Ex Parte 7749024 et al

Patent Trial and Appeal Board

Mar 28, 2014

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

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,573 10/08/2010 7749024 023944.008686-1 2557
32914 7590 03/28/2014
GARDERE WYNNE SEWELL LLP
INTELLECTUAL PROPERTY SECTION
3000 THANKSGIVING TOWER
1601 ELM ST
DALLAS, TX 75201-4761
EXAMINER
PATEL, HETUL B
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/28/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ENCORE WIRE CORPORATION
Requester and Respondent

v.

SOUTHWIRE COMPANY
Patent Owner and Appellant
____________

Appeal 2014-000135
Reexamination Control 95/000,573
Technology Center 3900
Patent 7,749,024
____________

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

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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Patent No. 7,749,024

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Patent Owner Southwire Company, appeals under 35 U.S.C. § 134(b)
and 35 U.S.C. § 315(a) the Examiner’s final decision to reject claims 4-7
and 9-12. Claims 1-3, 8, and 13-16 are not subject to reexamination. Third-
Party Requester Encore Wire Corporation urges that the Examiner’s decision
must be affirmed. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm-in-part.

STATEMENT OF THE CASE
A request for inter partes reexamination of U.S. Patent
No. 7,749,024 B2 (the ’024 patent), assigned Reexamination Control
No. 95/000,573, was filed on October 8, 2010, by Third-Party Requester
Encore Wire Corporation.
The ’024 patent, entitled “Method of Manufacturing THHN Electrical
Cable, and Resulting Product, with Reduced Required Installation Pulling
Force,” issued July 6, 2010, to Terry Chambers, Randy D. Kummer, John
Armstrong, Philip Sasse, David Reece, and Hai Lam, based on Application
No. 11/675,441, filed February 15, 2007. The ’024 patent is also a
continuation-in-part of Application No. 11/120,487, filed May 3, 2005, now
abandoned, which is a continuation-in-part of Application No. 10/952,294,
filed September 28, 2004, now U.S. Patent No. 7,411,129.
The ’024 patent is assigned to Southwire Company, the real party in
interest.

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Related Litigation
The ’024 patent has been asserted in several patent infringement suits,
Encore Wire Corp. v. Southwire Co., No. 3:10-cv-86 (N.D. Ga.
July 6, 2010), Cerro Wire Inc. v. Southwire Co., No. 3:10-cv-87 (N.D. Ga.
July 6, 2010) and Southwire Co. v. Encore Wire Corp., No. 6:10-cv-330
(E.D. Tex. July 6, 2010). (PO App. Br. 2.) The cases have been either
terminated or dismissed.

The Claims
The original patent claims were amended during the reexamination
proceedings. Independent claims 4 and 6 are exemplary, with disputed
limitations in italics, and underlining to show claim amendments:
4. An improved process of manufacturing a finished THHN
cable assembly of the type comprising a central conductor core 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 concentration sufficient to
reduce the required installation pulling force of the cable during its
installation through building passageways and enclosures, 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
THHN cable is pulled along an installation surface; and
(b) extruding said combined silicone based pulling lubricant
and said nylon material to surround said central conductor core with at
least said outer layer.

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6. The process as defined by claim 4 in which the
concentration, by weight, of the silicone based pulling lubricant is at
least 9% by weight.

