Ex Parte 7,749,024 et al

Patent Trial and Appeal Board

Jul 15, 2014

95000594 (P.T.A.B. Jul. 15, 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.
95/000,594 11/17/2010 7,749,024 CWC-10-5072REX 5399
32914 7590 07/16/2014
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
07/16/2014 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
____________

CERRO WIRE, INC.
Requester and Respondent

v.

SOUTHWIRE COMPANY
Patent Owner and Appellant
____________

Appeal 2014-005956
Reexamination Control 95/000,594
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 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 1-15.
Third-Party Requester Encore Wire Corp. urges that the Examiner’s decision
must be affirmed. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm.

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. 95/000,594, was filed on November 17, 2010, by Third-Party Requester
Cerro Wire, Inc.
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.

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.
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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. 1-2.) The cases have been either
terminated or dismissed.

The Claims
The original patent claims were amended during the reexamination
proceedings. Independent claims 1, 4, and 6 are exemplary, with disputed
limitations in italics, and underlining to show claim amendments:
1. In a THHN electrical cable of the type comprising a
conductor core and sheath surrounding said conductor core, in which
the sheath has at least its exterior portion formed of nylon material, an
improvement in which a erucamide pulling lubricant, introduced in
said material during the manufacture of the cable but prior to the
formation of said sheath, either permeates throughout, or migrates
through, at least said exterior portion of the sheath to be available at
the exterior surface of said sheath as said THHN cable is pulled along
an installation surface, through building passageways and enclosures
and in a concentration sufficient to reduce the required installation
pulling force for installing the THHN cable through building
passageways and enclosures.

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
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cable is pulled along an installation surface through building
passageways and enclosures; 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.
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 1-15 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Mehta (US 6,080,489; June 27, 2000).
2. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Mehta and Wiles (John Wiles, Clarifying Confusing Cables, 66 HOME
POWER 82-84 (1998)).
3. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Mehta and Hofmann (US 5,856,405; Jan. 5, 1999).
4. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Mehta and Chu-Ba (US 5,460,885; Oct. 24, 1995).
5. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Rinehart (US 5,356,710; Oct. 18, 1994) and Mehta.
6. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Rinehart and Ishikawa (JP 1166410 A; June 30, 1989).
7. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Rinehart, Berry (US 5,227,080; July 13, 1993), and Hase
(US 6,646,205; Nov. 11, 2003).
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8. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Wiles, Berry, and Hase.
9. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Hofmann, Berry, and Hase.
10. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Chu-Ba, Berry, and Hase.
11. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Rinehart, Aoki (US 4,952,021; Aug. 28, 1990), and Hase.
12. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Wiles, Aoki, and Hase.
13. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Hofmann, Aoki, and Hase.
14. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Chu-Ba, Aoki, and Hase.
15. Claims 1-3, 8, and 13-15 stand rejected under 35 U.S.C. § 103(a)
as obvious over Rinehart, Marquis (Richard E. Marquis & Adam J. Maltby,
An Introduction to Fatty Acid Amide Slip and Anti-Blocking Agents,
POLYMERS, LAMINATIONS & COATINGS CONF. (1998)), and Hase.
16. Claims 1-3, 8, and 13-15 stand rejected under 35 U.S.C. § 103(a)
as obvious over Chu-Ba, Marquis, and Hase.
17. Claims 1-3, 8, and 13-15 stand rejected under 35 U.S.C. § 103(a)
as obvious over Hofmann, Marquis, and Hase.
18. Claims 1-3, 8, and 13-15 stand rejected under 35 U.S.C. § 103(a)
as obvious over Wiles, Marquis, and Hase.
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19. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Rinehart and Dow Corning (Dow Corning Corporation, DOW
CORNING® MB50-011 Masterbatch (1997-99)).
20. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Wiles, Dow Corning, and Hase.
21. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hofmann, Dow Corning, and Hase.
22. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, Dow Corning, and Hase.
23. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Rinehart, Kamioka (JP 9045143 A; Feb. 14, 1997), and Hase.
24. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Wiles, Kamioka, and Hase.
25. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hofmann, Kamioka, and Hase.
26. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, Kamioka, and Hase.
27. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Rinehart, Flum ’380 (US 4,416,380; Nov. 22, 1983), and Hase.
28. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Wiles, Flum ’380, and Hase.
29. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hofmann, Flum ’380, and Hase.
30. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, Flum ’380, and Hase.
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31. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Rinehart, Flum ’949 (US 4,454,949; June 19, 1984), and Hase.
32. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Wiles, Flum ’949, and Hase.
33. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hofmann, Flum ’949, and Hase.
34. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, Flum ’949, and Hase.
35. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Rinehart, Bustos (US 5,614,288; Mar. 25, 1997), and Hase.
36. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Wiles, Bustos, and Hase.
37. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hofmann, Bustos, and Hase.
38. Claims 4-7 and 9-12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chu-Ba, Bustos, and Hase.
39. Claims 1-15 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
40. Claims 1-15 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.
41. Claims 1-15 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:
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Declaration under 37 C.F.R. § 1.132 of Philip A. Sasse, dated
June 4, 2010, accompanied by Exhibits 1-3 (“Sasse Declaration”).
Declaration under 37 C.F.R. § 1.132 of William N. Unertl, Ph.D.,
dated February 25, 2011 (submitted by Requester) (“Unertl
Declaration”).

