Ex Parte 7411129 et al

Patent Trial and Appeal Board

Jul 13, 2016

95000403 (P.T.A.B. Jul. 13, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,403 09/26/2008 7411129 018092/475678 3849
826 7590 07/13/2016
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
NGUYEN, TUAN H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/13/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CERRO WIRE, INC.
Requester and Respondent

v.

SOUTHWIRE COMPANY
Patent Owner and Appellant
____________

Appeal 2016-006081
Reexamination Control 95/000,403
Patent 7,411,129 B2
Technology Center 3900
____________

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

CHEN, Administrative Patent Judge.

DECISION ON EXAMINER’S DETERMINATION
UNDER 37 C.F.R. § 41.77(d)

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This is a decision under 37 C.F.R. § 41.77 (f) on the Examiner’s
determination under 37 C.F.R § 41.77(d) maintaining the rejections of
claims 1–8. We have jurisdiction under 35 U.S.C. §§ 6(b), 134, and 315.
We affirm.
In a prior Decision on Appeal, entered January 31, 2014, we reversed
the Examiner’s decision favorable to the patentability of claims 1–8 under
35 U.S.C. § 103(a) as proposed and appealed by Requester Cerro Wire Inc.
These rejections were entered as a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.77(b).
Patent Owner Southwire Company submitted a Request to reopen
prosecution before the Examiner under 37 C.F.R. § 41.77(b)(1), dated
February 28, 2014, accompanied by arguments and additional evidence,1 as
follows:
1. Declaration under 37 C.F.R. § 1.132 of Philip A. Sasse, dated
February 28, 2014 (“First Sasse Declaration”) (PO Ex. A).
2. Declaration under 37 C.F.R. § 1.132 of Philip A. Sasse, dated
June 4, 2010 (“Second Sasse Declaration”) (PO Ex. D).
3. Supplemental Declaration under 37 C.F.R. § 1.132 of Philip A.
Sasse, dated September 21, 2010 (“Supplemental Sasse Declaration”)
(PO Ex. E).
4. Second Supplemental Declaration under 37 C.F.R. § 1.132 of
Philip A. Sasse, dated December 22, 2010 (“Second Supplemental
Sasse Declaration”) (PO Ex. F).
5. Declaration under 37 C.F.R. § 1.132 of William N. Unertl,
Ph.D., dated February 25, 2011 (“Unertl Declaration”) (PO Ex. G).

1 This opinion only addresses arguments made by Patent Owner and
Requester. Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). We have considered the declaration evidence to the extent
raised by Patent Owner’s and Requester’s arguments.
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6. Declaration under 37 C.F.R. § 1.132 of Gary P. Kiel, dated
September 13, 2010 (“Kiel Declaration”) (PO Ex. H).
7. Declaration under 37 C.F.R. § 1.132 of Thomas C. Wright,
dated September 22, 2010 (“Wright Declaration”) (PO Ex. I).
8. Declaration under 37 C.F.R. § 1.132 of Randy D. Kummer,
dated January 14, 2013 (“Kummer Declaration”) (PO Ex. J).
9. Declaration under 37 C.F.R. § 1.132 of Brian McCardel, dated
January 14, 2013 (“McCardel Declaration”) (PO Ex. K).
10. Declaration under 37 C.F.R. § 1.132 of Ron Adams, dated
January 14, 2013 (“Adams Declaration”) (PO Ex. L).

