SOUTHWIRE COMPANY et al.

Patent Trials and Appeals Board

Mar 30, 2022

2022000193 (P.T.A.B. Mar. 30, 2022)

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 03/30/2022 ALSTON & BIRD LLP ONE SOUTH AT THE PLAZA 101 SOUTH TRYON STREET SUITE 4000 CHARLOTTE, NC 28280-4000 EXAMINER HUGHES, DEANDRA M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/30/2022 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 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 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) 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 3, 4, 6, 7, and 9-12. We have jurisdiction under 35 U.S.C. §§ 6(b), 134, and 315. We AFFIRM. Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 2 STATEMENT OF THE CASE In a prior Rehearing Decision, entered July 1, 2020, we maintained the rejections of independent claims 3 and 9. These rejections were entered as a new ground of rejection pursuant to 37 C.F.R. § 41.77(b), as follows: 1. Claims 3, 4, 6, 7, and 9-12 are rejected under 35 U.S.C. § 102(b) as being anticipated by Mehta. 2. Claims 3, 4, 6, 7, and 9-12 are rejected under 35 U.S.C. § 102(b) as being anticipated by Hauenstein. Patent Owner Southwire Company submitted a Request to reopen prosecution before the Examiner under 37 C.F.R. § 41.77(b)(1), dated August 3, 2020, accompanied by additional arguments and the following evidence: (i) Declaration under 37 C.F.R. § 1.132 of Phillip A. Sasse, dated August 3, 2020 (“August 2020 Sasse Declaration”); (ii) Declaration under 37 C.F.R. § 1.132, by Phillip A. Sasse, dated June 4, 2010 (“June 2010 Sasse Declaration”); and (iii) Supplemental Declaration under 37 C.F.R. § 1.132 of Phillip A. Sasse, dated September 21, 2010 (“September 2010 Sasse Declaration”), which includes Declaration under 37 C.F.R. § 1.132 of Stephen J. Clarson, Ph.D., dated November 8, 2016, as an appendix (“Clarson Declaration”). In response to Patent Owner’s Request, Requester Cerro Wire filed written comments, dated September 3, 2020, accompanied by the following evidence: (iv) Declaration of Kevin L. Dalrymple, under 37 C.F.R. § 1.132, dated March 15, 2018; and (v) Declaration of William N. Unertl, Ph.D., under 37 C.F.R. § 1.132, dated February 25, 2011. Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 3 The Examiner determined that claims 3, 4, 6, 7, and 9-12 were unpatentable and issued a Determination under 37 C.F.R. § 41.77(d), dated February 4, 2021 (“Determination”). In particular, the Examiner determined that claims 3, 4, 6, 7, and 9-12 were anticipated by Hauenstein, claims 3, 4, and 9-12 were anticipated by Mehta, but claims 6 and 7 were patentable over Mehta. Patent Owner contends that the Examiner’s Determination maintaining these rejections was erroneous for various reasons, and has submitted Patent Owner Comments on the Examiner’s Determination, dated March 4, 2021 (“PO Comments”). Requester contends that the Examiner’s Determination not maintaining the rejection of claims 6 and 7 as anticipated by Hauenstein is erroneous for various reasons, and has submitted Requester Comments on the Examiner’s Determination, dated March 10, 2021. Patent Owner has summited a Patent Owner Reply, dated April 5, 2021 and Requester has submitted a Requester Reply, dated April 2, 2021. CLAIMED SUBJECT MATTER Claims 3 and 9, reproduced below, are illustrative of the claimed subject matter, with disputed limitations in italics: 3. An improved process of manufacturing a finished power cable assembly of the type comprising a central conductor and a surrounding sheath of at least one outer layer of nylon material defining the exterior surface of the finished cable, said process comprising: (a) combining a silicone based pulling lubricant with said nylon material prior to the formation of said outer layer of said sheath, the silicone based pulling lubricant being of a Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 4 concentration sufficient to reduce the required installation pulling force of the cable during its installation through building passageways in rafters or joists or conduit bends, and further 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 through building passageways in rafters or joists or conduit bends; and (b) extruding said combined silicone based pulling lubricant and said nylon material to surround said central conductor with at least said outer layer. 9. In a power cable of the type comprising a conductor and a sheath surrounding said conductor, in which the sheath has at least its exterior portion formed of nylon material, an improvement in which a silicone based pulling lubricant, is introduced in said material during the manufacture of the cable but prior to the formation of said sheath, permeates throughout at least said exterior portion of the sheath to be available at the exterior surface of said sheath as said 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 said cable through building passageways in rafters or joists or conduit bends. REFERENCES Name Reference Date Hauenstein et al. US 5,708,084 Jan. 13, 1998 Mehta US 6,080,489 June 27, 2000 Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 5 ANALYSIS Hauenstein The Examiner found that claims 3, 4, 6, 7, and 9-12 were anticipated by Hauenstein, including the limitation “the silicone based pulling lubricant being of a concentration sufficient to reduce the required installation pulling force of the cable during its installation through building passageways in rafters or joists or conduit bends,” with a citation to In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (Where “all process limitations . . . are expressly disclosed by [the prior art reference], except for the functionally expressed [limitation at issue],” the PTO can require an applicant “to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”). (Determination 16.) The Examiner determined that Patent Owner’s declaration evidence did not adequately rebut the anticipation finding for the following reasons: (i) “this evidence [August 2020 Sasse Declaration] does not address whether wire or cable extrusion using a thermoplastic resin (e.g., nylon) with up to 10 weight percent polysiloxane, such that the polysiloxane migrates to the surface[] increases, maintains, or reduces the surface coefficient of friction of the wire or cable extrusion” (id. at 19); (ii) “Exhibit 1 [of the June 2010 Sasse Declaration] is directed to the combination of siloxane and plasticized PVC rather than the combination of polysiloxane lubricant with nylon” (id. at 20), “Exhibit 2 is directed to the combination of various lubricants, none of which are siloxane, and blended plasticized PVC, rather than the combination of polysiloxane lubricant with nylon,” and “Exhibit 3 is directed to the combination of either one of two lubricants (i.e., Oleamide and Teflon) Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 6 blended with plasticized PVC rather than the combination of polysiloxane lubricant with nylon” (id. at 21), and (iii) “Exhibits A-D are directed to the combination of a plasticized PVC polymer material blended with varying percentages of PTFE micropowder lubricant, rather than the combination of polysiloxane lubricant with nylon, which is combination disclosed in Hauenstein” (id. at 22). We agree with the Examiner’s determination that claims 3, 4, 6, 7, and 9-12 are anticipated by Hauenstein. With respect to a general embodiment, Hauenstein explains the following: The compositions of the present invention are prepared by thoroughly dispersing at least 1 part by weight of diorganopolysiloxane (B) in 100 parts by weight of thermoplastic (A). Higher amounts of component (B) (up to 50 parts) can be used to form a masterbatch of the composition for further processing. For finished products, it is preferred that about 1 to about 5 parts by weight of component (B) are used for each 100 parts by weight of component (A). More preferably, about 1 to 4 parts of (B), and most preferably about 1 to 3 parts, per 100 parts by weight of (A) are used. . . . Similarly, at levels higher than about 10 parts of (B) per 100 parts by weight of (A), the surface quality of the cooled thermoplastic again begins to deteriorate. Furthermore, when more than about 10 parts of (B) per 100 parts by weight of (A) is used, an excessive amount of siloxane is observed on the surface of the extrudate which adversely impacts such properties as printability and sealability. (Col. 3, ll. 24-45 (emphasis added).) Moreover, Hauenstein explains that “[t]he thermoplastic resins that constitute component (A) of the invention are preferably high density polyolefins, but can be other thermoplastic resins as well, such as nylons.” (Col. 1, ll. 33-35 (emphasis added).) With respect to additional ingredients to the nylon and diorganopolysiloxane, Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 7 Hauenstein explains that “[i]n addition to the above components, compositions of the present invention may also contain up to about 1 percent by weight of each of the following: fillers, cure agents, lubricants, u.v. stabilizers, antioxidants, antiblock agents, catalyst stabilizers and other process aids.” (Col. 3, ll. 60-65 (emphasis added).) Accordingly, in a single embodiment, Hauenstein explains that a “finished product[]” is composed of 10 parts by weight of diorganopolysiloxane (B) in 100 parts by weight of nylon (A), and optional additional ingredients. With respect to the “finished product[],” Hauenstein explains that “[t]his method is particularly applicable to the production of . . . wire, or cable extrusion.” (Col. 4, ll. 33-34 (emphasis added).) Moreover, with respect to surface properties, Hauenstein explains the following: The modified thermoplastic resins of the present invention show a variety of improved properties. For example it is believed by the inventor that the interactive groups of the polysiloxane are attracted to the metal die of the extruder or injection molding apparatus, causing the polysiloxane to migrate to the surface of the thermoplastic. The migration of the polysiloxane to the surface of the thermoplastic gives the surface of the thermoplastic improved properties, such as improved hydrophobicity and pourability. (Col. 5, ll. 6-16 (emphases added).) In addition, Hauenstein also provides several examples “to further illustrate the compositions and method of this invention, but are not to be construed as limiting the invention, which is delineated in the appended claims.” (Col. 5, ll. 38-40.) In particular, for “Example 1,” Hauenstein explains the following: A hydroxyl terminated polydimethylsiloxane . . . was compounded in HDPE, PET and Nylon then injection molded Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 8 into panels and tested for hydrophobicity. (Col. 6, ll. 14-17.) For the PET and Nylon examples, sufficient siloxane was added to same polymers so that the total concentration of silicone was about 10% by weight. These “masterbatch” compositions were extruded through a strand die and chopped into pellets upon cooling in a water bath. (Col. 6, ll. 41-45.) The masterbatch pellets made according to the procedure above were then