ANALYSIS
§ 102 Rejection – Mehta
Claims 1-5, 8-10, and 13-15
The Examiner interpreted independent claim 1 as drafted in Jepson
format and thus, the Examiner found that the recitation of “a THHN
electrical cable” was implicitly admitted as conventional or known in the
prior art. (RAN 41.) Similarly, the Examiner also interpreted independent
claim 4 as drafted in Jepson format and thus, the Examiner found that the
recitation of “a finished THHN cable assembly” was implicitly admitted as
conventional or known in the prior art. (RAN 43.)
The Examiner found that Mehta describes the limitation “a
concentration sufficient to reduce the required installation pulling force for
installing the THHN cable through building passageways and enclosures,”
as recited in independent claim 1. (RAN 42.) Similarly, the Examiner
found that Mehta describes 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,” as recited in independent claim 4. (RAN 43.)
In particular, the Examiner found that “Mehta discloses exactly the same
method steps, material compositions, [and] products as those recited in
claims 1-15 of the ’024 patent, and thus the properties of the product must be
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explicitly or inherently the same.” (RAN 19.) The Examiner also found that
“it 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.) are remain same by the materials modifications
required to reduce the coefficient of friction,” and “[i]n Mehta, the
coefficient of friction is reduced substantially while other properties are little
affected.” (RAN 20.) The Examiner’s determination that the claims are
anticipated is supported by a preponderance of the evidence.
Mehta relates to thermoplastic compositions “having reduced
coefficient of friction, consistent coefficient of friction over time, increased
hydrophobicity, and improved abrasion resistance.” (Col. 1, ll. 6-9.) Mehta
describes a thermoplastic resin (A) (e.g., nylon) (col. 1, ll. 48-51) that
includes a siloxane blend (B) (col. 2, ll. 28-30). Mehta explains that the
thermoplastic compositions can further contain a lubricant “up to about
30 percent by weight” such as erucamide. (Col. 3, l. 63 to col. 4, l. 20.)
Mehta also explains that the “siloxane blend (B) . . . added to the
thermoplastic resin (A) . . . serves as a 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.) Mehta further
explains that its method of extrusion is applicable in the production of wire
or cable extrusion. (Col. 4, ll. 42-45.)
Where the claimed and prior art products are identical or substantially
identical in structure or composition, or are produced by identical or
substantially identical processes, a prima facie case of either anticipation or
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obviousness has been established. In re Best, 562 F.2d 1252, 1255 (CCPA
1977). Thus, because Mehta describes production of a wire or cable that is
extruded from a thermoplastic resin (e.g., nylon) (col. 1, ll. 47-54)
containing a lubricant (e.g., siloxane and erucamide) that acts as a surface
modifier such that “the resulting extrudate has a reduced coefficient of
friction” (col. 4, ll. 22-28), which is the same one as claimed, the
preponderance of the evidence supports the Examiner’s finding that the
lubricants of Mehta (e.g., siloxane and erucamide) would achieve the
claimed purpose.
First, Patent Owner argues that “Mehta is directed to the use of
siloxanes as processing aids with a focus on application to films.” (PO App.
Br. 9.) Similarly, Patent Owner argues that “there is no factual evidence
showing that the specifically blended siloxane of Mehta does more than
affect the COF of the raw material when incorporated with a linear low
density polyethylene in a film.” (PO App. Br. 10.) However, Mehta
expressly states that this method is applicable in the production of wire or
cable extrusion (col. 4, ll. 42-45) and accordingly, the extruded cable of
Mehta would also exhibit a reduction in coefficient of friction.
Second, Patent Owner also argues that “Mehta teaches nothing
regarding pulling force of the claimed THHN cable.” (PO App. Br. 10.)
However, as discussed previously, because Mehta describes production of a
wire or cable that is extruded from a thermoplastic resin (e.g., nylon) (col. 1,
ll. 47-54) containing a lubricant (e.g., siloxane and erucamide) that acts as a
surface modifier such that “the resulting extrudate has a reduced coefficient
of friction” (col. 4, ll. 22-28), which is the same one as claimed, a prima
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facie case of either anticipation or obviousness has been established.
Moreover, the claims do not require the cable to be pulled. Rather, the
claims only require that, when the cable is pulled along the installation
surface, the lubricant reduces the pulling force. Because the amounts and
type of lubricant are the same, it would have been reasonably expected that
the lubricant would achieve the claimed function.
Third, Patent Owner argues that “[a]s demonstrated by Appellant’s
expert, Philip Sasse, a lower COF of a material measured by the sled test
such as that used in Mehta does not always result in a reduced installation
pulling force of a cable as required by the claimed invention.” (PO App.
Br. 11; see also PO Reb. Br. 6.) In particular, Patent Owner argues that
“Exhibit 2 of the Declaration of Philip A. Sasse . . . shows blends of PVC
polymer containing erucyl stearamide, oleamide and erucamide lubricants
with increasing coefficients of friction of 0.40, 0.42 and 0.43, respectively,
as measured using a Dynisco (sled) tester.” (PO App. Br. 11.) However,
Patent Owner’s arguments and evidence are not commensurate in scope with
claims 1 and 4, because the claims require and a nylon exterior surface,
rather than PVC, which was used in the Sasse Declaration. Furthermore,
claim 4 requires “a silicone based pulling lubricant,” rather than erucyl
stearamide, oleamide and erucamide lubricants. In addition, the
“Background of the Invention” section of the ’024 patent acknowledges that
installation of electrical cable through narrow conduits, raceways,
cabletrays, or passageways “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. 46-49) and “the general industry
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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. 56-
60).
Last, Patent Owner, in reference to paragraph [0008] of the Untertl
Declaration, argues that “since the COF actually describes a system of
conditions rather than a single body, simply lowering the COF of a material
according to the sled test (as in Mehta) does not necessarily mean that a
cable jacketed with that material will also have a lower COF” and “Dr.
Untertl also conceded that the sled test has limited application to the pulling
conditions under which THHN cable is installed in buildings.” (PO App.
Br. 13; see also PO Reb. Br. 6.) Again, Patent Owner’s argument is not
commensurate in scope with claims 1 and 4, because the claims do not
require measurement of a precise value for coefficient of friction.
Accordingly, we affirm the Examiner’s decision to reject claims 1-5,
8-10, and 13-15 under 35 U.S.C. § 102(a) as anticipated by Mehta.