In response to Patent Owner’s Request, Requester Cerro Wire Inc.
filed written comments to Patent Owner Southwire Company’s Request,
dated March 28, 2014.
The Examiner determined that claims 1–8 were unpatentable, and
issued a Determination under 37 C.F.R. § 41.77(d), dated December 30,
2014 (“Determination”).
Patent Owner contends that the Examiner’s Determination, in which
the claim rejections were maintained, is erroneous and has submitted Patent
Owner Comments, dated January 30, 2015 (“PO § 41.77(e) Comments”).
Requester contends that the Examiner’s Determination maintaining these
rejections was correct, and has submitted Requester Reply, dated March 2,
2015 (“Requester § 41.77(e) Reply”).
Independent claim 1 is exemplary, with disputed limitations in italics,
and underlining to show claim amendments relative to the original claims:
1. In a method of manufacturing a finished electrical
cable having a conductor core and a sheath of material
surrounding at least said conductor core and defining the
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outermost exterior surface of the finished cable, the
improvement comprising:
(a) introducing sufficient lubricant into said material
prior to the formation of said sheath to provide a reduced
coefficient of friction of said outermost exterior surface and
reduce the amount of force required to pull the cable during its
installation, in which said lubricant is of the type which either
migrates through, or permeates, said material to be available at
said outermost exterior surface of the cable at the time of its
installation; and
(b) thereafter extruding said so-lubricated material to
surround at least said conductor core.

Claims 1–8 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Mehta (US 6,080,489; June 27, 2000) and Hardin (US 5,074,640; Dec. 24,
1991).

ANALYSIS
The Examiner’s Rejection
The Examiner found that the combination of Mehta and Hardin
teaches the limitation “to provide a reduced coefficient of friction of said
outermost exterior surface and reduce the amount of force required to pull
the cable during its installation.” (Determination 7–8.) In particular, the
Examiner found that
Mehta clearly discloses a cable sheath in which “at least 0.5 part
by weight of a siloxane blend” and/or “up to about 30% by
weight” of lubricants including erucamide are incorporated in
order to reduce the coefficient of friction of an extruded article.
Mehta further teaches that when additional ingredients
(including erucamide at up to about 30% and/or a siloxane at
least 0.5 part by weight) are added, the surface properties
improve, including having reduced coefficient of friction
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(id.) and accordingly, “because the lubricants of Mehta are the same as those
disclosed as being advantageous in the ’129 patent, they are necessarily and
inherently of a type that provide the same physical properties” (id. at 8). We
agree with the Examiner’s determination.
First, Patent Owner argues that “Exhibit 1 under Exhibit D [Second
Sasse Declaration] is a summary of test data collected using a coefficient of
friction test, in which the coefficient of friction measurements of various
lubricants blended with plasticized PVC, and of different concentrations,
were recorded.” (PO § 41.77(e) Comments 6.) In particular, Patent Owner
argues that “[t]he test results prove that increased concentrations of a
lubricant added to the base polymer do not always result in a decreased
coefficient of friction” and “[t]his is shown, for example, by the fact that
when erucamide, polytetrafluoroethylene (Teflon), zinc sulfate and siloxane
lubricants were added to the plasticized PVC, the coefficient of friction of
the resulting lubricated blended polymer initially increased and certainly did
not decrease in accordance with the Examiner’s assumption.” (Id.)
Exhibit 1 of the Second Sasse Declaration with test results for the
PVC control sample and select lubricants (i.e., erucamide,
polytetrafluoroethylene (Teflon), zinc sulfate, and siloxane) is reproduced
below:
Material/wt% COF
CONTROL 0.495
Erucamide
14% 0.191
10% 0.216
0.5% 0.307
0.2% 0.366
0.1% 0.423
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0.05% 0.537
Teflon
10% 0.391
2% 0.404
0.5% 0.543
Zinc Sulfate
5%
2.5% 0.308
0.5% 0.357
0.3% 0.404
0.25% 0.496
Siloxane
10% 0.37
0.5% 0.547

