Southwire Company v. Cerro Wire LLC et al.


Docket No. 2016-2287

LOURIE, MOORE, HUGHES
September 8, 2017

Brief summary: PTAB obviousness conclusion affirmed (30% reduction limitation is “an observed result on an old process”).

Summary: Southwire appealed PTAB inter partes reexamination decision that claims 1-42 of US 7,557,301 relating to methods for manufacturing electric cable are unpatentable under § 103 (obviousness). The Examiner (affirmed by the Board) rejected all of the claims as obvious over combinations of prior art, one of which is considered here (Summers (US 6,160,940), Dow and UL-719). Southwire argued with the Board’s interpretation of Summers. The ‘301 claims require “the finished electrical cable” to provide “a 30% reduction” in the pulling requird during installation as compared to existing wires, which the Examiner and the Board found was inherently disclosed by Summers (“an inherent result of the cable being made in accordance with the method steps”). The Board rejected all of Southwire’s expert declarations and objective evidence as failing to be complete, lacking “factual support because it contained only ‘general allegation[s]’ without corroborating evidence”, and not establishing “a long-felt need without solution”. The FC panel opinion explained that the Board’s legal determinations are reviewed de novo (In re Elsner, FC 2004; Apple, FC 2016 (obviousness)), and the factual findings underlying those determinations for substantial evidence (In re Gartsdie, FC 2000; Consol. Edison, US 1928 (reasonable mind might accept the evidence)). Southwire argued the Board improperly relied on “inherency” since “a limitation is not inherent…unless it is necessarily, i.e., always, present” and that finding a “reason to select lubricant concentrations” to achieve the claimed limitation “is the antithesis of inherency, which requires certainty, not experimentation.” The FC panel agreed “the Board erred in relying on inherency” by only “finding that it merely renders that limitation obvious” (vs. “Summers necessarily would achieve” the claimed reduction in pulling force) (“in the context of obviousness must be carefully circumscribed” (PAR Pharm., FC 2014) “because ‘[t]hat which may be inherent is not necessarily known’ and that which is unknown cannot be obvious” (Honeywell, FC 2017)). However, it also found the Board’s error harmless because it “made the necessary underlying factual findings to support an obviousness determination” (“None of the patented steps differ in any material way from the process disclosed in Summers (in view of Dow). And there is no evidence that the claimed 30% reduction…would have been unexpected or unattainable from…Summers.”) “[W]here ‘all process limitations…are expressly disclosed by [the prior art reference], except for the functionally expressed [limitations 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” (In re Best, CCPA 1977). The FC panel described the 30% reduction limitation as “an observed result on an old process, written into the claim in an attempt to avoid the prior art process.” And it agreed with the Board’s conclusion regarding Southwire’s proffered objective evidence. The decision was therefore affirmed.

This entry was posted in Inherency, Obviousness, Reexamination. Bookmark the permalink.

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