Ex Parte 6925242 et al

Board of Patent Appeals and Interferences

Jun 8, 2012

95000415 (B.P.A.I. Jun. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,415 11/06/2008 6925242 065484-0015 7623
23552 7590 06/08/2012
MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/08/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

PANDUIT CORPORATION
Requester and Cross-Appellant

v.

Patent of ADC TELECOMMUNICATIONS
Patent Owner and Respondent
____________

Appeal 2012-003436
Reexamination Control 95/000,415
Patent 6,925,242 B2
Technology Center 3900
____________

Before RICHARD E. SCHAFER, RICHARD M. LEBOVITZ, and
DANIEL S. SONG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON EXAMINER’S DETERMINATION
UNDER 37 C.F.R. § 41.77(d)
This is a decision on the Examiner’s determination under 37 C.F.R.
§ 41.77(d). We affirm. In accordance with 37 C.F.R. § 41.77(f), this decision
herein incorporates the Decision in Appeal 2011-003297, mailed on June 22, 2011.
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STATEMENT OF THE CASE
A Decision on Appeal 2011-003297 by the Patent Owner (“ADC”) and a
cross-appeal by the Third-Party Requester (“Panduit”) in an inter partes
reexamination of U.S. Patent No. 6,925,242 was made by the Board of Patent
Appeals and Interferences on June 22, 2011 (hereinafter, “the ‘3297 Decision”). In
the Decision, Panduit cross-appealed the Examiner’s decision not to adopt
Panduit’s proposed Rejections 4-8 (‘3297 Decision 3-4). The Board affirmed the
Examiner’s decision not to adopt Rejection 5 (the “Long Rejection”). The Board
reversed the Examiner’s determination not to adopt rejections 4 and 6-8, and
designated this portion of the Decision as a “new ground of rejection” pursuant to
37 C.F.R. § 41.77(a) & (b) (‘3297 Decision 49-50). ADC opted to reopen
prosecution pursuant to 37 C.F.R. § 41.77(b)(1). ADC amended the claims to
address the newly adopted grounds of rejection and also added new claims (Patent
Owner’s Response Requesting Reopening of Prosecution under 37 C.F.R. § 41.77,
August 23, 2011).
In comments responsive to ADC’s response, Panduit cited a new prior art
publication, Zetena,1 and proposed new rejections based on Zetena (Third Party
Requester’s Comments on Patentee’s Response to Requesting Reopening
Prosecution, September 22, 2011, pp. 1-12). Panduit stated that, when prosecution
is open, “37 C.F.R. § 1.948(a) permits the third-party requester (Panduit) to submit
new prior art when necessary to rebut a response of the Patentee(s).” (Id. at 1.)
Panduit proposed the following new rejections:

1 U. S Patent No. 5,271,585 (issued Dec. 21, 1993).
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1. Claims 26-28, 31, 32, and 35 under 35 U.S.C. § 102(b) as anticipated by
Zetena (id. at 3);
2. Claims 13-16, 18, 33, and 34 under 35 U.S.C. § 103(a) as obvious in
view of Zetena and Long2 (id. at 6); and
3. Claim 17 under 35 U.S.C. § 103(a) as obvious in view of Zetena, Long,
and Scheuermann3 (id. at 11).
4. Panduit also stated that the Board’s decision to affirm the Examiner’s
determination not to reject claims 6-8, 11-16, and 18 over Long (Rejection 5;
‘3297 Decision 36-38) was an error and stated that claims 13-18, 26-28, and 31-35
should be rejected under § 102(b) as anticipated by Long (id. at 12).

Examiner’s Determination
After considering comments made by both ADC and Panduit, the Examiner
made determinations on the patentability of the pending claims (claims in the
previous appeal, claims amended in this appeal, and new claims added in this
appeal) (Examiner’s Determination Pursuant to 37 C.F.R. § 41.77(d), October 14,
2011). Neither ADC nor Panduit challenged the Examiner’s determinations with
respect to the new grounds of rejection.
The Examiner did not adopt newly proposed rejections 1-3 (id. at 13, ¶ 16).
Panduit challenges these determinations. Upon review, as explained in more detail
below, we affirm the Examiner’s determinations.