(Second Sasse Decl. Ex. 1 (emphases added).) As indicated in Exhibit 1 of
the Second Sasse Declaration, the general trend for erucamide,
polytetrafluoroethylene (Teflon), zinc sulfate, and siloxane lubricants is that
increasing the weight percentage of the lubrication results in a lower
coefficient of friction (COF). Exhibit 1 of the Second Sasse Declaration
illustrates that only at the lowest concentration of lubricant did the COF
appear to be higher than the control. Without any information with respect
to standard deviation, we are unable to determine if the coefficient of friction
(COF) for erucamide, Teflon, zinc sulfate, or siloxane is truly greater than
the control sample or merely constitutes measurement error. Nonetheless,
even if these points are significantly different from the control, claim 1
recites “to provide a reduced coefficient of friction of said outermost exterior
surface and reduce the amount of force required to pull the cable during its
installation,” indicating that the claims require an amount of lubricant which
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meets the stated reduction in COF, which excludes amounts that do not
accomplish this function.
Second, Patent Owner argues that Exhibit 2 of the Second Sasse
Declaration “directly refutes the Examiner’s statement that ‘[i]t is clear that
lower coefficient of friction will always result in lower pulling force as long
as other physical properties of the cable (i.e. rigidity, abrasion resistance,
etc.) remain the same . . . .’” (PO § 41.77(e) Comments 7 (emphasis
omitted).) In particular, Patent Owner argues that “[t]hese results show that
while a blend of a PVC polymer containing erucyl stearamide, oleamide, and
erucamide lubricants have respectively increasing measured coefficient of
friction of 0.40, 0.42, and 0.43, the corresponding measured required pulling
forces have decreasing values of 81 lbs., 73 lbs., and 66 lbs., respectively.”
(Id. at 6–7.)
Exhibit 2 of the Second Sasse Declaration, which summarizes test
results for the PVC control sample and select lubricants (i.e., erucamide,
oleamide, and erucyl stearamide), is reproduced below:
Lubricant Dynisco CoF Tugger Pull Force (lbs.)
Control 0.51 97
Erucamide 0.43 66
Oleamide 0.42 73
Erucyl Stearamide 0.4 81

However, Exhibit 2 does not necessary demonstrate lack of a correlation
between coefficient of friction and pulling force. Instead, Exhibit 2
demonstrates the lack of a correlation between coefficient of friction and
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pulling force among different lubricants. Moreover, each of the selected
lubricants resulted in a COF and pulling force that is lower than the control.
Third, Patent Owner argues that “Exhibit 3 under Exhibit D [Second
Sasse Declaration] provides data concerning pulling force for sample wires
jacketed with PVC having increasing amounts of a lubricant, specifically,
Oleamide” and “demonstrates that there is not necessarily a correlation
between the measured coefficient of friction of the material from which a
wire jacket is formed and the measured pulling force required to install the
jacketed wire.” (PO § 41.77(e) Comments 7.) In particular, Patent Owner
argues:
With respect to a wire jacketed with PVC with no added lubricant
(i.e., the control sample) that has a required pulling force of 31.4
lbs, the addition of 0.1% of oleamide lubricant increased the
required pulling force to 33.1 lbs, rather than decreasing it, as
assumed by the Examiner. In addition, the increase of oleamide
lubricant from 0% to 0.2% resulted in an increase of the required
pulling force over the control sample to 32.9 lbs. It is also
significant that when the amount of lubricant increased from
0.8% to 2.0%, i.e., nearly doubling the lubricant concentration,
the pulling force actually increased from 21.6 lbs. to 23.8 lbs.,
rather than decreasing as assumed by the Examiner. Similarly,
when the amount of lubricant increased from 4.0% to 6.0%, the
pulling force again increased from 21.4 lbs. to 24.8 lbs., rather
than decreasing as expected by the Examiner.
(Id.)
Exhibit 3 of the Second Sasse Declaration with test results for the
PVC control sample and oleamide lubricant is reproduced below:
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Sample CoF Pulling force (lbs.)
Control 0.500 31.4

Oleamide
0.1% 0.487 33.1
0.2% 0.454 32.9
0.4% 0.429 34.2*
0.8% 0.324 21.6
2.0% 0.318 23.8
4.0% 0.327 21.4
6.0% 0.284 24.8
8.0% 0.282 15.1