recompounded on the Haake Rheocord™ 90 system twin-screw extruder, this time adding sufficient thermoplastic resin to make compositions having 0.5%, 1.0% and 2.5% by weight of silicone. This procedure was repeated for each of the thermoplastic resins, HDPE, PET and Nylon. This resulted in pellets having 0.5%, 1.0% and 2.5% by weight of silicone for each thermoplastic resin, PET and Nylon, and 1.0% of silicone for HDPE. These compositions were then used to injection mold the panels ultimately tested for hydrophobicity. (Col. 6, ll. 46-57.) Thus, because the thermoplastic resin of Hauenstein includes: (i) component (A) of nylon; (ii) component (B) of polysiloxane with “10 parts of (B) per 100 parts by weight of (A)”; (iii) applicability to cable extrusion; (iv) optional additional ingredients; and (v) “migration of the polysiloxane to the surface of the thermoplastic” with “improved properties,” Hauenstein discloses all the limitations of independent claim 3, except the limitation “the silicone based pulling lubricant being of a concentration sufficient to reduce the required installation pulling force of the cable during its installation through building passageways in rafters or joists or conduit bends.” However, because Hauenstein describes cable extrusion using a Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 9 thermoplastic resin (e.g., nylon) with up to 10 weight percent polysiloxane, such that the polysiloxane migrates to the surface, a prima facie case of anticipation has been established. Best, 562 F.2d at 1254-55 (Where “all process limitations . . . are expressly disclosed by [the prior art reference], except for the functionally expressed [limitation at issue],” the PTO can require an applicant “to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”). To rebut the prima facie case of anticipation over Hausenstein, Patent Owner submitted three declarations-the August 2020 Sasse Declaration, the June 2010 Sasse Declaration, and the September 2010 Sasse Declaration. We agree with the Examiner that the declarations are insufficient to rebut the prima facie case of anticipation over Hausenstein. August 2020 Sasse Declaration Paragraphs 15-19 of the August 2020 Sasse Declaration provides Mr. Sasse’s opinion with respect to Hauenstein. In particular, Mr. Sasse reviews the available technical data in Hauenstein and provides the following conclusions: (i) “Hauenstein does not provide any indication of how the described diorganopolysiloxane may impact the coefficient of friction of a thermoplastic extrudate, and a person of ordinary skill in the art would not determine that any of the described processing ‘improvements’ provides a direct correlation to coefficient of friction” (¶ 17); (ii) a person of ordinary skill in the art would recognize that this open-ended disclosure would be characterized by at least two ranges of diorganopolysiloxane: a first range describing the total amount of diorganopolysiloxane that can be provided within a final, finished product, and a second range describing Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 10 the total amount of diorganopolysiloxane that can be provided as a part of an intermediary masterbatch composition useable for mixing with virgin thermoplastic to create a final product having a lower diorganopolysiloxane content (¶ 18); and (iii) [w]hile these measurements are generally irrelevant when determining whether a diorganopolysiloxane additive would impact an installation pull force of a cable jacket including such compositions, these measurements do demonstrate the unpredictability in physical characteristics resulting from the addition of a similar amount of diorganopolysiloxane in each of the three tested thermoplastics. (¶ 19.) However, Patent Owner has not persuasively explained how Mr. Sasse’s conclusory statements rebut the prima facie case of anticipation. In particular, Mr. Sasse’s statements do not persuasively demonstrate that: (i) the “finished component” of an extruded cable, composed of 10 parts polysiloxane per 100 parts by weight of nylon, such that polysiloxane migrates to the surface, as described in Hauenstein, would not have a reduced the required installation pulling force in comparison to (ii) a similar extruded cable, composed of <10 parts polysiloxane per 100 parts by weight of nylon, such that no polysiloxane migrates to the surface. June 2010 Sasse Declaration Paragraphs 9, 10, and 12 of the June 2010 Sasse Declaration are reproduced below: Attached as Exhibit 1 is the summary of the test data collected using the coefficient of friction test, in which the coefficient of friction measurements of various lubricants blended with plasticized PVC, and of different concentrations, Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 11 were recorded. . . . This is shown, for example, by the fact that when erucarnide, polytetrafluoroethylene (Teflon), zinc sulfate and siloxane lubricants were added to the plasticized PVC, the coefficient of friction of the resulting lubricated blended polymer initially increased, and certainly did not decrease in accordance with the Examiner’s assumption, before additional concentrations lowered the coefficient of friction. (¶ 9 (emphases added).) The test data shown on attached Exhibit 2 demonstrates that there is no predictable correlation between the commonly measured and reported data reflecting increased surface coefficient of friction of a material and the commonly measured and reported data reflecting required pulling force of a wire or cable jacketed with such material. . . . Specifically, these