 16.)
Accordingly, we reverse the Examiner’s decision not to reject
claims 40–54, 58, and 61 under 35 U.S.C. § 314(a) as enlarging the scope of
the claims of the patent being reexamined.

§ 112 Rejection, First Paragraph Rejections
Claims 17, 18, 35, and 36
The Examiner found that claims 17, 18, 35, and 36 comply with
35 U.S.C § 112, first paragraph. (ACP 25, 28.) In particular, the Examiner
found that Figures 2 and 5 of the ’119 patent and column 4, line 65 to
column 5, line 25 of the ’119 patent provides written description support for
claims 17, 18, 35, and 36. (Id.) We agree with the Examiner’s
determination.
Claim 17 recites “wherein the power cable [with erucamide pulling
lubricant] has the characteristic that a coefficient of friction of said power
cable is about the same as or less than a coefficient of friction of another
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power cable of the same type and size having only externally applied
lubricant and substantially no other lubricant.” Claim 35 recites similar
limitations. Claims 18 and 36 recite “wherein the externally applied
lubricant is Y77.”
The Specification of the ’119 patent discloses the following:
Using the data obtained from the small scale pull test of
FIG. 5, FIG. 2 illustrates a comparison of the different required
pulling forces for a small gauge cable consisting of multiple
(AWG) size 12 THHN conductors. The test subjects had 0.25-
0.85% of two different potential pulling lubricants, erucamide
and stearyl erucamide, mixed into the outer nylon sheath.
Results of the test are shown in FIG. 2 and compared to the
results for the standard THHN product without any pulling
lubricant and with the externally applied industry-standard Y77.
This test shows that erucamide is one preferred lubricant for
small gauge THHN cable, in an optimum percentage of
approximately 0.85%, by weight.
(Col. 5, ll. 14–25 (emphases added).) Moreover, the ’119 patent discloses
that “[t]his [pulling] force correlated directly to the coefficient of friction for
the cable.” (Col. 5, ll. 11–13.) In view of the disclosure in the ’119 patent
that the THHN cable having an erucamide lubricant has a lower pulling
force than the same THHN cable having an externally applied Y77 exterior
lubricant, and that the pulling force correlates directly with coefficient of
friction, the ’119 patent provides written description support for the
limitation “wherein the power cable has the characteristic that a coefficient
of friction of said power cable is about the same as or less than a coefficient
of friction of another power cable of the same type and size having only
externally applied lubricant and substantially no other lubricant,” as recited
in claim 17.
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Requester argues that “even though the ’119 patent states that the
pulling force tests shown in Figures 2 and 5 ‘correlated directly to the
coefficient of friction for the cable’, the ’119 patent does not provide written
description support for actual values of coefficient of friction for cables
having an erucamide lubricant.” (Requester App. Br. 16 (citation omitted).)
Similarly, Requester further argues that “Figure 2 shows that one of the
eurcamide [sic] lubricants (stearyl erucamide) did not have a reduced pulling
force as compared to the control cable having the external lubricant Y77.”
(Id.) However, Requester’s arguments are not commensurate in scope with
claims 17 and 35, because the claims neither require actual values for
coefficient of friction nor a stearyl erucamide lubricant.
Accordingly, we affirm the Examiner’s decision not to adopt the
proposed rejection of claims 17, 18, 35, and 36 under 35 U.S.C. § 112, first
paragraph.