* suspect reading

(Second Sasse Decl. Ex. 3.) As indicted in Exhibit 3 of the Second Sasse
Declaration, the general trend for oleamide is that increasing the weight
percentage of the lubricant results in a lower coefficient of friction (COF)
and a lower pulling force, beginning at 0.8%. Again, without any
information with respect to standard deviation, we are unable to determine if
the reported decrease in coefficient of friction or the increase in pulling force
are truly different than the control sample or merely constitutes
measurement error. Additionally, Patent Owner has not provided any
explanation as to why the pulling force for 0.4% oleamide is considered a
“suspect reading,” while other data points (e.g., 0.1 % and 0.2% oleamide)
are not.
Fourth, Patent Owner argues that “Exhibit E [Supplemental Sasse
Declaration] contains data demonstrating that there is a non-predictable
relationship and a lack of correlation between variations in the coefficient of
friction of a lubricant blended polymer material and the force required to
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pull, through building passageways, a wire jacketed with that same polymer
material.” (PO § 41.77(e) Comments 7.) In particular, Patent Owner argues
that “Exhibit E demonstrates that in a wire jacketed with PVC that is
blended with the lubricant polytetrafluoroethylene (PTFE) micropowder, the
pulling force increased in at least one instance when the average coefficient
of friction decreased.” (Id.)
However, Patent Owner has failed to explain how Mr. Sasse’s
Supplemental Declarations persuasively established “a lack of correlation
between variations in the coefficient of friction of a lubricant blended
polymer material and the force required to pull,” when the basis for the
rejection of claim 1 is the siloxane blend of Mehta.
Fifth, Patent Owner argues
this evidence [Unertl Declaration] is clearly relevant because it
refutes the Examiner’s erroneous assumption “that lower
coefficient of friction will always result in lower pulling force as
long as other physical properties of the cable (i.e. rigidity,
abrasion resistance, etc.) remain the same by the materials
modifications required to reduce the coefficient of friction.”
(PO § 41.77(e) Comments 13–14.)
Paragraph 13 of the Unertl Declaration states that:
As discussed below, the measurements reported by Sasse not
only fail to meet these reporting criteria but are also used to make
invalid conclusions about correlations with pull-force data.
Additionally, the test may not be relevant for the installation of
cables because the test conditions are far from those encountered
during sliding. Furthermore, the sled samples tested by Sasse
were prepared by molding, whereas the sheathing on the cables
were formed by an extrusion process and will have different
surface properties. This is a second reason the CoF determined
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using the sled test cannot be assumed to be reliable estimates for
the actual cable sheathing.
(Unertl Decl. ¶ 13 (second emphasis added).) However, Dr. Unertl’s
statement that “the test may not be relevant for the installation of cables
because the test conditions” was made in the context of alleged deficiencies
with respect to the testing methodology in the Sasse Declarations, rather
than a broad statement encompassing the lack of a correlation between
coefficient of friction and pulling force of a cable under all circumstances.
Accordingly, the Sasse Declarations and the Unertl Declaration do not
persuasively establish nonobviousness of the claimed subject matter,
including the Examiner’s finding that the limitation “to provide a reduced
coefficient of friction of said outermost exterior surface and reduce the
amount of force required to pull the cable during its installation” is
inherently present in Mehta.
Commercial Success and Evidence of Copying
The Examiner found that the McCardel Declaration (PO Ex. K) and
Adams Declaration (PO Ex. L) were insufficient to establish non-
obviousness of the claimed subject. (Determination 11.) In particular, the
Examiner found that:
[w]ith respect to the assertions of . . . commercial success . . . that
there is no nexus established between the claimed invention and
the commercial success, that the Patent Owner has failed to
establish the essential nexus and because it has failed to show
whether any of its commercial products embody the subject
matter recited in any of the claims of the ’129 patent that are
currently at issue.
(Id.) Requester agrees and further argues that with respect to Patent