results show that while a blend of a PVC polymer containing erucyl stearamide, oleamide, and erucamide lubricants have respectively increasing, and certainly not decreasing, measured coefficients of friction of 0.40, 0.42, and 0.43, the corresponding measured required pulling forces have decreasing values of 81 lbs., 73 lbs., and 66 lbs., respectively. (¶ 10 (emphasis added).) Referring also to the test results of attached Exhibit 3, the addition of 0.4% Teflon, shows that the required pulling force for the Teflon lubricated jacket is 35.8 lbs., which is an increase over the control sample that required only 31.4 lbs pulling force. This test was performed with plasticized PVC (about 30% plasticizer). (¶ 12 (emphasis added).) Patent Owner has not persuasively explained how such test data from Exhibits 1-3, a summary of the test data collected from plasticized PVC, rather than nylon, as recited in the claims, rebuts the prima facie case of anticipation. In particular, Exhibits 1-3 do not demonstrate that: (i) the “finished component” of an extruded cable, composed of 10 parts Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 12 polysiloxane per 100 parts by weight of nylon, such that polysiloxane migrates to the surface, as described in Hauenstein, would not have reduced the claimed installation pulling force in comparison to (ii) a similar extruded cable composed of <10 parts polysiloxane per 100 parts by weight of nylon, such that no polysiloxane migrates to the surface. September 2010 Sasse Declaration With respect to the September 2010 Sasse Declaration, paragraphs 5 and 9 are reproduced below: The first test we conducted was a “coefficient of friction” test to measure the coefficient of friction of the plasticized PVC polymer material blended with the varying percentages of PTFE micropowder lubricant. (¶ 5 (emphasis added).) The test results listed in attached Exhibit A, and graphically shown in attached Exhibit C, additionally demonstrate that there is no correlation or predictable relationship between the concentration of lubricant added to a polymer and the force required to install a cable or wire jacketed with that lubricant blended polymer. (¶ 9.) However, Patent Owner has not persuasively explained how a coefficient of friction test from Exhibit A for plasticized PVC polymer material blended with PTFE micropowder lubricant, instead of nylon with polysiloxane, as recited in the claims, rebuts the prima facie case of anticipation. The coefficient of friction testing from Exhibit A does not demonstrate that: (i) the “finished component” of an extruded cable, composed of 10 parts polysiloxane per 100 parts by weight of nylon, such Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 13 that polysiloxane migrates to the surface, as described in Hauenstein, would not have a reduced the required installation pulling force in comparison to (ii) a similar extruded cable composed of <10 parts polysiloxane per 100 parts by weight of nylon, such that no polysiloxane migrates to the surface. First, Patent Owner argues “that Hauenstein’s limited disclosure of a nylon being available as an ‘other’ thermoplastic that may be incorporated into certain configurations, without any explicit discussions of the effect of a lubricant on a final product of a nylon composition is most appropriately characterized as an ‘invitation to investigate.’” (PO Comments 15 (citation omitted).) However, contrary to Patent Owner’s argument, Hauenstein explains that “[t]he thermoplastic resins that constitute the component (A) of the invention are preferably high density polyolefins, but can be other thermoplastic resins as well, such as nylons.” (Col. 1, ll. 33-35 (emphasis added).) Moreover, in “Example 1,” Hauenstein explains that “polydimethylsiloxane . . . was compounded in HDPE, PET and Nylon then injection molded into panels and tested for hydrophobicity.” (Col. 6, ll. 14- 17.) In particular, Hauenstein explains that “masterbatch pellets . . . were then recompounded on the Haake Rheocord™ 90 system twin-screw extruder, this time adding sufficient thermoplastic resin to make compositions having 0.5%, 1.0% and 2.5% by weight of silicone” and “repeated for each of the thermoplastic resins, HDPE, PET and Nylon.” (Col. 6, ll. 47-53.) Accordingly, in view of Example 1 and the disclosure of nylon as an alternative thermoplastic, Hauenstein cannot be properly characterized as having a “limited disclosure” of nylon or as an “invitation to investigate” nylon. Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 14 Second, Patent Owner argues that “the few nylon-based examples discussed in Hauenstein (nylon mixed with 0.5%, 1.0%, and 2.5% by weight silicone) specifically focus on these low, nearly undetectable levels of silicone mixed with nylon” and “the June 2010 Sasse Declaration provides relevant evidence demonstrating that levels of silicone as low as 0.5 wt% mixed with a thermoplastic have a negligible impact on surface properties such as coefficient of friction.” (PO Comments 16 (citation omitted).) However, Hauenstein also explains that in a general embodiment, “[f]or finished products, it is preferred that about 1 to about 5 parts by weight of component (B) are used for each 100 parts by weight of component (A)” (col. 3, ll. 29-31) and “at levels higher than about 10 parts of (B) per 100 parts by weight of (A), the surface quality of the cooled thermoplastic again begins to deteriorate” (col. 3, ll. 38-41). Thus, rather than “low, nearly undetectable levels of silicone mixed with nylon” as argued by Patent Owner, Hauenstein provides an embodiment with ≤ 10 parts of component (B) for each 10 parts by weight of component (A). Moreover, as discussed previously, the test data from Exhibits 1-3 of the June 2010 Sasse Declaration is collected from plasticized PVC, rather than nylon. Third, Patent Owner argues that “[a]lthough Hauenstein does not provide any indication of producing a final product (whether injection molded or otherwise) encompassing a nylon material with a 10 wt% lubricant additive, the Examiners incorrectly limited their review of the New [Declaration] Evidence based on Hauenstein’s short discussion of masterbatch pellet production.” (PO Comments 17 (emphasis omitted).) Similarly, Patent Owner argues “the August 2020 Sasse Declaration . . . Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 15 explicitly discusses the differences between intermediate masterbatch compositions and final products, whereas the Examiners incorrectly concluded Hauenstein’s discussion of intermediate masterbatch compositions with up to 10 wt% siloxane could be extrapolated to discussions of final products.” (Id. at 18.) Contrary to Patent Owner’s arguments, Hauenstein specifically distinguishes between a “masterbatch” and a “finished product.” With respect to a “masterbatch,” Hauenstein explains that in general, “[h]igher amounts of component (B) (up to 50 parts) can be used to form a masterbatch of the composition for further processing” (col. 3, ll. 27-29) and in Example 1 “[f]or the PET and Nylon examples, sufficient siloxane was added to same polymers so that the total concentration of silicone was about 10% by weight” forming a masterbatch composition (col. 6, ll. 41-43). With respect to a “finished product,” Hauenstein explains that “[m]ore preferably, about 1 to 4 parts of (B), and most preferably about 1 to 3 parts, per 100 parts by weight of (A) are used” (col. 3, ll. 31-33), but also explains that “at levels higher than about 10 parts of (B) per 100 parts by weight of (A), the surface quality of the cooled thermoplastic again begins to deteriorate” (col. 3, ll. 38-41). Last, Patent Owner argues that “the cited portion of Hauenstein is insufficient to support an anticipation rejection of the claims at all, at least because the cited portion does not explicitly discuss a final product encompassing nylon mixed with the recited quantity of diorganopolysiloxane” and “Hauenstein’s explicit disclosure of nylon-based configurations is limited to a short example discussing injection molded nylon panels with low concentrations of diorganopolysiloxane below 2.5 Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 16 wt%.” (PO Comment 32.) However, in a single embodiment, Hauenstein also explains “at levels higher than about 10 parts of (B) per 100 parts by weight of (A), the surface quality of the cooled thermoplastic again begins to deteriorate” (col. 3, ll. 38-41), such that the finished product is “cable extrusion” (col. 4, l. 35) and component (A) is nylon (col. 1, ll. 34-35). Accordingly, we agree with the Examiner that the rejection of claims 3, 4, 6, 7, and 9-12 under 35 U.S.C. § 102(b) as anticipated by Hauenstein should be maintained. Mehta Claims 3, 4, and 9-12 The Examiner found that claims 3, 4, and 9-12 were anticipated by Mehta, including the limitation “the silicone based pulling lubricant being of a concentration sufficient to reduce the required installation pulling force of the cable during its installation through building passageways in rafters or joists or conduit bends,” with a citation to In re Best, 562 F.2d at 1254-55 (Where “all process limitations . . . are expressly disclosed by [the prior art reference], except for the functionally expressed [limitation at issue],” the PTO can require an applicant “to prove that the subject matter shown [to be] in the prior art does not possess the characteristic relied on.”). (Determination 6.) The Examiner determined that Patent Owner’s declaration evidence did not persuasively rebut the anticipation finding for the following reasons: (i) “this evidence [August 2020 Sasse Declaration] does not prove that the subject matter shown in the prior art (i.e., the combined siloxane blend and nylon) does not possess the characteristic Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 17 relied on (i.e., reduced surface coefficient of friction of the wire or cable extrusion)” (id. at 9; see also id. at 10-12); (ii) “Exhibit 1 [of the June 2010 Sasse Declaration] is directed to the combination of siloxane and plasticized PVC rather than the [claimed] combination of siloxane lubricant with nylon,” “Exhibit 2 is directed to the combination of various lubricants, none of which are siloxane, and blended plasticized PVC” (id. at 13), and “Exhibit 3 is directed to the combination of either one of two lubricants (i.e., Oleamide and Teflon) blended with plasticized PVC rather than the combination of siloxane lubricant with nylon” (id. at 13-14); and (iii) “Exhibits A-D are directed to the combination of a plasticized PVC polymer material blended with varying percentages of PTFE micropowder lubricant, rather than the combination of siloxane lubricant with nylon, which is [the] combination disclosed in Mehta” (id. at 14). We agree with the Examiner’s determination. With respect to a general embodiment, Mehta explains the following: The compositions of the present invention are prepared by thoroughly dispersing at least 0.5 part by weight of diorganopolysiloxane (B) in 100 parts by weight of thermoplastic (A). Higher amounts of component (B) (up to 50 parts) can be used to form a masterbatch (or concentrate) of the composition for further processing. For 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). More preferably, about 1 to 4 parts of (B), and most preferably about 1 to 3 parts, per 100 parts by weight of (A) are used. (Col. 3, ll. 21-31.) Moreover, Mehta explains that “[t]he thermoplastic resins that constitute the component (A) of the invention are preferably polyolefins, but can be other thermoplastic resins as well, such as nylons.” Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 18 (Col. 1, ll. 47-49 (emphasis added).) With respect to additional ingredients to nylon and diorganopolysiloxane, Mehta explains that “compositions of the present invention may also contain up to about 30 percent by weight of each of the following: fillers, cure agents, lubricants, ultraviolet light stabilizers, antioxidants, catalyst stabilizers, flame retardants and other process aids.” (Col. 3, ll. 63-67.) Accordingly, in single embodiment, Mehta explains that the “finished product” is composed of 0.5-7 parts by weight of diorganopolysiloxane (B) for each 100 parts by weight of nylon (A) and optional additional ingredients. With respect to the “finished product,” Mehta explains that “[t]his method is particularly applicable to the production of . . . wire, or cable extrusion.” (Col. 4, ll. 28-32 (emphasis added).) Moreover, with respect to surface properties, Mehta explains the that “the above recited preferred compositional ranges [about 0.5 to about 7 parts by weight of component (B)] result in the desired balance of good coefficient of friction as well as low screw slip during processing, particularly at high extruder output rates.” (col. 3, ll. 41-44 (emphasis added); see also Abstract) and “[t]he resulting extrudate has a reduced coefficient of friction and increased hydrophobicity relative to a similar extrudate which does not contain component (B)” (col. 4, ll. 40-42 (emphases added)). Thus, because the thermoplastic resin of Mehta includes: (i) component (A) of nylon; (ii) component (B) of diorganopolysiloxane with “about 0.5 to about 7 parts by weight of component (B)”; (iii) applicability to cable extrusion; (iv) optional additional ingredients; and (v) the property of “extrudate has a reduced coefficient of friction . . . relative to a similar Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 19 extrudate which does not contain component (B),” Mehta discloses all the limitations of independent claim 3, except the limitation “the silicone based pulling lubricant being of a concentration sufficient to reduce the required installation pulling force of the cable during its installation through building passageways in rafters or joists or conduit bends.” However, because Mehta describes cable extrusion using nylon with 0.5 to 7 weight percent polysiloxane, with a reduced coefficient of friction relative to a corresponding cable without diorganopolysiloxane, a prima facie case of anticipation has been established. Best, 562 F.2d at 1254-55 (Where “all process limitations . . . are expressly disclosed by [the prior art reference], except for the functionally expressed [limitation at issue],” the PTO can require an applicant “to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.”). To rebut the prima facie case of anticipation over Mehta, Patent Owner submitted three declarations-the August 2020 Sasse Declaration, the June 2010 Sasse Declaration, and the September 2010 Sasse Declaration. We agree with the Examiner that the declarations are insufficient to rebut the prima facie case of anticipation over Mehta. August 2020 Sasse Declaration Paragraphs 6-14 of the August 2020 Sasse Declaration provides Mr. Sasse’s opinion with respect to Mehta. In particular, Mr. Sasse reviews the available technical data in Mehta and provides the following conclusions: (i) a person of ordinary skill in the art would quickly recognize that Mehta’s discussions of a siloxane blend provided in a Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 20 polyolefin material would not be instructive of how such a siloxane blend would affect the characteristics of a nylon material, or how much of the siloxane blend should be added to a nylon to achieve analogous results (¶ 9); (ii) “Mehta’s Claim 1-a person of ordinary skill in the art would recognize that this disclosure broadly describes any ‘composition,’ including both intermediary compositions (such as a masterbatch not suitable for use as a final product) and final products” (¶ 10); (iii) a person of ordinary skill in the art would recognize that the open-ended disclosure of claim 1 would be characterized by at least two ranges of siloxane blend: a first range describing the total amount of siloxane blend that can be provided within a final, finished product, and a second range describing the total amount of siloxane blend that can be provided as a part of an intermediary masterbatch composition useable for mixing with virgin thermoplastic to create a final product having a lower siloxane content (¶ 12); (iv) “a person of ordinary skill in the art would recognize that ‘50 parts’ per 100 parts of thermoplastic is the effective maximum for forming even a masterbatch, and that Mehta suggests that final products could be produced at other siloxane quantities that are not considered ‘higher amounts’” (¶ 13); and (v) “because Mehta provides no working examples . . . using other thermoplastics and because this area of polymer chemistry is particularly unpredictable, a substantial amount of experimentation and testing would be required to determine