Claims 6, 7, 11, and 12
The Examiner found that Mehta describes the limitation “in which the
concentration, by weight, of the silicone based pulling lubricant is at least
9% by weight,” as recited in dependent claim 6. (RAN 44.) Similarly, the
Examiner found that Mehta describes the limitation “in which the
concentration, by weight, of the high molecular weight silicone oil is at least
9% by weight,” as recite in dependent claim 7. (Id.) We agree with the
Examiner’s determination.
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As discussed previously, Mehta describes a thermoplastic resin (A)
(e.g., nylon) (col. 1, ll. 48-51) that includes a siloxane blend (B) (col. 2,
ll. 28-30). Mehta explains that “[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” and “[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. 24-29.)
Thus, because Mehta explains that up to 50 parts per 100 parts (i.e., from
zero to 50%) of siloxane blend can be added to the thermoplastic resin,
Mehta describes the limitations “in which the concentration, by weight, of
the silicone based pulling lubricant is at least 9% by weight” and “in which
the concentration, by weight, of the high molecular weight silicone oil is at
least 9% by weight.”
Patent Owner argues that “[s]imple math . . . reveals that at best,
Mehta discloses a silicone-based lubricant concentration of less than 7% by
weight” and “[l]ess than 7%, is not the claimed at least 9%.” (PO App.
Br. 15.) However, as discussed previously, Mehta explains that up to 50%
siloxane blend can be used and 0.5 to 7% siloxane blend is only a preferred
embodiment.
Accordingly, we affirm the Examiner’s decision to reject claims 6, 7,
11, and 12 under 35 U.S.C. § 102(a) as anticipated by Mehta.