The Rejections
Patent Owner appeals the Examiner’s decision to reject all the
pending claims as follows:
1. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba (US 5,460,885; Oct. 24, 1995), Brown
(US 7,136,556 B2; Nov. 14, 2006) and Dow Corning (Dow Corning
Corporation, DOW CORNING® MB50-011 Masterbatch (1997-99)).
2. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, Brown, Dow Corning, and JP ’601 (JP 2001-264601;
Sept. 26, 2001).
3. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, Brown, and JP ’601.
4. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, Brown, and WO ’653 (WO 00/40653; July 30, 2000.)
5. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, FR ’364 (FR 2 674 364; Sept. 25, 1992) and Dow
Corning.
6. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, FR ’364, Dow Corning, and JP ’601.
7. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, FR ’364, and WO ’653.
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8. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, FR ’364, and JP ’601.
9. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, FR ’ 364, WO ’653, and JP ’601.
10. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
11. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
Patent Owner relied upon the following declarations in rebuttal to the
Examiner’s proposed rejection:
Declaration under 37 C.F.R. § 1.132 of Philip A. Sasse, dated
June 4, 2010, accompanied by Exhibits 1-3.
Supplemental Declaration under 37 C.F.R. § 1.132 of Philip A. Sasse,
September 21, 2010, accompanied by Exhibits A-D.
Second Supplemental Declaration under 37 C.F.R. § 1.132 of Philip
A. Sasse, December 22, 2010.
Requester relied upon the following declaration in support of the
Examiner’s proposed rejection:
Declaration under 37 C.F.R. § 1.132 of William N. Unertl, Ph.D.,
dated February 25, 2011.

