Jerry L. Allen

Patent Trials and Appeals Board

Jul 1, 2020

14712101 - (D) (P.T.A.B. Jul. 1, 2020)

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.
14/712,101 05/14/2015 Jerry L. ALLEN VIK.P0016B 1892
26360 7590 07/01/2020
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
Huntington Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
EXAMINER
HONG, SEAHEE
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
07/01/2020 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
Ex parte JERRY L. ALLEN
Appeal 2018-008208
Application 14/712,101
Technology Center 3700

Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 5–10. Claims 1–4 have been canceled.2
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as WESCO
Distribution, Inc. Appeal Brief (“Appeal Br.”) 3, filed Dec. 19, 2017.
2 In the Advisory Action (“Adv. Act.”), dated October 5, 2017, the Examiner
entered the amendment filed by Appellant to cancel claims 1–4 and to
amend claim 9. See Adv. Act.; see also Appellant’s Response to Office
Action, filed Sept. 13, 2017.
Appeal 2018-008208
Application 14/712,101
2
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a method of introducing a
cable/plurality of cables into a longitudinally extending conduit. Claims 5,
8, 9, and 10 are independent. Claim 5, reproduced below, is illustrative of
the claimed subject matter and recites:
5. A method of introducing a cable into a longitudinally
extending conduit comprising the steps of attaching a pliant
material to the cable by using an adhesive, and thereafter
introducing the cable with the pliant material having less friction
than the cable attached thereto into the conduit.
REFERENCES
The prior art relied upon by the Examiner is:
Reference Name Document ID Date
Conti US 5,027,864 July 2, 1991
Delomel US 5,167,399 Dec. 1, 1992
Allen US 9,054,507 B2 June 9, 2015
Holland US 2002/0170728 A1 Nov. 21, 2002
Li WO 02/37632 A2 May 10, 2002
REJECTIONS3,4
Claims 5, 6, and 8–10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Conti, Holland, and Li.

3 In the Advisory Action dated October 5, 2017, the Examiner indicated that
Appellant’s amendment to claim 9 has overcome the rejection of claim 9
under 35 U.S.C. § 112, second paragraph. See Adv. Act.; see also
Appellant’s Response to Office Action filed Sept. 13, 2017; Final Office
Action (“Final Act.”) 2, dated June 27, 2017.
4 On September 13, 2017, Appellant filed a Terminal Disclaimer directed to
US Patent No. 9,054,507 B2 to address the Examiner’s double patenting
Appeal 2018-008208
Application 14/712,101
3
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Conti, Holland, Li, and Delomel.
ANALYSIS
Obviousness over Conti, Holland, and Li
Claims 5 and 6
Independent claim 5 is directed to a method of introducing a cable
into a longitudinally extending conduit and includes the step of “attaching a
pliant material to the cable by using an adhesive.” Appeal Br. 10 (Claims
App.). The Examiner finds that Conti “disclose[s] a method of introducing a
cable 50 . . . into a longitudinally extending conduit 10” but “fail[s] to
disclose attaching a pliant material to the cable by using an adhesive.” Final
Act. 7. The Examiner finds that Holland “teaches attaching a pliant material
66 . . . to a cable 64 . . . by using an adhesive . . . to mak[e] a cable abrasion-
resistant . . . when being moved or pulled.” Id. The Examiner reasons that it
would have been obvious to a skilled artisan to modify Conti “to attach a
pliant material to a cable, as taught by Holland, for the purpose of making a
cable abrasion-resistant.” Final Act. 8 (citing Holland ¶ 30); see also id. at
14 (Conti “disclose[s] that the cable is being moved (advanced). Therefore,
attaching a pliant material to a cable, as taught by Holland, will be beneficial
and useful to make the cable more resistant.”).
Appellant contends that Conti “recognizes that there is a problem with
insertion, and it solves that problem by applying lubricant to the cables”;

rejection. See Appellant’s Response to Office Action filed Sept. 13, 2017;
see also Final Act. 2–6. The Terminal Disclaimer, approved by the Office
on September 18, 2017, renders the double patenting rejection moot.