§ 103 Rejections
We do not reach the additional cumulative rejections of claims 1-15
under 35 U.S.C. § 103(a) as obvious over various combinations of Mehta,
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Hofmann, Chu-Ba, Rinehart, Ishikawa, Berry, Hase, Aoki, Marquis, Dow
Corning, Kamioka, Flum ’380, Flum ’949, and Bustos. Affirmance of the
anticipation based rejection discussed previously renders it unnecessary to
reach the remaining obviousness rejections, as claims 1-15 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 Rejections
Written Description
The Examiner adopted Requester’s argument that “[t]he specification
of the ‘024 patent does not provide any description of the parameters of such
building passageways and enclosures, such as whether they are straight,
curved, or include multiple bends” and “[t]he specification also does not
define the relationship between the cable and the building passageways and
enclosures, for example, the size of the passageway or enclosure compared
with the size of the cable being installed, or the material from which the
passageway or enclosure is formed.” (RAN 39; Requester Resp. to Office
Action 3, filed Nov. 18, 2011.) Accordingly, the Examiner found that the
“the limitation [‘through building passageways and enclosures’] lacks
written description support in the ‘024 patent disclosure.” (RAN 39.) 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
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“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 the
’024 patent illustrates a “coefficient of friction test apparatus . . . to give a
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 1 recites “a concentration sufficient to reduce the required
installation pulling force for installing the THHN cable through building
passageways and enclosures” (emphases added). Likewise, 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” (emphases
added). Accordingly, claims 1 and 4 implicitly require that a comparison be
made between cable that lacks the lubricant or comprises it in insufficient
quantities to achieve the reduced pulling force when pulled through the same
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“building passageways and enclosures”, with the only difference between
such THHN cables being the concentration of erucamide or silicone based
pulling lubricant in the nylon material. 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.” The Examiner’s requirement that the Specification of the ’024
patent provide more detailed description of the building passageways and
enclosures is improper, because the latter are conventional and the claim
does not require the installation surface to be of a specific material, texture,
or architecture.
Accordingly, we reverse the Examiner’s decision to reject claims 1-15
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.

Enablement
The Examiner adopted Requester’s argument that “[t]he specification
of the ‘024 patent does not enable one of ordinary skill in the art to
determine what a sufficient amount of lubricant is other than an amount of
lubricant that reduces the coefficient of friction” and “to the extent the
phrase ‘through building passageways and enclosures’ disconnects the
reduction installation pulling force from a reduction in coefficient of friction
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. . . the specification is not enabling.” (RAN 40; Requester Resp. to Office
Action 4, filed Nov. 18, 2011.) The Examiner further found that:
[t]he phrase “through building passageways and enclosures”
used in claims 1, 4, 8-9 and 13 disconnects the reduction in
installation pulling force from a reduction in coefficient of
friction since the specification of the ’024 patent does not
enable one of ordinary skill in the art to determine what a
sufficient amount of lubricant is other than, an amount of
lubricant that reduces the coefficient of friction.
(RAN 40.) We do not agree with the Examiner’s determination.
Claims 1 and 4 require that the installation pulling force is reduced by
the lubricant. Thus, implicitly, the claims require the pulling force to be
reduced in comparison to a cable either lacking the claimed lubricant or
comprising an insufficient amount to achieve this effect. The Specification
of the ’024 patent discloses a coefficient of friction test apparatus that
enables the limitation “through building passageways and enclosures.”
Accordingly, we reverse the Examiner’s decision to reject claims 1-15
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.

§ 112, Second Paragraph Rejection
The Examiner adopted Requester’s argument that “[t]he claim
amendments violate the tenants of 35 U.S.C. § 112, second paragraph,
because they do not set an objective standard for determining infringement”
and “the recitation of the installation is ‘through building passageways and
enclosures’ does not provide the necessary objective standard.” (RAN 40-
41; Requester Resp. to Office Action 2, filed Nov. 18, 2011.) We do not
agree with the Examiner’s determination.
Appeal 2014-005956
Reexamination Control 95/000,594
Patent 7,749,024

18
Again, claims 1 and 4 only require a comparison of multiple
structurally identical THHN cables (i.e., the same thickness and rigidity)
pulled through the same “building passageways and enclosures”, with the
only difference between such THHN cables being the concentration of
erucamide or silicone based pulling lubricant in the nylon material. Thus,
claims 1 and 4 neither require that the pulling force be reduced by specific
amount, nor do the claims not require the calculation of a precise coefficient
of friction. Accordingly, the coefficient of friction test apparatus disclosed
in the ’024 patent is sufficient to objectively determine “a concentration
sufficient to reduce the required installation pulling force for installing the
THHN cable through building passageways and enclosures” or “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.”
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 1-15 under U.S.C. § 102(a)
is affirmed.
The Examiner’s decision to reject claims 1-15 under 35 U.S.C. § 112,
first paragraph, is reversed.
Appeal 2014-005956
Reexamination Control 95/000,594
Patent 7,749,024

19
The Examiner’s decision to reject claims 1-15 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

PATENT OWNER:

GARDERE WYNNE SEWELL LLP
Intellectual Property Section
3000 Thanksgiving Tower
1601 Elm Street
Dallas, TX 75201-4671

THIRD PARTY REQUESTER:

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