Claims 23, 29, 40, 50, and 61
The Examiner found that claims 23, 29, 40, 50, and 61 comply with
35 U.S.C § 112, first paragraph. (ACP 27, 29.) In particular, the Examiner
found that Figure 5 of the ’119 patent provides written description support
for claims 23 and 29. (Id. at 27.) The Examiner also found that Figures 2
and 5 of the ’119 patent and column 4, lines 45–63 of the ’119 patent
provides written description support for claims 40, 50, and 61. (Id. at 29.)
We agree with the Examiner’s determination.
Claim 23 recites:
wherein the power cable has the characteristic that a
coefficient of friction of said power cable is about the same as or
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less than a coefficient of friction of another power cable of the
same type and size having only externally applied lubricant and
substantially no other lubricant, the coefficient of friction being
determinable based on a frictional force between a cable and a
PVC conduit.
Claims 29, 40, 50, and 61 recite similar limitations.
The limitation “the coefficient of friction being determinable based on
a frictional force between a cable and a PVC conduit” is a general
description of the test apparatus for determining the coefficient of friction
for both the “finished power cable” and “another power cable of the same
type and size having only externally applied lubricant and substantially no
other lubricant.”
The ’119 patent discloses the following:
Referring now to FIG. 4, diagrammatically illustrated is
the apparatus for a coefficient of friction test. The coefficient of
friction test apparatus was developed to give a consistent way to
determine the input values necessary to use the industry-standard
program published by PolyWater Corporation to calculate a real-
world coefficient of friction for a given cable being pulled in
conduit. . . .
The overall setup used a pulling rope threaded through
~40’ of PVC conduit (appropriately sized for the cable being
pulled) with two 90° bends. Three 100’ pieces of THHN cable
were cut and laid out parallel to one another in line with the first
straight section of conduit, and the rope connected to them using
industry-standard practice. The other end of the THHN cable
was attached to a metal cable which was wrapped around a
cylinder with an air brake to allow the application of constant
back tension on the setup.
(Col. 4, ll. 36–56.) Thus, the testing apparatus disclosed in the ’119 patent
can “calculate a real-world coefficient of friction for a given cable” and does
not require a specified gauge or cable type.
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Requester argues that “the ’119 patent only discloses testing using
‘cables consisting of three individual large gauge AWG 4/0 THHN
conductors’” and “[t]he claims are thus broader in scope than the written
description.” (Requester App. Br. 16–17.) However, as discussed
previously, the recitation of “the coefficient of friction being determinable
based on a frictional force between a cable and a PVC conduit” (emphasis
added) is a generalized description of the test apparatus, which the ’119
patent discloses as “calculate[s] a real-world coefficient of friction for a
given cable” (col. 4, ll. 41–42).
Accordingly, we affirm the Examiner’s decision not to adopt the
rejection of claims 23, 29, 40, 50, and 61 under 35 U.S.C. § 112, first
paragraph.

Claim 17
The Examiner found that claim 17 complies with 35 U.S.C § 112, first
paragraph. (ACP 25.) In particular, the Examiner found that Figures 2 and
5 of the ’119 patent and column 4, line 65 to column 5, line 25 of the ’119
patent provide written description support for claim 17. (Id.) We agree with
the Examiner’s determination.
Claim 17 recites:
wherein the power cable [with erucamide pulling lubricant] has
the characteristic that a coefficient of friction of said power cable
is about the same as or less than a coefficient of friction of
another power cable of the same type and size having only
externally applied lubricant and substantially no other lubricant,
the coefficient of friction being determinable based on a
frictional force between a cable and a PVC conduit, said
frictional force determinable as a function of an average back
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tension applicable to the cable and an average amount of force
required to pull the cable through a test apparatus, the test
apparatus comprising (i) PVC conduit that is sized to
accommodate the cable, (ii) a first conduit segment of about 30
feet, (iii) a second conduit segment of about 5 feet, and (iv) a
third conduit segment of about 10 feet with each conduit segment
separated by a 90° bend, wherein the test apparatus applies a back
tension to the cable.
The ’119 patent discloses the following:
Initial tests of small gauge Type THHN wire were
performed using the small-scale tension tester shown in FIG. 5.
In this test, multiple individual American Wire Gauge (AWG)
size 12 THHN wires were provided on the payoff and attached
to a metal pulling tape that was threaded through an arrangement
of ½” conduit that included about 50 feet of straight conduit and
four 90° bends. A pulling rope was attached to the other end of
the pulling tape and a tugger was used to pull the cable
arrangement through the conduit. The rope was threaded through
a pulley arrangement that used a load cell to monitor rope tension
while the wire was pulled through the conduit.
(Col. 4, l. 66 to col. 5, l. 10.) Moreover, Figure 5 illustrates that the “conduit
that included about 50 feet of straight conduit and four 90° bends” includes:
(i) a 30 foot conduit; (ii) a 5 foot conduit; and (iii) a 10 foot conduit, each
conduit separated by a 90° bend.
The ’119 patent further discloses the following:
Using the data obtained from the small scale pull test of
FIG. 5, FIG. 2 illustrates a comparison of the different required
pulling forces for a small gauge cable consisting of multiple
(AWG) size 12 THHN conductors. The test subjects had 0.25-
0.85% of two different potential pulling lubricants, erucamide
and stearyl erucamide, mixed into the outer nylon sheath.
(Col. 5, ll. 14–20.) Accordingly, Figures 2 and 5 of the ’119 patent provide
written description support for claim 17.
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Requester argues that “Figure 4 of the ’119 patent, and all of the
discussion thereof in the ’119 patent, is only directed to testing of cables
having a silicone based lubricant” and “[t]he ’119 patent does not support
testing cables having erucamide lubricant on the apparatus of Figure 4.”
(Requester App. Br. 17.) The Examiner cited to Figure 5, rather than
Figure 4, as written description support for claim 17.
Accordingly, we affirm the Examiner’s decision not to adopt the
proposed rejection of claim 17 under 35 U.S.C. § 112, first paragraph.