ANALYSIS
§ 103 Rejection – Chu-Ba, Brown, and Dow Corning
Claims 4, 5, 9, and 10
The Examiner found that the type-THHN wiring products of Chu-Ba
corresponds to the limitation “a finished THHN cable assembly of the type
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comprising a central conductor core and a surrounding sheath of at least one
outer layer of nylon material defining the exterior surface of the finished
cable.” (RAN 25.) The Examiner acknowledged that Chu-Ba does not
disclose the limitation “combining a silicone based pulling lubricant . . .
prior to the formation of said outer layer of said sheath” and therefore, relied
upon Brown for teaching the addition of a silicone slip agent during the
extrusion of a polymer coated cable. (RAN 25-26.) The Examiner
concluded that “it would have been obvious . . . to implement the teaching of
Brown in the process taught by Chu-Ba.” (RAN 26.) The Examiner further
acknowledged that Chu-Ba does not disclose 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 and
enclosures, 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 THHN cable is pulled along an
installation surface
and therefore, relied upon Dow Corning for teaching Masterbatch, a
pelletized formulation of a siloxane polymer dispersed in nylon.
(RAN 26.) The Examiner concluded that “it would have been obvious
. . . to implement the teaching of Dow Corning in the process taught
by the combination of Chu-Ba and Brown so processing and flow of
the resin [is] improved, including better mold release and faster
throughput.” (RAN 27.)
Requester argues that:
Chu-Ba, Brown, and Dow Corning show that: (1) the structure,
fabrication, and testing of type-THHN cable was well-known
. . . (3) reducing the coefficient of friction of the outer surface
of a cable was desirable . . . ; and (4) a mixture of silicone was
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known that provides superior antifriction performance without
sacrificing tensile strength and is suitable for use in the
fabrication of cable jackets.
(Requester Resp. Br. 9-10 (citations omitted).) We agree with the
Examiner’s determination.
Chu-Ba relates to insulated electrical products. (Col. 1, l. 7.) In the
“Background of the Invention” section, Chu-Ba explains that polyvinyl
chloride (PVC) insulation on electrical conductors, surrounded with a jacket
is “conventional practice.” (Col. 2, ll. 1-3.) In particular, “[j]acketed
conductors such as type-THHN . . . wiring products are provided with PVC
insulation surrounded by a nylon jacket.” (Col. 2, ll. 3-6.) Thus, Chu-Ba
teaches the limitation “a finished THHN cable assembly of the type
comprising a central conductor core and a surrounding sheath of at least one
outer layer of nylon material defining the exterior surface of the finished
cable.”
Brown relates to signal transmitting cables, in particular, “optical
cables to be installed in ducts by blowing.” (Col. 1, ll. 3-5.) In discussing
relevant prior art, Brown explains that “antifriction agents can be
incorporated in . . . the outermost layer of the cable” (col. 1, ll. 56-60) and
“[h]arder materials provide more robust cables with better resistance to
abrasion during installation and improved protection of the fragile signal
transmitting members” which includes nylon or high-density polyethylene
(col. 3, ll. 61-65). Figure 2 of Brown illustrates a thermoplastic extrusion
line such the “the external coating 4, formed from a mixture of polymer and
friction reducing material which has previously been compounded by means
of heat and pressure, is applied to the inner layer 3 of the coated optical fibre
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bundle.” (Col. 5, l. 64 to col. 6, l. 1.) In one embodiment, the polymer is
high-density polyethylene and the slip agent is silicone. (Col. 6, ll. 10-11.)
Thus, Brown teaches the limitation “combining a silicone based pulling
lubricant . . . prior to the formation of said outer layer of said sheath.”
Dow Corning relates to product information for ultra-high molecular
weight siloxane polymer dispersed in nylon 6, referred to as Masterbatch.
(P. 1, “Description.”) Masterbatch is “designed to be used as an additive in
most nylon-compatible systems to impart benefits such as processing
improvements and modification of surface characteristics.” (Id.)
Additionally, “[a]t higher addition levels, 1% to 5% siloxane, improved
surface properties are expected, including lubricity, slip, lower coefficient of
friction, and greater mar and abrasion resistance.” (P. 1, “Benefits.”)
Furthermore, during processing, Masterbatch pellets can be added in a single
screw extruder during compounding or added at the feed hopper during
injection molding or extrusion. (P. 2, “How to Use.”)
The combination of Chu-Ba and Brown is nothing more than
incorporating the known type-THHN jacketed conductors having a nylon
jacket with the known method of extruding cables, in which the external
coating is formed of a polymer and a friction reduction material, to yield
predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). Furthermore, a person of ordinary skill in the art would have
recognized that incorporating the Masterbatch composition of Dow Corning
with Chu-Ba and Brown would result in improved surface properties for the
nylon jacket of Chu-Ba, including lubricity, slip, lower coefficient of
friction, and greater mar and abrasion resistance. Id. at 417.
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Because Dow Corning explains that Masterbatch can be used for
nylon-compatible systems, including extrusion, and Figure 2 of Brown
illustrates a thermoplastic extrusion line for cables, in which the external
coating is formed of a mixture of polymer and friction reducing material, the
limitation “combining a silicone based pulling lubricant with said nylon
material prior to the formation of said outer layer of said sheath” is
reasonably suggested by the combination of Dow Corning and Brown.
Furthermore, because Chu-Ba explains that a type-THHN wiring
product with PVC insulation surrounded by a nylon jacket is conventional,
Dow Corning explains that Masterbatch can be used for nylon-compatible
systems and modifies surface characteristics (e.g., lower coefficient of
friction), and Brown explains that antifriction agents applied to the
outermost layer of a cable facilitates installation, it would have been obvious
to have applied the Masterbatch siloxane lubricant to the THHN wiring
product, meeting 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 and
enclosures, 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 THHN cable is pulled along an
installation surface.
Patent Owner provides numerous arguments, none of which persuade
us of Examiner error. First, Patent Owner argues that “Chu-Ba does not
satisfy the preamble of Claim 4, because it fails to disclose an improved
process of manufacturing a THHN cable with an outer layer of nylon.”
(PO App. Br. 7; see also PO Reb. Br. 6-8.) However, the Examiner also
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cited Brown, which explains that thermoplastic extrusion is a known method
for forming cables. (Col. 5, l. 64 to col. 6, l. 4.)
Second, Patent Owner argues that
the Examiner relies on Brown to supply the rest of the elements
of Claims 4 and 9, including the claimed steps/material of