Owner’s declarations “substantial weight need not be given to unsupported
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conclusory statements.” (See Requester § 41.77(e) Reply 11.) We agree
with the Examiner’s determination.
First, Patent Owner argues that “the declaration of Gary P. Kiel
(Exhibit H) illustrates that it was the reduction in pulling force caused by the
self-lubricated nature of the Simpull cable that convinced him to use the
product.” (PO § 41.77(e) Comments 15.)
A relevant portion of the Kiel Declaration states:
We were also told that with this new Southwire [NoLube
Simpull] cable, it would not be necessary to add any external
lubricant in order to install the cable to accomplish the
installation. Having been required for decades to use the
external soaps during cable installation, and during that time
never presented with any successful alternatives that eliminated
such requirement, we simply did not believe that the Southwire
cable would demonstrate the properties claimed. However,
when we purchased the cable and successfully installed the cable
in building passageways without any damage to the cable, and
without the use of any external lubricant, we were convinced.
This was the solution for which we had been looking for a long
time.
(Kiel Decl. ¶ 4 (emphases added).) Although Mr. Kiel states that “we
purchased the cable and successfully installed the cable in building
passageways without any damage to the cable, and without the use of any
external lubricant,” Patent Owner has not persuasively demonstrated a
“nexus” between the purposed commercial success and claimed invention
because “the asserted commercial success of the product must be due to the
merits of the claimed invention beyond what was readily available in the
prior art.” J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571
(Fed. Cir. 1997). As found by the Examiner, Mehta explains that the
“siloxane blend (B) . . . added to the thermoplastic resin (A) . . . serves as a
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surface modifier” such that “the resulting extrudate has a reduced coefficient
of friction, consistent coefficient of friction over time, and improved
abrasion resistance over films not containing siloxane blend (B)” (col. 4,
ll. 22–28) and thus, would have been reasonably be expected “to provide a
reduced coefficient of friction of said outermost exterior surface and reduce
the amount of force required to pull the cable during its installation.”
Therefore, while there may have been no available commercial product,
Mehta clearly taught a solution to the same problem asserted by Patent
Owner.
Second, Patent Owner argues that “[t]he declaration made by Brian
McCardel (Exhibit K) presents evidence that the Patent Owner has increased
its market share in the THHN market during the economic downturn of
2008–2009, attributing the increase market share to the incorporation of the
features of Claims 1–8 into the commercial THHN product sold by Patent
Owner” (PO § 41.77(e) Comments 15–16) and “competitors entered the
marketplace attempting to copy the success of the patented invention” (id. at
16).
With respect to Patent Owner’s purported evidence of commercial
success, paragraph 5 of the McCardel Declaration states the following:
In 2008, the overall housing market experienced a serious
decline as part of the overall recession in the U.S. and
commercial construction starts dropped by over 17% from the
year before, as reported by McGraw Hill Construction. In 2009,
the drop continued at over 43% as also reported by McGraw Hill
Construction. During the same time, Southwire’s market share
of SIMpull copper THHN Feeder Sizes (1 - 1000) actually
increased during this time period at least an estimated 33% to
50% over 2007. In view of the drop in the construction market,
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I attribute that increase to the patented features of that cable, as
I understand they are set forth in the claims of the patent at issue
that include a silicone-based lubricant.
(McCardel Decl. ¶ 5 (emphasis added).) Although Patent Owner articulates
a market share increase from 33% to 50% in 2007, Mr. McCardel only
provides a general allegation, without supporting evidence, to support the
statement “I attribute that increase to the patented features of that cable, as I
understand they are set forth in the claims of the patent at issue that include a
silicone-based lubricant.” Thus, Mr. McCardel’s statements from
paragraph 5 of the McCardel Declaration lack persuasive factual support