Claims 22, 27, 28, 33, and 59
The Examiner found that claims 22, 27, 28, 33, and 59 comply with
35 U.S.C § 112, first paragraph. (ACP 27–29.) In particular, the Examiner
found that Figure 3 provides written description support for claims 22, 27,
28, 33, and 59. (Id.) We do not agree with the Examiner’s determination.
Claims 22 and 28 recite “the power cable [with silicone based pulling
lubricant] has the characteristic that the coefficient of friction of said cable is
between about 0.125 and about 0.150.” Claim 59 recites “wherein the
finished power cable [with silicone based pulling lubricant] has the
characteristic that the coefficient of friction of said cable is between about
0.125 and about 0.2.” Claims 27 and 33 recite “a coefficient of friction of
said cable [with silicone based pulling lubricant] is less than or equal to
about 0.150.”
Figure 3 of the ’119 patent is a bar graph of the coefficient of friction
as a function of weight percentage of: (i) high-molecular weight silicone oil
(HMW Si); and (ii) a lower molecular weight silicone oil (LMW Si). The
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’119 patent does not disclose the numeric values for the coefficient of
friction of the THHN cable containing 9% to 13% LMW Si. However,
Figure 3 of ’119 patent illustrates that for concentrations of high-molecular
weight silicone oil (LMW Si) from 9% to 13%, the coefficient of friction
can be estimated as greater than 0.125, but less than 0.150. Accordingly,
Figure 3 does not provide written description support the limitation “the
coefficient of friction of said cable is between about 0.125 and about 0.150”
(emphases added), as recited in claims 22, 28, and 59.
Moreover, the limitation “a coefficient of friction of said cable is less
than or equal to about 0.150” is an open-ended limitation with no lower limit
with respect to coefficient of friction. Again, Figure 3 of the ’119 patent
illustrates that for concentrations of LMW Si from 9% to 13%, the lower
limit for the coefficient of friction can be estimated as greater than 0.125, but
less than 0.150. Accordingly, Figure 3 does not provide written description
support the limitation “a coefficient of friction of said cable is less than or
equal to about 0.150” (emphases added), as recited in claims 27 and 33.
Thus, we agree with Requester’s argument that “[a]s shown in
Figure 3 of the ’119 patent, the lowest value for a coefficient of friction
using a silicone based pulling lubricant is above 0.125” and “the ’119 patent
does not provide written description support for . . . the open ended range of
‘less than or equal to about 0.150,’ because values of 0.125 or below are not
disclosed.” (Requester App. Br. 17.)
Accordingly, we reverse the Examiner’s decision not to adopt the
proposed rejection of claims 22, 27, 28, 33, and 59 under 35 U.S.C. § 112,
first paragraph.
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Claim 54
The Examiner found that claim 54 complies with 35 U.S.C § 112, first
paragraph. (ACP 29.) In particular, the Examiner found that Figures 2 and
5 of the ’119 patent and column 4, lines 35–64 of the ’119 patent provides
written description support for claim 54. (Id.) We do not agree with the
Examiner’s determination.
Claim 54 recites “wherein the finished power cable [with a silicone
based pulling lubricant] has the characteristic that a coefficient of friction of
said cable is reduced by at least about 5% in comparison to a coefficient of
friction of a cable of the same type and size having only externally applied
lubricant and substantially no other lubricant.” However, the limitation
“coefficient of friction of said cable is reduced by at least about 5%” is an
open-ended limitation with no upper limit with respect the reduction in
coefficient of friction. As discussed previously, Figure 3 of the ’119 patent
is a bar graph for the coefficient of friction as a function of weight
percentage of high-molecular weight silicone oil (HMW Si), such that for
concentrations of HMW Si from 9% to 13%, the coefficient of friction can
be estimated as greater than 0.125, but less than 0.150. From Figure 3, the
upper limit for the reduction would be the lowest value for the coefficient of
friction, which is greater than 0.125, but less than 0.150. Thus, Figure 3 of
the ’119 patent does not provide written description support for the
limitation “coefficient of friction of said cable is reduced by at least about
5%” (emphasis added).
Accordingly, we are persuaded by Requester’s argument that “the
range of ‘at least about 5%’ is open ended, and is therefore broader than any
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specific amount of reduction that might be supported by Figure 3.”
(Requester App. Br. 18.)
Accordingly, we reverse the Examiner’s decision not to adopt the
proposed rejection of claim 54 under 35 U.S.C. § 112, first paragraph.