2 U.S. Patent No. 5,872,336 (issued Feb. 16, 1999).
3 DE 37 42 448 A1 (issued June 29, 1989).
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Long rejection
With respect to the Long Rejection (4 above), the Examiner determined that
the comments and new evidence were not proper because the rejection over Long
was not a “new grounds” and therefore prosecution with respect to the Long
rejection was not reopened (id. at 14). The Examiner also found Panduit’s
comments were not responsive to the amendments and new evidence filed by ADC
(id.).

Representative claims
Representative claims 13 and 26 are reproduced below (underlining and
brackets show amendments relative to the original claims).
13. A cable exit trough system comprising:
a cable exit trough and a lateral trough having a lateral trough section, the
lateral trough section having a base and an upstanding side, the cable exit
trough mountable to a lateral trough section, the lateral trough and lateral
trough section being horizontal to the ground to define a horizontal cable
pathway for routing cables horizontally to the ground, wherein the lateral
trough has an upstanding side that includes the upstanding side of the lateral
trough section, wherein the upstanding side of the lateral trough has a
substantially uniform cross section between a first end and a second end of the
lateral trough; the cable exit trough comprising:
a mounting structure configured to releasably mount the cable exit trough to the
lateral trough section;
a first inner portion positioned inside the lateral trough when the cable exit
trough is mounted to the lateral trough section;
a second outer portion positioned outside of the lateral trough when the cable
exit trough is mounted to the lateral trough section;

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a cable trough portion defining a cable exit pathway that extends between the
first inner portion and the second outer portion, the cable trough portion
including a curved bottom surface constructed to maintain a minimum cable
bend radius, the bottom surface including a curved portion that leads upwardly
and away from the lateral trough section after extending over an upstanding
side of the lateral trough section;
wherein a cable passes over a top edge of the lateral trough section when routed
in the cable exit pathway of the cable trough portion; and
wherein the cable exit trough further includes an upper surface, wherein the
upper surface curves upward relative to the base of the lateral trough section
and defines a top boundary of at least a portion of a cable path.
26. A method of routing a cable in a cable routing system, the method
comprising the steps of:

providing a lateral trough section and a cable exit trough mountable to the
lateral trough section, the lateral trough section being horizontal to the ground
to define a cable pathway so that cables routed through the lateral trough
section also run horizontal to the ground along the cable pathway, the lateral
trough section having an upstanding side of substantially uniform height
between a first end and a second end of the lateral trough section, wherein the
distance between the first and second ends of the lateral trough section is longer
than the longest dimension of the cable exit trough in a direction horizontal to
the ground along the cable pathway when mounted to the lateral trough section,
the cable exit trough having an upper portion and a lower portion;

releasably mounting the lower portion of the cable exit trough adjacent to a top
edge of the upstanding side of the lateral trough section, without cutting the top
edge or the upstanding side of the lateral trough section; and

routing a cable from the lateral trough section over the top edge of the lateral
trough section and into a cable exit pathway defined by the upper portion of the
cable exit trough; and

wherein the upper portion that defines the cable exit pathway includes a curved
bottom surface that, while maintaining a minimum bend radius, transitions to
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substantially vertical to guide cables exiting the lateral trough section to a
substantially vertical orientation relative to the ground.

