throbber
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
`
`07/01/2020
`7590
`26360
`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
`
`07/01/2020
`
`DELIVERY MODE
`
`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)
`
`ONE-E-WAY 2009
`Apple v. One-E-Way
`IPR2021-00283
`
`001
`
`

`

`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.
`
`ONE-E-WAY 2009
`Apple v. One-E-Way
`IPR2021-00283
`
`002
`
`

`

`Appeal 2018-008208
`Application 14/712,101
`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:
`Date
`Reference Name
`Document ID
`July 2, 1991
`Conti
`US 5,027,864
`Dec. 1, 1992
`Delomel
`US 5,167,399
`June 9, 2015
`Allen
`US 9,054,507 B2
`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
`2
`
`ONE-E-WAY 2009
`Apple v. One-E-Way
`IPR2021-00283
`
`003
`
`

`

`Appeal 2018-008208
`Application 14/712,101
`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.
`
`
`3
`
`ONE-E-WAY 2009
`Apple v. One-E-Way
`IPR2021-00283
`
`004
`
`

`

`Appeal 2018-008208
`Application 14/712,101
`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
`
`4
`
`ONE-E-WAY 2009
`Apple v. One-E-Way
`IPR2021-00283
`
`005
`
`

`

`Appeal 2018-008208
`Application 14/712,101
`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.
`5
`
`ONE-E-WAY 2009
`Apple v. One-E-Way
`IPR2021-00283
`
`006
`
`

`

`Appeal 2018-008208
`Application 14/712,101
`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.
`
`6
`
`ONE-E-WAY 2009
`Apple v. One-E-Way
`IPR2021-00283
`
`007
`
`

`

`Appeal 2018-008208
`Application 14/712,101
`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
`35 U.S.C. § Reference(s)/Basis Affirmed Reversed
`Rejected
`5, 6, 8–10
`
`5, 6, 8–10
`
`
`
`
`
`103(a)
`
`Conti, Holland, Li
`
`
`
`7
`
`103(a)
`
`
`
`Overall
`Outcome
`
`
`Conti, Holland, Li,
`Delomel
`
`
`
`
`
`
`7
`
`5–10
`
`REVERSED
`
`7
`
`ONE-E-WAY 2009
`Apple v. One-E-Way
`IPR2021-00283
`
`008
`
`

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