Claim 57
The Examiner found that claim 57 complies with 35 U.S.C § 112, first
paragraph. (ACP 29.) In particular, the Examiner found that Figures 2 and
5 and column 4, lines 35–64 of the ’119 patent provides written description
support. (Id.) We do not agree with the Examiner’s determination.
Claim 57 recites the limitation “wherein the finished power cable
[with an erucamide pulling lubricant] has the characteristic that the
coefficient of friction of said cable is reduced between about 5% and 40% in
comparison to the coefficient of friction of the cable of the same type and
size having only externally applied lubricant.”
Figure 2 of the ’119 patent illustrates “test data comparing the effect
of different pulling lubricants in small size THHN cable in which the outer
sheath material is nylon.” (Col. 3, ll. 33–35.) Moreover, ’119 discloses that
following:
As shown in FIG. 2, small gauge THHN cable prepared,
as described, with nylon as the outer layer of the sheath, and
containing 0.25%, 0.50% and 0.85%, by weight, of stearyl
erucamide, had an average pulling force of 18.1 lbs, 16 lbs and
18.5 lbs, respectively. Even better, small gauge THHN cable
containing 0.25%, 0.50% and 0.85%, by weight, of erucamide
had an average pulling force of 13.2 lbs, 10.3 lbs and 9.6 lbs,
respectively. Comparably, the pulling force for a THHN cable
with no pulling lubricant was measured at 38.5 lbs, and THHN
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cable with only Y 77 applied to the exterior surface was
measured at 15.3 lbs.
(Col. 6, ll. 57–67 (emphases added).) While the ’119 patent discloses
average pulling forces of 13.2 lbs., 10.3 lbs., and 9.6 lbs. for three different
concentrations of erucamide pulling lubricant in comparison to the pulling
force of 38.5 lbs. for the Y77 exterior lubricant, Patent Owner has not
explained how such values provide support for “the coefficient of friction of
said cable is reduced between about 5% and 40%,” as recited in claim 57.
Thus, we are persuaded by Requester’s argument that “Figure 2 of the
’119 patent discloses pulling forces, and thus does not support specific
ranges of reduction in coefficient of friction.” (Requester App. Br. 18.)
Accordingly, we reverse the Examiner’s decision not to adopt the
proposed rejection of claim 57 under 35 U.S.C. § 112, first paragraph.

§ 103 Rejection—Mehta and Wiles
The Examiner did not adopt Requester’s proposed rejection of
claims 1–25 and 27–61 as unpatentable over Mehta and Wiles. (ACP 89–
92.) We do not agree with the Examiner’s determination.
As discussed previously, Mehta describes a thermoplastic resin (A)
(e.g., nylon) (col. 1, ll. 48–51) that includes a siloxane blend (B) (col. 2,
ll. 28–30). Mehta explains that the thermoplastic compositions can further
contain a lubricant “up to about 30 percent by weight” such as erucamide.
(Col. 3, l. 63 to col. 4, l. 20.) Mehta explains that its method of extrusion is
applicable in the production of wire or cable extrusion. (Col. 4, ll. 42–45.)
Wiles describes different cable and conductor types, as referenced by
the National Electrical Code (NEC). (P. 82, col. 1, para. 1.) Wiles explains
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that “[c]ables are usually defined as conductors covered by insulation” and
that “[c]ables may have only a single conductor, or may have multiple,
individually-insulated conductors.” (Id., col. 2, para. 2.) Wiles further
explains that “[t]he letters and numbers of the outer covering of the cable
provide information on the cable and where it can be used” (p. 83, col. 1,
para. 2), for example, a THHN (thermoplastic insulation with a nylon
coating) cable can be used inside a structure (id., col. 2, para. 5).
The combination of Mehta and Wiles is nothing more than
incorporating the known siloxane or erucamide lubricants of Mehta, which
are applicable towards thermoplastic resins used for the production of cable,
with the known THHN cable of Wiles, to yield predictable results. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”). Thus, the evidence
supports Requester’s argument that modifying Mehta, for the production of
the THHN cables of Wiles, would have been obvious. (Requester Comments
26–27, filed May 14, 2014.)
Prima facie obviousness is established when the claimed and prior art
products are identical or substantially identical in structure or composition,
or are produced by identical or substantially identical processes, shifting the
burden to the Patent Owner in this case to prove otherwise. In re Best, 562
F.2d at 1255. Thus, because Mehta, as modified by Wiles, describes
production of a wire or cable that is extruded from a thermoplastic resin
(e.g., nylon) (col. 1, ll. 47–54) containing a lubricant (e.g., siloxane and
erucamide) that acts as a surface modifier such that “the resulting extrudate
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has a reduced coefficient of friction” (col. 4, ll. 22–28), which is the same
one as claimed, the evidence supports Requester’s argument that the
properties achieved by the lubricants of Mehta (e.g., siloxane and
erucamide) would have been obvious, as evaluated using either coefficient
of friction or pulling force as determined by a known testing apparatus.
Accordingly, we reverse the Examiner’s decision not to reject
claims 1–25 and 27–61 under 35 U.S.C. § 103(a) over Mehta and Wiles.