ANTICIPATION BY ZETENA
Claim 26
Claim 26 is directed to a method of routing a cable in a cable routing system.
The method includes providing (1) a lateral trough section and (2) a cable exit
trough mountable to the lateral trough section. The cable exit trough comprises
“an upper portion and a lower portion.”
The lower portion is releasably mounted to a top edge of the upstanding
side of the lateral trough section (“releasably mounting the lower portion of the
cable exit trough adjacent to a top edge of the upstanding side of the lateral trough
section”).
The upper portion defines a cable exit pathway along which the cable is
routed (“routing a cable from the lateral trough section over the top edge of the
lateral trough section and into a cable exit pathway defined by the upper portion of
the cable exit trough”)
The upper portion “includes” a “curved bottom surface” that “while
maintaining a minimum bend radius, transitions to substantially vertical to guide
cables exiting the lateral trough section to a substantially vertical orientation
relative to the ground.”
Figure 1 of the ‘242 patent, reproduced below, illustrates an embodiment of
the cable exit trough mounted to the lateral trough section:
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Figure 1 shows the lateral trough section 20 and the cable exit trough 100
releasably mounted to the lateral trough section 20 through the bracket portion 102.
The lower portion includes “bracket 102” and “inner projecting member
106” (‘242 patent, col, 3, ll. 13-15).
The upper portion includes bottom surface 146 and upper surface 126.

The Rejection
According to Panduit, the Zetena patent describes a cable routing system
that meets all the limitations of the claimed system. Figures 7 and 8 of Zetena,
reproduced below, are said by Panduit to show the main features of claim 26.
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Figure 7 of Zetena, reproduced above, shows a perspective view of strain
reliever 54 to hold fiber optic cables; 56 is the cable holder with slots 57. Figure 8
shows an exploded view of the strain reliever 54 in use. Figure 8 of Zetena shows
strain reliever 54 mounted to a channel member 5.
Strain reliever 54, contends Panduit, serves as a “cable exit trough,” and
channel member 5, serves as “lateral trough section.” (Third Party Requester’s
Comments in Response to Examiner’s Determination, November 14, 2011, p. 1;
Third Party Requester’s Comments on Patentee’s Response to Requesting
Reopening Prosecution, September 22, 2011, pp. 3-4).

Cable exit trough
Panduit contends that Zetena’s cable holder 56 is a “cable exit trough.” We
do not agree. Cable holder 56 comprises a “slot” 57, not a “trough.” A trough has
a more substantial length than the slot 57 depicted by Zetena. Because Zetena does
not describe a cable exit trough, the Examiner properly did not adopt the
anticipation rejection by Zetena.
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Upper and lower portions of cable exit trough
Even if slot 57 is considered to be a trough, Zetena is still deficient because
it does not describe a cable exits trough with upper and lower portions. This is
explained in more detail below.

• Upper portion
The cable holder 56 with slots 57 is the upper portion of strain reliever 54
(Zetena, col. 4, ll. 17-18) and thus meet the limitation of the claimed “upper
portion” of the cable exit trough.
Cable 3 in Figure 8 is routed from the channel member 5 (lateral trough
section) into the slot 57 of the strain reliever 54 (cable exit trough), which serve as
the claimed “cable exit pathway defined by the upper portion of the cable exit
trough.”
Claim 26 also requires the upper portion of the cable exit trough to have “a
curved bottom surface.” As shown in Figures 7 and 8 of Zetena and pointed to
by the arrowhead (not part of the original figure), the strain reliever 54 has a
curved bottom surface that has a “substantially vertical orientation relative to the
ground” as recited in claim 26. This vertical portion of the strain reliever 54
transitions from the upper portion of cable holder 56 and extends past attaching lip
55.

• Lower portion
The cable exit trough of claim 26 also comprises a lower portion. As
shown in Figure 8 of Zetena, the strain reliever 54 is mounted to the top edge 11 of
channel member 5 through attaching lip 55 and clip 25 (Zetena, col. 4, ll. 14-17).
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Claim 26 requires “releasably mounting the lower portion of the cable exit trough
adjacent to a top edge of the upstanding side of the lateral trough section.” As lip
55 serves this purpose, it meets the claimed requirement of the cable exit trough’s
lower portion. (Third Party Requester’s Comments in Response to Examiner’s
Determination, November 14, 2011, p. 1 (right-hand annotation of Figure 8); Third
Party Requester’s Comments on Patentee’s Response to Requesting Reopening
Prosecution, September 22, 2011, p. 4, col. 2, last ¶.)