“combining a silicone based pulling lubricant with said nylon
material . . . [the lubricant being] of the type which permeates
throughout the at least one outer layer of the sheath to be
available at the said exterior surface [of] said THHN cable”
and that “Examiner fails to provide an adequate explanation of why one of
ordinary skill in the art would have been motivated to combine Chu-Ba with
Brown.” (PO App. Br. 7 (bracketing in original); see also PO Reb. Br. 8.)
However, the Examiner also cited Dow Corning, which explains that
Masterbatch is “designed to be used as an additive in most nylon-compatible
systems to impart benefits such as . . . modification of surface
characteristics.” (P. 1, “Description.”)
Third, Patent Owner argues that “the claim elements for which the
Examiner uses the combination of Chu-Ba and Brown concern a THHN
cable with an outer layer of nylon” but “the process taught by Chu-Ba is the
manufacture of a THHN cable with an outer layer of poly (alkylene
terephthalate), not nylon.” (PO App. Br. 7.) However, the Examiner cited
Chu-Ba for teaching “[j]acketed conductors such as type-THHN . . . wiring
products are provided with PVC insulation surrounded by a nylon jacket”
(col. 2, ll. 1-10), rather than a THHN cable with an outer layer of poly
(alkylene terephthalate).
Fourth, Patent Owner argues that “neither Chu-Ba nor Brown provide
any motivation for one of ordinary skill to add any lubricant, including a
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silicone based lubricant, to a THHN cable with a nylon outer layer” and
“even if a lubricant was added in Chu-Ba, there is no evidence that it would
permeate the outer layer to be available at the cable surface as required by
the claims.” (PO App. Br. 8.) Similarly, Patent Owner argues that “there is
no evidence that the combination of Chu-Ba and Brown would actually
result in a THHN cable with a nylon sheath through which a silicone based
lubricant permeates to the outer sheath surface, as claimed.” (Id.) However,
the Examiner also cited Dow Corning, which explains that Masterbatch is
“designed to be used as an additive in most nylon-compatible systems to
impart benefits such as . . . modification of surface characteristics.” (P. 1,
“Description.”)
Fifth, Patent Owner argues that “the Examiner provides no
explanation why one of ordinary skill in the art would be motivated to
combine Brown and Chu-Ba considering that Brown expressly teaches two
entirely separate layers of a sheath while Chu-Ba teaches a chemically-
bonded, effectively single, layer sheath.” (PO App. Br. 9.) Again, the
Examiner cited for Chu-Ba for teaching “[j]acketed conductors such as type-
THHN . . . wiring products are provided with PVC insulation surrounded by
a nylon jacket.” (Col. 2, ll. 1-10.)
Sixth, Patent Owner argues that “[t]he Examiner again fails to provide
any reason why one of ordinary skill would modify the already unworkable
combination of Chu-Ba and Brown by adding Dow” and “there is no
motivation in Dow to use the Masterbatch product it describes to replace the
outer layers of Chu-Ba and/or Brown, neither of which are nylon, with an
outer layer of lubricated nylon.” (PO App. Br. 10.) Again, the Examiner
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cited for Chu-Ba for teaching “[j]acketed conductors such as type-THHN . . .
wiring products are provided with PVC insulation surrounded by a nylon
jacket.” (Col. 2, ll. 1-10.)
Last, Patent Owner argues that “the majority of the disclosure of Dow
does not concern the use of Masterbatch products as lubricants in a finished
cable to reduce the pulling force required to install that cable in building
passageways, instead focusing on using Masterbatch to improve
manufacturing process flow and for better mold release” and “a reduction in
that coefficient under those circumstances does not necessarily result in a
reduction in pulling force as claimed” with a general citation to the Sasse
Declarations. (PO App. Br. 10.) However, Dow Corning explains that
Masterbatch is “designed to be used as an additive in most nylon-compatible
systems to impart benefits such as . . . modification of surface
characteristics” (p. 1, “Description”), including a lower coefficient of
friction (p. 1, “Benefits”), which would apply to any environment in which
the finished cable was used. Furthermore, the Sasse Declarations do not
provide comparative data between the “joist pull” test used to measure
installation pulling force and the “coefficient of friction” test for a wire
jacketed with nylon and a siloxane pulling lubricant. Accordingly, Patent
Owner has not provided sufficient persuasive evidence to support the
argument that a reduction in that the coefficient of friction, as taught by Dow
Corning, does not necessarily result in a reduction in pulling force as
claimed.
Accordingly, we affirm the Examiner’s decision to reject claims 4, 5,
9, and 10 under 35 U.S.C. § 103(a) over Chu-Ba, Brown, and Dow Corning.
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Dependent claims 6, 7, 11, and 12
The Examiner found that Figure 2 of Dow Corning, a graph of
coefficient of friction as a function of siloxane content, teaches the limitation
“in which the concentration, by weight, of the silicone based pulling
lubricant is at least 9% by weight.” (RAN 17.) In particular, the Examiner
found that “[b]ased on this information [in Figure 2], it would be obvious to
one of ordinary skills in the art to extrapolate the curve shown in Fig. 2 to
values over 9%.” (Id.) Requester argues that “for those claims requiring
silicone concentrations of at least 9% by weight . . . Dow Corning suggests
that this number is not critical, given that Masterbatch will achieve superior
performance with significantly less siloxane additive” with a citation to
paragraph 56 of the Unertl Declaration, which does not address siloxane
content of “at least 9% by weight.” (Requester Resp. Br. 10; see also Unertl
Decl. ¶ [0056].) We do not agree with the Examiner’s determination.
Figure 2 of Dow Corning illustrates the coefficient of friction of
nylon 6,6 versus steel, as a function of ultra-high molecular weight
(UHMW) siloxane content, from zero to 5 weight percent. (P. 3.) Dow
Corning further states that a suggested use level of Masterbatch is from
0.1 to 5% siloxane. (P. 1, “Typical Properties.”) Because Dow Corning
expressly states a 0.1 to 5% siloxane range, and 9% is outside this range,
Dow Corning does not teach the limitation “in which the concentration, by
weight, of the silicone based pulling lubricant is at least 9% by weight.”
Accordingly, we are persuaded by Patent Owner’s argument that “[w]hile
Dow discloses a concentration of an ultra-high molecular weight siloxane
combined with nylon, the highest level of siloxane disclosed is 5% by
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weight, not the claimed 9%” and that “[t]he Examiner’s assertion that it
would have been obvious to one of ordinary skill ‘to extrapolate the curve
shown in Fig. 2 [of Dow] to values over 9%’ is inapposite and unsupported
by any evidence.” (PO App. Br. 11 (bracketing in original).)
Accordingly, we reverse the Examiner’s decision to reject dependent
claims 6, 7, 11, and 12 under 35 U.S.C. § 103(a) over Chu-Ba, Brown, and
Dow Corning.