Appeal 2018-008208
Application 14/712,101
4
therefore, Conti “does not need a sleeve of pliant material to assist in the
introduction of the cable into the conduit.” Appeal Br. 6. Appellant also
contends that Conti “does not need anything attached to its cables because it
uses a lubricant to ease insertion. It certainly does not need the abrasive-
resistant sleeve of Holland.” Id. at 7; see also id. (Conti “does not need such
a sleeve.”).
Appellant has the better position here. Conti discloses an inner duct
apparatus “comprised of plastic material whereby the particularly effective
lubricant to be applied to the outer surface of the inner duct during
placement operation is a water-based polymer which will wet the plastic
surface of the inner duct.” Conti 3:64–4:2. Conti further discloses that
“[t]his type of lubricant will adhere to the surface of the inner duct to insure
the presence of effective quantities of lubricant during the placement
operation” and that “[t]he lubricant composition is non-degrading to plastic
material and, therefore, [is] especially useful for lubricating the surface of
the inner duct apparatus of the present invention as well as a plastic sheathed
cable which will be placed in the inner duct.” Id. at 4:2–13; see also id.
Abstract (“The inner duct has a continuous side wall with protruding ribs on
the inside and outside surfaces to maintain an effective supply of lubricant
during the installation of the inner duct and cable in the inner duct.”).
Conti also discloses that as shown in Figure 4, “reservoirs of lubricant
are established by the spaces between ribs 36 and from these reservoirs,
lubricant is continuously fed to the protruding edge surfaces of the ribs to
maintain an effective lubricant film between the inner duct and the duct 10.”
Conti 6:31–36, Fig. 4. Additionally, Conti discloses that
[t]he presence of lubricant on the cable greatly reduces friction
and thus the pulling force required to install the cable in the inner
Appeal 2018-008208
Application 14/712,101
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duct. It can be seen from FIG. 4, that the protruding ribs from
the inner surface of the inner duct provide reservoir areas for
lubricant which is supplied to the edges of the ribs to maintain an
effective film of lubricant on the outer surface of the cable 50
while advanced in the inner duct 30.

Id. at 6:61–68 (emphasis added), Fig. 4.
We appreciate the Examiner’s position that a skilled artisan would
understand that “in practice[,] lubricated systems are not always perfectly
lubricated due to inhibited lubricant flow and/or improper maintenance of
the fluid within the passage/channel” and, in that scenario, the skilled artisan
would “look to supplemental means for protecting the cable within the
tube/duct.” Ans. 2.5 However, as Conti already discloses an effective
supply/quantity of lubricant that is “continuously fed” during the cable
installation process in order to reduce friction and the pulling force required
to install the cable, we fail to see, and the Examiner fails to adequately
explain, why modifying Conti’s cable to include a pliant material attached to
the cable, as taught by the “unlubricated system” of Holland, would resolve
the problems suggested by the Examiner associated with any imperfections
in lubrication systems, to thereby further aid in reducing friction/abrasion
during insertion/installation of Conti’s cable (i.e., would “make [Conti’s]
cable more [friction/abrasion] resistant”) and/or would further protect
Conti’s cable “within the tube/duct.” See Ans. 2–3 (emphasis added); see
also Final Act. 8, 14; Reply Br. 2 (Conti addresses “the friction problem
associated with insertion of cable into a conduit by providing an elaborate
lubrication system both between the tube and the conduit and between the

5 Examiner’s Answer (“Ans.”), dated June 11, 2018.
Appeal 2018-008208
Application 14/712,101
6
cable and the tube.”) (emphasis added).6 The Examiner does not propose
the materials of Holland and Li as an alternative to, or substitute for, the
lubrication system of Conti. However, the Examiner does not provide
sufficient evidence or technical reasoning to demonstrate it would have been
obvious to the skilled artisan to employ such systems in combination. As
the Examiner fails to provide a sufficient reason based on rational
underpinnings to combine the teachings of Conti and Holland, the Examiner
fails to establish by a preponderance of the evidence that the combined
teachings of Conti, Holland, and Li disclose the cable introduction method
of claim 5.7
For the above reasons, we do not sustain the Examiner’s rejection of
claims 5 and 6 as unpatentable over Conti, Holland, and Li.

Claims 8–10
Independent claim 8 is directed to a method of introducing a cable
into a longitudinally extending conduit and, similar to claim 5, includes
“attaching a pliant material” to the cable. Appeal Br. 10 (Claims App.).
Additionally, each of independent claims 9 and 10 are directed to a method
of introducing a plurality cables into a longitudinally extending conduit and,
similar to claim 5, each includes “attaching a pliant material” to the cable.
Id. at 11 (Claims App.). The Examiner relies on the same unsupported
findings and reasoning as that discussed above for claim 5. See Final Act.
10–12. Accordingly, for reasons similar to those discussed above for claim

6 Reply Brief (“Reply Br.”), filed Aug. 9, 2018.
7 The Examiner notes that “Li is solely used to teach known materials
commonly applied in the art of woven fabric covered cables.” Ans. 4; see
also Final Act. 7–8.
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Application 14/712,101
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5, we do not sustain the Examiner’s rejection of claims 8–10 as unpatentable
over Conti, Holland, and Li.

Obviousness over Conti, Holland, Li, and Delomel
Claim 7
Claim 7 depends from claim 5. Appeal Br. 10 (Claims App.). The
Examiner does not rely on the teachings of Delomel to remedy the
deficiencies discussed above for claim 5. See Final Act. 9. Accordingly, for
reasons similar to those discussed above for claim 5, we do not sustain the
Examiner’s rejection of claim 7 as unpatentable over Conti, Holland, Li, and
Delomel.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5, 6, 8–10 103(a) Conti, Holland, Li 5, 6, 8–10
7 103(a) Conti, Holland, Li,
Delomel
7
Overall
Outcome
5–10

REVERSED