Curved bottom surface is not contained in upper portion
Claim 26 requires that the “upper portion . . . includes a curved bottom
surface” which “transitions to substantially vertical to guide cables exiting the
lateral trough section to a substantially vertical orientation relative to the ground.”
We interpret this limitation to require that substantially the entire bottom surface
be part of the upper portion. This interpretation is reasonable because the curved
bottom surface is “include[d]” in the “upper portion” of the cable exit trough. In
addition to this, we interpret “upper” in accordance with its dictionary definition to
mean “higher.”4 Thus, the upper portion of the cable exit trough is required to be
higher than the lower portion. Consistent with this interpretation, Figure 1 of the
‘242 patent (reproduced above) shows substantially the entire bottom surface 146
located higher than bracket 102 which mounts the lower portion to the lateral
trough section.
However, as shown in Figure 8 of Zetena, when the strain reliever 54 is
mounted to the channel member 5 top edge through lower portion 55, a substantial

4 Upper: “1a : higher in physical position, rank, or order ” http://www.merriam-webster.com/dictionary/upper
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portion of the curved bottom surface extends beyond the lower portion 55. In
particular, the lowermost part of the curved bottom surface, which can be
reasonably be considered "substantially vertical" with respect to the ground, is
located lower than the lower portion 55 as shown clearly in Figures 7 and 8. Thus,
the curved bottom surface cannot reasonably be characterized as an upper portion
because a substantial part of it is not higher than the lower portion of the cable exit
trough.
In sum, Zetena does not anticipate the claimed method of routing a cable in a
cable routing system because Zetena does not describe a cable exit trough with an
upper portion that has a curved bottom surface. Consequently, we affirm the
Examiner’s determination not to adopt the anticipation rejection of independent
claim 26, and dependent claims 28, 31, and 32, based on Zetena.
Claim 35, which was also rejected an anticipated by Zetena, depends on
claim 13. Panduit did not provide evidence that all the features of claim 13 are
described in Zetena. Consequently, we affirm the Examiner’s decision not to
adopt of the anticipation rejection of claim 35 based on Zetena.

OBVIOUSNESS IN VIEW OF ZETENA AND LONG
Issue
The issues in this rejection are:
whether claim 13 can be reasonably interpreted to encompass a cable exit
trough in which “a first inner portion” and “an upper surface” are represented by
the same structural element;
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whether the cable exit trough’s “upper surface” can be reasonably
interpreted to be part of the “curved bottom surface” which extends between the
first inner portion and the second outer portion; and
whether a cable exit trough is taught by the combination of Zetena and
Long.
Analysis
Claim 13 is drawn to a cable exit trough system comprising a cable exit
trough and a lateral trough section. The cable exit trough is recited to have the
following features (claim “limitations”; emphasis added):
[1] “a first inner portion positioned inside the lateral trough when the cable
exit trough is mounted to the lateral trough section;”
[2] “a second outer portion positioned outside of the lateral trough when the
cable exit trough is mounted to the lateral trough section;
[3] “a cable trough portion defining a cable exit pathway that extends
between the first inner portion and the second outer portion, the cable trough
portion including a curved bottom surface constructed to maintain a minimum
cable bend radius, the bottom surface including a curved portion that leads
upwardly and away from the lateral trough section after extending over an
upstanding side of the lateral trough section;”
[4] “wherein the cable exit trough further includes an upper surface,
wherein the upper surface curves upward relative to the base of the lateral trough
section and defines a top boundary of at least a portion of a cable path.