Remaining § 103 Rejections
We do not reach the additional cumulative rejections of claims 4, 5, 9,
and 10 under 35 U.S.C. § 103(a) as obvious over various combinations of
Chu-Ba, Brown, Dow Corning, JP ’601, WO ’653, and JP ’601. Affirmance
of the obviousness based rejections discussed previously renders it
unnecessary to reach the remaining obviousness rejections, as claims 4, 5, 9,
and 10 have been addressed and found unpatentable. Cf. In re Gleave, 560
F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional obviousness
rejections).

§ 112, First Paragraph Rejection
The Examiner adopted the Requester’s argument that “[t]he
specification ‘024 Patent provides no meaningful metes and bounds on the
claim limitations ‘building passageways and enclosures’ suitable to allow
one skilled in the art to objectively determine if sufficient lubricant has been
introduced into the cable sheath to produce the claimed reduction in pulling
force” and that “tests . . .which the ‘024 Patent asserts are based on an
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industry-standard program published by PolyWater Corporation, do not take
into account all the factors that should be accounted for when determining
cable pull-forces for actual applications, for example cable rigidity, as
discussed by Prof. Unertl in Exhibit 2.” (RAN 24; Requester Resp. to Office
Action 7-8, filed March 2, 2011.) The Examiner further found that
“[a]mended claims 4 and 9 each recites the new limitation ‘through building
passageways and enclosures’” and that “[t]his limitation lacks written
description support in the ’024 patent disclosure.” (RAN 24.) We do not
agree with the Examiner’s determination.
In the “Background of the Invention” section, the ’024 patent
discloses that “[i]nstallation of electrical cable often requires that it be pulled
through tight spaces or small openings in, and in engagement with, narrow
conduits, raceways, cabletrays, or passageways in rafters or joists” which is
“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. 46-52.) The ’024 patent also discloses that “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, typically using
vaselines or lubricants.” (Col. 1, ll. 56-59.) The ’024 patent also discloses
that “[a] pulling lubricant is a lubricant that appears at the outside surface of
the sheath of the cable and is effective to lower the surface coefficient of
friction such as to reduce the force necessary to pull the cable along or
through building surfaces or enclosures.” (Col. 2, ll. 20-24.) Figure 4 of
’024 patent illustrates a “coefficient of friction test apparatus . . . to give a
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consistent way to determine the input values necessary to use the industry-
standard program published by PolyWater Corporation to calculate a real-
world coefficient of friction for a given cable being pulled in conduit.”
(Col. 4, ll. 35-41.)
Claim 4 recites “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 and
enclosures” (emphasis added). However, claim 4 does not require the
calculation of a precise coefficient of friction. Instead, claim 4 only requires
a comparison of multiple structurally identical THHN cables (i.e., the same
thickness and rigidity), with the only difference between such THHN cables
being the concentration of silicone based pulling lubricant in the nylon
material. Accordingly, the coefficient of friction test apparatus disclosed in
the ’024 patent is sufficient to objectively determine if “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 and enclosures,” as recited in claim 4.
Thus, in view of the disclosure in the ’024 patent that pulling a cable
through passageways or enclosures can be problematic due to a high
coefficient of friction and the disclosure of a testing apparatus to calculate
the coefficient of friction during installation of a cable having a pulling
lubricant, the ’024 patent provides adequate written description support for
the limitation “through building passageways and enclosures.”
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Accordingly, we reverse the Examiner’s decision to reject claims 4-7
and 9-12 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.