Remaining § 103 Rejections
We do not reach the additional cumulative rejections of claims 1–25
and 27–61 under 35 U.S.C. § 103(a) as unpatentable over various
combinations of Hauentstein, Patent Owner’s admitted prior art, Rinehart,
Ryan, Hofmann, Chu-Ba, Berry, Hase, Aoki, Marquis, Dow, Kamioka, Flum
’380, Flum ’949, Bustos, and Ishikawa. Affirmance of the obviousness
rejection based on Mehta and Wiles discussed previously renders it
unnecessary to reach the remaining obviousness rejections, as claims 1–25
and 27–61 have been addressed and found unpatentable. Cf. In re Gleave,
560 F.3d at 1338.

DECISION
We affirm the Examiner’s decision to reject claims 16, 19–21, 32, 34,
37–39, 43, 46, 49, 52, 56, and 60 under 35 U.S.C. § 112, first paragraph.
We reverse the Examiner’s decision to reject claims 17, 21, 23, 27,
29, 33, 35, 39, 40, 44, 45, 47, 48, 50, 54, and 61 under 35 U.S.C. § 112,
second paragraph.
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We affirm the Examiner’s decision to reject claims 40, 44, 53, 55–58,
and 61 under 35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision to reject claims 1–15 under
35 U.S.C. § 102(b) as anticipated by Mehta.
We reverse the Examiner’s decision to reject claims 3, 4, 6, 7, 9–12,
22–25, 27, 28–33, 59, and 60 under 35 U.S.C. § 103(a) as unpatentable over
Wiles, Berry, and Ryan.
We reverse the Examiner’s decision not to adopt the rejection of
claims 40–54, 58, and 61 under 35 U.S.C. § 314(a) as enlarging the scope of
the claims of the patent being reexamined.
We affirm the Examiner’s decision not to adopt the rejection of
claims 17, 18, 23, 29, 35, 36 40, 50, and 61 under 35 U.S.C. § 112, first
paragraph.
We reverse the Examiner’s decision not to adopt the rejection of
claims 22, 27, 28, 33, 54, 57, and 59 under 35 U.S.C. § 112, first paragraph.
We reverse the Examiner’s decision not to adopt the rejection of
claims 1–25 and 27–61 under 35 U.S.C. § 103(a) over Mehta and Wiles.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversals of: (i) the
Examiner’s decision not to adopt the rejection of claims 40–54, 58, and 61
under 35 U.S.C. § 314(a); (ii) the Examiner’s decision not to adopt the
rejection of claims 22, 23, 27–29, 33, 40, 50, 54, 57, 59, and 61 under
35 U.S.C. § 112, first paragraph; and (iii) the Examiner’s decision not to
adopt the rejection of claims 1–25 and 27–61 under 35 U.S.C. § 103(a)
constitute a new ground of rejection and is hereby designated as such.
Section 41.77(b) provides that “[a] new ground of rejection . . . shall not be
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Reexamination Control 95/000,695
Patent 8,043,119 B2

35
considered final for judicial review.” That section also provides that Patent
Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
must exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of the appeal proceeding as to the
rejected claims:
(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.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
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Reexamination Control 95/000,695
Patent 8,043,119 B2

36
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
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.

AFFIRMED-IN-PART
37 C.F.R. § 41.77(b)

cdc

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