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Limitations [1] and [4]
Panduit proposed a rejection of claim 13 based on the combination of Zetena
and Long.
For limitation [1], Panduit cited Long’s teaching of “a fiber optic cable
guiding device/means 3 [which] includes a rounded guiding element 6 and funnel-
shaped part 5 that together have a curved bottom surface that extends inside the
duct 2' (first inner portion). Col. 2, lines 22-24, and FIG. 2.” (Third Party
Requester’s Comments on Patentee’s Response to Requesting Reopening
Prosecution, September 22, 2011, p. 8.) Duct 2' (as shown in Figure 2 of Long) is
a lateral trough section.
For limitation [4], Panduit cited Long’s teaching of “a fiber optic cable
guiding device/means 3 [which] includes funnel-shaped part 5. . . . that, at the very
least, the funnel-shaped part 5 includes some type of curved surface that curves
upward to maintain a minimum bend radius and defines a top boundary of at least a
portion of a cable path.” (Third Party Requester’s Comments on Patentee’s
Response to Requesting Reopening Prosecution, September 22, 2011, p. 8))
Panduit illustrated the proposed modifications of Zetena with Long’s
teaching (Third Party Requester’s Comments in Response to Examiner’s
Determination, November 14, 2011, p. 3). This figure is reproduced below:
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As shown in the figure reproduced above, Panduit proposed that limitations
[1] and [4], the first inner portion positioned inside the lateral trough and the upper
surface that defines a top boundary of at least a portion of a cable path,
respectively, are the same structural element.
The top left drawing shows Zetena’s strain reliever 54. The strain reliever is
extended into the duct based on Long’s teaching and the extension is said by
Panduit to serve as the claimed “first inner portion” [1] (Third Party Requester’s
Comments on Patentee’s Response to Requesting Reopening Prosecution,
September 22, 2011, p. 8). The resulting extended structure is shown in the bottom
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rightmost drawing (at end of vertical arrow labeled “Modification”). This same
extended surface [1] is shown in Panduit’s figure as serving as the upper surface
limitation [4] (same bottom rightmost drawing at end of vertical arrow). The upper
surface is marked in Panduit’s figure with a filled circle. This surface is clearly the
same surface characterized by Panduit as the “first inner portion.”
The issue is whether claim 13 is reasonably interpreted to encompass a cable
exit trough in which limitations [1] and [4] are represented by the same structural
element. We answer this question in the negative. Claim 13, when referring to the
upper surface [4], expressly recites that the “the cable exit trough further includes
an upper surface, wherein the upper surface curves upward relative to the base of
the lateral trough section and defines a top boundary of at least a portion of a cable
path.” (Emphasis added.) The phrase “further includes” unambiguously indicates
that the “upper surface” is an additional feature to those already recited in the
claim, particularly the first inner portion [1].
As illustrated in Figure 1 of the ‘242 patent depicted above, upper surface
126 is a separate feature from the inner projecting member 106 (“first inner
portion”). (See also Patent Owner’s Response Requesting Reopening Prosecution,
p. 10, annotated Figures 1 and 5, August 23, 2011). Thus, reading the claim in
view of the ‘242 patent specification, the skilled worker would have reasonably
interpreted the upper surface [4] to be a separate structural feature from inner
portion [1].

Upper and bottom surfaces
In addition to this, the surface proposed by Panduit to be an “upper surface”
[4] is not an upper surface. Limitation [3] provides a “curved bottom surface”
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which extends between the first inner portion and the second outer portion.
Panduit, in the figure reproduced above, shows a bottom surface contributed by
Figure 7 of Zetena (top left drawing; curved surface on the right of the strain
reliever). Panduit depicts “the upper surface” [4], shown in the bottom right
drawing, as being contiguous with the “bottom surface.” It is not apparent how
such surface is upper when it is part of the bottom surface of Panduit’s proposed
cable exit trough. Such interpretation is not reasonable when the claim term is
read in light of the claim as a whole and the ‘242 patent specification.