§ 112, Second Paragraph Rejection
The Examiner adopted Requester’s argument that “the sufficiency of
the quantity of lubricant used in the nylon outer sheath is determined in light
of the ability of the silicone-based lubricant to reduce the pulling force
required to install the cable through undisclosed and undefined ‘building
passageways and enclosures’” and “patentees have provided no objective
standard on which infringement or non-infringement can be determined.”
(RAN 24; Requester Resp. to Office Action 9, filed March 2, 2011.)
Requester further argues that the “’024 Patent merely describes tests for
determining the coefficient of friction and pulling force for selected cables”
in which “Dr. Unertl establishes that these tests are wholly inadequate.”
(Requester Resp. Br. 18.) In particular, the Unertl Declaration states that the
“PolyWater [program described in the ’024 patent] calls the back-calculated
quantity an ‘effective friction coefficient’, clearly indicating that PolyWater
does not teach that Pull-Planner can be used to determine an actual
coefficient of friction” (Unertl Decl. ¶ [0019]) and “[f]ailure to include
rigidity effects in models of the pulling force lead to significant
underestimates of the pull-force” (Unertl Decl. ¶ [0022]).
As discussed previously, claim 4 does not require the calculation of a
precise coefficient of friction. Instead, claim 4 only requires a comparison
of multiple structurally identical THHN cables (i.e., the same thickness and
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rigidity), with the only difference between such THHN cables being the
concentration of silicone based pulling lubricant in the nylon material.
Accordingly, the coefficient of friction test apparatus disclosed in the
’024 patent is sufficient to objectively determine if “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 and enclosures,” as recited in claim 4.
Accordingly, we reverse the Examiner’s decision to reject claims 4-7
and 9-12 under 35 U.S.C. § 112, second paragraph, as indefinite for failing
to particularly point out and distinctly claim the subject matter which
applicant regards as the invention.

DECISION
The Examiner’s decision to reject claims 4, 5, 9, and 10 under U.S.C.
§ 103(a) is affirmed.
The Examiner’s decision to reject claims 6, 7, 11, and 12 under U.S.C.
§ 103(a) is reversed.
The Examiner’s decision to reject claims 4-7 and 9-12 under 35
U.S.C. § 112, first paragraph, is reversed.
The Examiner’s decision to reject claims 4-7 and 9-12 under 35
U.S.C. § 112, second paragraph, is reversed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED-IN-PART
Appeal 2014-000135
Reexamination Control 95/000,573
Patent No. 7,749,024

19
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