the amount of siloxane blend that could be used with other thermoplastics, such as nylon” (¶ 14). Patent Owner has not persuasively explained how Mr. Sasse’s conclusory statements rebut the prima facie case of anticipation. In particular, Mr. Sasse’s statements do not persuasively demonstrate that: (i) Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 21 the “finished component” of an extruded cable, composed of 0.5-7 parts polysiloxane per 100 parts by weight of nylon, having “a reduced coefficient of friction . . . relative to a similar extrudate which does not contain [siloxane],” as described in Mehta, would not have reduced the required installation pulling force in comparison to (ii) a similar cable with no siloxane. June 2010 Sasse Declaration As discussed previously with respect to the rejection of claims 3 and 9 under 35 U.S.C. § 102(b) as anticipated by Hauenstein, test data from Exhibits 1-3 were collected from plasticized PVC, rather than nylon. Patent Owner has not adequately explained how such test data from Exhibits 1-3 demonstrate that: (i) the “finished component” of a cable, composed of 0.5- 7 parts siloxane per 100 parts by weight of nylon, having “a reduced coefficient of friction . . . relative to a similar extrudate which does not contain [siloxane],” as described in Mehta, would not have reduced the required installation pulling force in comparison to (ii) a similar cable with no siloxane. September 2010 Sasse Declaration As discussed previously with respect to the rejection of claims 3 and 9 under 35 U.S.C. § 102(b) as anticipated by Hauenstein, test data from Exhibit A were collected from plasticized PVC polymer material blended with PTFE micropowder lubricant, rather than nylon with siloxane, as claimed. Patent Owner has not adequately explained how such test data Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 22 from Exhibit A demonstrates that: (i) the “finished component” of an extruded cable, composed of 0.5-7 parts siloxane per 100 parts by weight of nylon, having “a reduced coefficient of friction . . . relative to a similar extrudate which does not contain [siloxane],” as described in Mehta, would not have reduced the required installation pulling force in comparison to (ii) a similar extruded cable with no siloxane. First, Patent Owner argues that Mehta’s passing reference to nylon being an available ‘other’ thermoplastic that may be incorporated into certain configurations, without any explicit discussions of quantities of lubricant that can be incorporated into nylon and/or discussions of the resulting characteristics of nylon mixed with a lubricant, is most-appropriately characterized as an “invitation to investigate.” (PO Comments 7 (citation omitted).) Contrary to Patent Owner’s argument, Mehta explains that “[t]he thermoplastic resins that constitute the component (A) of the invention are preferably polyolefins, but can be other thermoplastic resins as well, such as nylons.” (Col. 1, ll. 47-49 (emphasis added).) Accordingly, in view of the disclosure of nylon as an alternative thermoplastic, Mehta cannot be properly characterized as having a “limited disclosure” of nylon or an “invitation to investigate” nylon. Second, Patent Owner argues that “in Mehta with reference to the polyolefin and generic thermoplastics are relevant to mixtures of nylon and lubricant, these disclosures encompass mixtures of thermoplastics with trace amounts of lubricant that would be entirely undetectable within a final product” (PO Comments 9) and “the June 2010 Sasse Declaration . . . specifically indicates that a reduction in coefficient of friction does not necessarily correlate to a reduction in a required installation pulling force of Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 23 a cable, since other characteristics of a cable may impact the cable’s likelihood to catch or snag on objects within a building passageway” (id. at 11.) However, Mehta also explains that in a general embodiment, “[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. 26-29.) Thus, rather than “low, nearly undetectable levels of silicone mixed with nylon” as argued by Patent Owner, Hauenstein provides an embodiment with 0.5-7 parts of component (B) for each 10 parts by weight of component (A). Moreover, as discussed previously, the test data from Exhibits 1-3 of the June 2010 Sasse Declaration were collected from plasticized PVC, rather than nylon. Third, Patent Owner argues that “June 2010 Sasse Declaration . . . specifically indicates that a reduction in coefficient of friction does not necessarily correlate to a reduction in a required installation pulling force of a cable, since other characteristics of a cable may impact the cable’s likelihood to catch or snag on objects within a building passageway” and “paragraph 9 of the August 2020 Sasse Declaration emphasizes that the specific examples discussed in Mehta of a polyolefin mixed with a lubricant are irrelevant to an understanding of characteristics of a mixture of a nylon and a lubricant.” (PO Comments 11.) However, the statements in the August 2020 Sasse Declaration relied upon by Patent Owner lack persuasive factual support because such declaration does not cite to sufficient corroborating evidence to support the statement that “a reduction in coefficient of friction does not necessarily correlate to a reduction in a Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 24 required installation pulling force of a cable.”1 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.”). Again, Mehta explains that “[t]he thermoplastic