Cable exit trough is not taught by the combination of Zetena and Long
There is some dispute in this proceeding about the meaning of the term
trough. However, each of the proposed definitions defines the trough to be a
channel (Third Party Requester’s Comments on Patentee’s Response to Requesting
Reopening Prosecution, September 22, 2011, p. 13). A channel would be
understood to be a furrow with upstanding sides. Thus, a cable exit trough would
be reasonably interpreted by one of ordinary skill in the art to require a trough-like
structure, i.e., a channel with upstanding sides. In the rejection of claims 13-16,
18, 33, and 34, Panduit did not provide a reason as to why upstanding sides would
result or otherwise be obvious from the combination of Zetena and Long. Panduit
further cited the Scheuermann patent for its teaching of curved side walls in the
proposed rejection of claim 17. However, Scheuermann was not relied upon in the
rejection of claims 13-16, 18, 33, and 34, which would be reasonably interpreted to
require a cable exit trough with upstanding walls. Thus, for this independent
reason, we also find the proposed rejection deficient.

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Claim 17
Panduit proposed a third rejection based on Zetena and Long, additionally
citing Scheuermann for its teaching of a trough with curved side walls. This
rejection was applied to claim 17, which depends and incorporates all the
limitations of claim 13. We have affirmed the Examiner’s determination not to
adopt the rejection of claim 13 over Zetena and Long. Panduit did not rely on
Scheuermann for any of the features we found absent from the combination of
Zetena and Long. Consequently, we affirm the Examiner’s determination with
respect to the patentability of claim 17, as well.

SUMMARY
The Examiner’s determination not to adopt Rejections 1-3 is affirmed.

4. REJECTION OVER LONG
Findings of Fact
1. In the previous Decision, we reversed that Examiner’s decision not to
adopt certain rejections proposed by Panduit. In accordance with 37 C.F.R.
§ 41.77(b), we designated the reversal of these rejections as new ground of
rejections. (Decision 50.)
2. A new ground of rejection has the effect of permitting the Patent Owner
to “exercise one of the following two options with respect to the new ground of
rejection”: (1) reopen prosecution; and (2) request rehearing upon the same record.
(37 C.F.R. § 41.77(b); Decision 50.)
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3. ADC, the Patent Owner, chose to reopen prosecution and amend the
claims to address the rejections. (Patent Owner’s Response Requesting Reopening
of Prosecution, August 23, 2011.)
4. In response to ADC’s request to reopen prosecution, Panduit filed
comments under 37 C.F.R. § 41.77(c). (Third Party Requester’s Comments on
Patentee’s Response to Requesting Reopening Prosecution, September 22, 2011.)
Such comments “must be limited to the issues raised by the Board's opinion
reflecting its decision and the owner's response.” 37 C.F.R. § 41.77(c).
5. In their comments under 37 C.F.R. § 41.77(c), Panduit requested
reconsideration of the rejection over Long (Third Party Requester’s Comments on
Patentee’s Response to Requesting Reopening Prosecution, September 22, 2011, p.
12).
6. The Examiner’s decision not to adopt the rejection over Long was
affirmed (Rejection 5) and it was not designated a new ground of rejection
(Decision 36-38).
7. Panduit stated:
In the June 22 Decision on Appeal, the Board refused to consider
Panduit's arguments with respect to Long because, based on a
definition of "trough," the Board determined that Long failed to
disclose a "cable exit trough." Decision on Appeal, pp. 37-38. The
Board also failed to consider Panduit's FIGS. A-D.
(Third Party Requester’s Comments on Patentee’s Response to Requesting
Reopening Prosecution, September 22, 2011, p. 12.)
8. Panduit provided an alternative definition of the term “trough” and a
declaration said to “establish[ ] that FIGS. A-D in the Declaration (which are the
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same figures Panduit has relied on throughout this reexamination) are a
representation of the structure disclosed in Long.” (Id. at p. 13.)
9. Panduit also stated: “In view of the more relevant definition of 'cable
trough,' and the submitted Declaration, as shown in the following claim chart,
Long discloses each and every feature of claims 13-18, 26-28, and 31-35.” (Id.)
10. The Examiner determined that Panduit’s comments with respect to the
Long rejection were not a proper response under 37 C.F.R. § 41.77(c). The
Examiner stated on page 14 of the Examiner’s Determination Pursuant to 37
C.F.R. § 41.77(d):
11. “First, this response does not pertain to the new grounds of rejection
raised by the BPAI decision under 37 CFR 41. 77(b) but instead pertains to the
BPAI's decision to affirm the prior decision of the examiner.”
12. “Second, this response by the requester is not responsive to the
amendments and new evidence filed by the patent owner as part of the patent
owner's request for reopening of prosecution. Since the BPAI has already upheld
the examiner's decision not to adopt the rejection of claims 6-8, 11-16 and 18 under
35 USC 102(e) based upon the Long reference, it cannot be argued that Long now
anticipates these newly-amended and newly-added claims which are narrower in
scope than the version of these claims addressed in the BPAI decision.”
13. “Third, the BPAI decision with respect to the proposed rejection under
35 USC 102(e) based upon the Long reference is binding upon the examiner. See
37 CFR 41.77(d).”