because the McCardel Declaration does not cite to sufficient corroborating
evidence. See In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992)
(“[D]eclarations themselves offer only opinion evidence which has little
value without factual support.”). Accordingly, Patent Owner has provided
insufficient evidence to establish a “nexus” between the increase in market
share of the Southwire SIMpull THHN® products and the claimed
invention.
With respect to Patent Owner’s purported evidence of copying,
paragraphs 7 and 8 of the McCardel Declaration state the following:
I recall Cerro entering the market with competitive cable
around spring of 2008, about a year after Southwire’s product
was introduced. At the time, they called it LaborSaver. Cerro
later changed the name to SLiPWire, but it is my understanding
that the product was the same. I am attaching a printout from
Cerro’s website where it describes its SLiPWirc products as
cable with self-lubricating polymer jacket such that no pulling
lube is required for cable installation.
(McCardel Decl. ¶ 7.)
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I recall Encore entering the market with its competitive
cable around the latter half of 2009, well after Southwire’s
product was introduced. I am attaching a printout from Encore’s
website where it describes its SuperSlick Elite cable as “a great
alternative to eliminate the need for lube” with a “Slick Nylon
jacket for easy pulling.”
(Id. ¶ 8.) Although Mr. McCardel cites to the websites of Cerro and Encore,
Patent Owner has provided insufficient evidence that any product
similarities are the result of copying, rather than independent product
development based on studying the prior art. Moreover, the websites of
Cerro or Encore do not corroborate the purported release dates of
competitive products manufactured by either Cerro or Encore.
Therefore, Patent Owner’s evidence of commercial success and
evidence of copying does not persuasively establish the nonobviousness of
the claimed subject matter.
Long-felt Need Without Solution
The Examiner found that
since the prior art relied on in these proceedings makes it clear
that incorporation of lubricant into the cable jacket (even some
of the same lubricants taught in the ’129 patent) in order to
reduce the installation pulling force was known at least as early
as 1969 (e.g., Decoste at p. 70) there is no longer a long-felt need
or problem to be solved.
(Determination 11–12.) Requester agrees and further argues that with
respect to expert declarations “substantial weight need not be given to
unsupported conclusory statements.” (See Requester § 41.77(e) Reply 11.)
We agree with the Examiner’s determination.
First, Patent Owner argues “the Examiner incorrectly and
impermissibly relies on a reference (DeCoste) that is not included in these
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rejections” and “[b]ecause there are no rejections based on DeCoste before
the Examiner at this time, it is improper for the Examiner to base its position
on that reference.” (PO Comment § 41.77(e) 17.)
Our Decision, at page 17, which affirmed the Examiner’s decision to
reject claims 1–5 under 35 U.S.C. § 103(a) as unpatentable over McAmis
and DeCoste, states the following:
DeCoste explains that prewiring of new construction for
telephone service and the expansion of existing facilities has
“created a need for low-friction vinyl wire coatings,” which
provides the characteristic of “reducing the pulling force required
for placing the wire, smaller lower-strength wire structures may
be used with a considerable savings in cost.” (P. 67, col. 1.) In
the “Experimental” section of DeCoste, plastic compounds are
formulated to study frictional properties, using a base PVC resin
(p. 67, table 1) with a lubricant (e.g., stearamide, mineral oil
(p. 68, table 2)). DeCoste also explains that “[v]inyl plastics
generally show some decrease in friction with time” such that
“[c]oefficients measured after 5-6 months of shelf aging were
significantly lower than those measured after 1-2 weeks” due to
“[l]ubricants [that] may migrate to the surface to alter the surface
characteristics.” (P. 69, col. 1.)
Accordingly, DeCoste is a reference of record in the current inter partes
proceeding.
Second, Patent Owner argues that “DeCoste does not solve the
pertinent problem solved by the ’129 patent, i.e., reducing pulling force
necessary to install the cable without the use of external lubricant or ‘soap’”
but “[i]nstead, DeCoste is concerned with reducing coefficient of friction in