resins that constitute the component (A) of the invention are preferably polyolefins, but can be other thermoplastic resins as well, such as nylons.” (Col. 1, ll. 47-49 (emphasis added).) Fourth, Patent Owner argues that “the actual disclosure of Mehta, which only discusses low concentrations of siloxane-blend mixed with a polyolefin in final products and more generically discusses the recited open-ended amounts of siloxane blend that can be mixed into a ‘thermoplastic’ as either an intermediate masterbatch . . . or a final product.” (PO Comments 23.) Similarly, Patent Owner argues that Mehta describes those intermediate masterbatch compositions as encompassing high concentrations of the siloxane blend within a polyolefin (concentrations of the siloxane blend much higher than are useable in final products) that may be mixed with virgin polyolefin material to achieve a more even distribution of the siloxane blend at the lower concentrations Mehta describes as useable within a final product 1 In contrast to Mr. Sasse’s statement that “a reduction in coefficient of friction does not necessarily correlate to a reduction in a required installation pulling force of a cable,” the ’119 patent acknowledges that “[t]his [installation of electrical cable pulled through tight spaces or small openings] becomes problematic since the exterior surface of the cable sheath normally has a high coefficient of friction, therefore requiring a large pulling force” (col. 1, ll. 52-55) (emphasis added) and “[t]o overcome this problem, the general industry practice has been to coat the exterior surface of the cable sheath with a pulling lubricant at the job site in order to reduce the coefficient of friction between this surface and the conduit walls or like surfaces” (col. 1, ll. 59-63 (emphasis added).) Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 25 and cited the Clarson Declaration (attached as an appendix to the August 2020 Sasse Declaration) as evidence. (Id.) Paragraphs 54 and 57 of the Clarson Declaration are reproduced below: Mehta thus describes that during processing, a “masterbatch” may contain up to 50 parts of the siloxane blend (B), but the masterbatch must undergo “further processing” to yield a finished product. (¶ 54.) Thus, the highest concentration of lubricant (component (B)) disclosed by Mehta for a finished product is 7 parts by weight for each 100 parts by weight of the thermoplastic resin (component (A)), or about 6.5% by weight (i.e., 7 out of 107). (¶ 57.) Contrary to Patent Owner’s arguments, Mehta specifically distinguishes between a “masterbatch” and a “finished product[].” With respect to a “masterbatch,” Mehta explains that in general, “[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.” (Col. 3, ll. 24-26.) With respect to a “finished product[],” Mehta explains that “[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. 26-29.) Last, Patent Owner argues that [t]he cited portions of Mehta span at least three discrete embodiments discussed within the Mehta disclosure: (1) Mehta’s disclosure of specific quantities of siloxane blend that may be incorporated into a thermoplastic (amounts only described in detail with respect to polyolefins), (2) Mehta’s passing reference to “nylons, polyesters, polystyrenes, polyurethanes, and acrylic resins, among others” and (3) Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 26 Mehta’s discussion of polyolefin processing techniques as encompassing “pipe, wire, or cable extrusion . . . and any similar high shear melt processing of polyolefin resins.” (PO Comments 26 (internal citation omitted).) However, in a single general embodiment, Mehta explains that “[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. 26-29), such that the finished product is “cable extrusion” (col. 4, ll. 31-32) and component (A) is nylon (col. 1, ll. 48-49). Accordingly, we agree with the Examiner that the rejection of claims 3, 4, and 9-12 under 35 U.S.C. § 102(b) as anticipated by Mehta should be maintained. Claims 6 and 7 We do not reach the additional cumulative rejections of dependent claims 6 and 7 claims as anticipated under 35 U.S.C. § 102(b) by Mehta. Affirmance of the anticipation rejection based on Hauenstein discussed previously renders it unnecessary to reach the remaining rejections, as claims 6 and 7 have been addressed and found unpatentable. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional obviousness rejections); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (approving ITC’s determination based on a single dispositive issue, and not reaching other issues not decided by the lower tribunal). Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 27 DECISION We affirm the Examiner’s decision to maintain the rejection of claims 3, 4, 6, 7, and 9-12 under 35 U.S.C. § 102(b) as anticipated by Hauenstein. We affirm the Examiner’s decision to maintain the rejection of claims 3, 4, and 9-12 under 35 U.S.C. § 102(b) as anticipated by Mehta. DECISION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 3, 4, 6, 7, 9-12 102(b) Hauenstein 3, 4, 6, 7, 9-12 3, 4, 9-12 102(b) Mehta 3, 4, 9-12 6, 7 102(b) Mehta2 Overall Outcome 3, 4, 6, 7, 9-12 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 a 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 2 Cumulative rejection. Appeal 2022-000193 Reexamination Control 95/000,695 Patent 8,043,119 B2 28 PATENT OWNER: ALSTON & BIRD LLP Bank of America Plaza 101 South Tryon Street, Suite 4000 Charlotte, NC 28280-4000 THIRD PARTY REQUESTER: SMITHAMUDSEN LLC 201 N Illinois St., Ste. 1400 Indianapolis, IN 46204