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Analysis
As the Examiner did not consider Panduit’s comments and new evidence on
the Long rejection, it is not before us upon review because the Examiner’s action
does not involve the merits of the rejection and is thus not under our jurisdiction to
review. 35 U.S.C. § 134. 5 Panduit’s relief was by way of a petition requesting
that the Examiner reconsider Long rejection in view of the new evidence.

SUMMARY OF DISPOSITION OF NEW GROUNDS
In view of the claim amendments, the Examiner reconsidered the
patentability of the claims with respect to the new grounds of rejection, and
deemed the rejections overcome for certain claims. We adopt the Examiner’s
determinations, and in accordance with 37 C.F.R. § 41.77(f), we withdraw those
portions of the ‘3297 Decision that relate to the overcome rejections. The
following is a summary of the maintained and overcome rejections (for
completeness, we also included the maintained rejections; the numbering of the
rejections is in accordance with how they were numbered in the ‘3297 Decision):

Rejection 4 (listed as new ground #1 on page 3 of Examiner’s Determination):
• rejection of claims 1, 3, and 4 is maintained; rejection is overcome for
claims 13-18.

5 35 U.S.C. 134(c): “THIRD-PARTY.- A third-party requester in an inter partes
proceeding may appeal to the Board of Patent Appeals and Interferences from the
final decision of the primary examiner favorable to the patentability of any original
or proposed amended or new claim of a patent, having once paid the fee for such
appeal.”
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Rejection 6 (listed as new ground #2 on page 3 of Examiner’s Determination):
• rejection of claims 6-12 is maintained; rejection is overcome for claims 13-
18.

Rejection 7 (listed as new ground #3 on page 3 of Examiner’s Determination):
• rejection of claims 1, 4, and 5 is maintained.

Rejection 8 (listed as new ground #4 on page 3 of Examiner’s Determination):
• rejection of claim 5 is maintained.

AFFIRMED GROUNDS OF REJECTION
In the ‘3297 Decision (summarized on p. 49):
Rejection 1 of claims 6, 7, 9-14, 16, and 18 was affirmed.
Rejection 2 of claims 8, 15, 17, 20, 21, and 24 was affirmed.
In view of the claim amendments, the Examiner made new patentability
determinations with respect to Rejections 1-2 set forth in the ‘3297 Decision. We
adopt the Examiner’s determinations, and in accordance with 37 C.F.R. § 41.77(f),
we withdraw those portions of the ‘3297 Decision that relate to the overcome
rejections. The overcome rejections are summarized below (for completeness, we
also included the maintained rejections):

Rejection 1
• rejection of claims 6, 7, and 9 is maintained; rejection is overcome for
claims 13, 14, 16, and 18.

Appeal 2012-003436
Reexamination Control 95/000,415
Patent 6,925,242 B2

22

Rejection 2
• rejection of claims 8, 20, and 21 is maintained; rejection is overcome for
claims 15, 17, and 24.

TIME PERIOD
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See also 37 C.F.R. § 41.79.

AFFIRMED.
KMF

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