a cable generally” and “there remained a long-felt need even in view of the
disclosure of DeCoste.” (PO Comment § 41.77(e) 17 (emphasis omitted).)
Contrary to Patent Owner’s arguments, DeCoste offers a solution in which a
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lubricant (e.g. stearamide or mineral oil) (p. 68, table 2) is incorporated into
a base PVC resin (p. 67, table 1), such that the lubricant migrates to the
surface (p. 69, col. 1).
Last, Patent Owner argues that “the Examiner’s argument is clearly
rebutted by Patent Owner’s evidence which demonstrates that purchasers
were skeptical of using a wire without additional lubricant or ‘soap’ at the
time of invention of the ’129 patent.” (PO Comment § 41.77(e) 17.) In
particular, Patent Owner argues
In addition to Mr. Keil’s statements . . . are the statements of Mr.
Aaron Hicks and Mr. Clete Meyers, respective project manager
and Labor Superintendent of Dynalectric, Mr. Morris Lindsay
and Mr. Trevor Rorison, electricians with Conaway Electric, and
Mr. John Setter, senior project manager with Broadway Electric,
describing the value of the patented invention, Simpull, over the
external application “soap” process long plaguing the industry
and points to the Kiel Declaration and the Wright Declaration. (Id. at 17–
18.) Similarly, Patent Owner argues “[p]aragraphs 4, 5 and 6 of Exhibit A
[First Sasse Declaration] are statements of fact based on the experience of
Mr. Sasse in the field of wire manufacturing and installation and show a
long-felt need in the industry for the invention of the ’129 patent.”
(Id. at 11.)
Although Patent Owner’s evidence establishes that there was an art-
recognized problem of finding an alternative solution to the current industry
trend of applying a pulling lubricant (e.g., “soap”) to an exterior surface of a
cable, so as to reduce the installation pulling force, such evidence does not
persuasively establish that a long-felt need without solution existed. Newell
Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce
another supplied the key element, there was no long-felt need or, indeed, a
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problem to be solved . . . .”). As discussed previously, DeCoste offers a
solution in which a lubricant (e.g., stearamide or mineral oil) (p. 68, table 2)
is incorporated into a base PVC resin (p. 67, table 1), such that the lubricant
migrates to the surface (p. 69, col. 1). Furthermore, the “Background of the
Invention” section of the ’129 patent acknowledges the following:
In one solution, the core of the cable passes via a first
extruder which applies a conventional sheath thereto i.e., a jacket
and/or insulation, often made of polyethylene. The sheathed
core then passes through a second extruder which applies a
lubricant layer thereto, such as an alloy of silicone resin and
polyethylene. The cable lubricated in that way then passes in
conventional manner through a cooling vessel.
(Col. 1, ll. 29–36 (emphasis added).)
Thus, while a commercial embodiment might not have been available,
DeCoste provides an express disclosure of a lubricant migrating to the cable
exterior surface, the same property which Patent Owner has relied upon to
establish both commercial success and a solution to a long-felt need. While
we acknowledge praise by customers, it is not sufficient to establish the
nonobviousness of the claimed invention because the praised feature appears
to have been taught by DeCoste, and accordingly, Patent Owner has not
demonstrated a nexus. See Rambus Inc. v. Rea, 731 F.3d. 1248, 1257–58
(Fed. Cir. 2013).
Therefore, Patent Owner’s evidence that a long-felt need without
solution does not persuasively establish the nonobviousness of the claimed
subject matter.
Accordingly, we agree with the Examiner that the rejection of
claims 1–8 under 35 U.S.C. § 103(a) as unpatentable over Mehta and Hardin
should be maintained.
Appeal 2016-006081
Reexamination Control 95/000,403
Patent 7,411,129 B2

19

DECISION
We affirm the Examiner’s decision to maintain the rejection of
claims 1–8 under 35 U.S.C. § 103(a) over Mehta and Hardin.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
This is final decision. Parties to the proceeding seeking judicial review of
the decision must comply with the notice and service requirements of
37 C.F.R. § 90.2.

AFFIRMED

PATENT OWNER:

Alston & Bird LLP
Bank of America Plaza
101 South Tryon Street, Suite 4000
Charlotte, NC 28280-4000

THIRD PARTY REQUESTER:

Patent Group
DLA PIPER US LLP
203 N. LaSalle Street
Suite 1900
Chicago, IL 60601-1293