Obviousness Found Even When the Burden to Prove Inherency Remains on Examiner

Yoshiya Nakamura | October 18, 2017

SOUTHWIRE COMPANY v. CERRO WIRE LLC

September 8, 2017

Before Lourie, Moore and Hughes.  Opinion by Lourie.

Summary

Southwire Co. (the patent owner) owns No. 7,557,301 (the ’301 patent). An inter parte reexamination is initiated by a third party requestor, Cerro wire LLC (the requester).  All the claims of the ’301 patent are found obvious over prior art references under 35 U.S.C. § 103.  It is decided in the reexamination that one of the combinations of cited references inherently discloses a claimed parameter at issue.  CAFC affirms PTAB’s conclusion that the claims are unpatentable as obvious, while rejecting part of the reasoning that the claimed parameter is inherently disclosed in the cited references.

Japanese Summary

本件特許はケーブルのジャケットの材料に潤滑剤を含ませて製造することで、完成したケーブル表面のフリクションを減らし、ケーブルをビル内等に設置するのに必要な引っ張り力を減少させることができるケーブルの製造方法に関する。当事者系再審査請求において、特許クレームは先行技術文献から自明であると拒絶され、審判部もその結論を支持した。特許権者は、主要引用例(Summers)にクレームの数値限定(ケーブルを設置するために引っ張る力を少なくとも30%減少させる特性)が内在的に(inherently)開示されているから自明であるとした特許庁の認定を不服として、巡回区控訴裁判所(CAFC)に提訴した。

CAFCは、前記引用例はケーブル表面のフリクションや設置のための力を測定しておらず、開示されている製法が必然的に(necessarily)クレームの数値限定を達成できること示す事実・証拠がないため、クレームの数値限定が内在的に開示されているという特許庁の認定は間違いであると指摘し、内在的開示の存在を否定した。内在的な開示は認められないが、その一方で主要引用例には製造時に潤滑剤を混入してフリクションの小さいケーブルを製造し得るプロセス自体は教示されているので、先行技術を克服するためにはクレーム限定が予期せぬ結果であることを示さなければならないとし、本件では予期せぬ結果の証明がないことを理由に発明が自明であるとの結論を支持した。

特許クレームは先行技術の製法とほぼ同一に見えるが、特許権者が定義したパラメータ(ケーブルを設置するために必要な力の範囲)をクレームすることで特許になった製法である。このようなパラメータ特許でも、先行技術の製法で「必ず」同じ結果が得られることを特許庁が示さなければ内在的な開示を認定してはいけないことが示唆された。しかし、他方で、先行技術と製法が実質的に同じである点で自明性が仮定されるので、出願人はそのパラメータ限定が予期せぬ効果であること示す証明責任があることが示唆された。


Details

The ’301 patent discloses a method of manufacturing an electric cable, incorporating lubricant into an outer sheath during the manufacturing process such that the lubricant migrates to the surface of the sheath and results in a reduction in pulling force required to install the cable.  One prior art solution is applying a lubricant to the cable when installed.

Representative claim 1 of the ’301 patent recites:

 1.  In a method of manufacturing a finished electrical cable having a conductor core and a jacket formed primarily of a first material, the jacket surrounding at least said conductor core and defining the outermost exterior surface of the finished cable, the improvement comprising

combining a preselected lubricant with said first material prior to the formation of said jacket to provide a reduced coefficient of friction of said outermost exterior surface and also reduce the amount of force required to pull the cable during its installation,

in which migrates through said jacket to be available at said outermost exterior surface of said finished cable during the cable’s installation through building passageways, the finished electrical cable having the characteristic that an amount of force required to install said cable through corresponding holes in an arrangement of four 2″ x 4″ wood blocks having holes drilled at 15° through the broad face and the centerlines of the holes are offset 10″ and pulled through at 45° to the horizontal from the last block is at least about a 30% reduction in comparison to an amount of force required to install a non-lubricated cable of the same cable type and size through corresponding holes in said arrangement.

Among various combinations of prior art references are discussed in the rejections in the inter parte reexamination, the patent owner appealed to CAFC attacking one combination of “Summers” and two secondary references.  The patent owner disputes the Board’s interpretation of Summers in CAFC.  The patent owner also argued that evidence of long-left need rebuts the obviousness rejections.  PTAB agreed with most arguments from the requester, finding that “the finished electrical cable having the characteristic that an amount of force required to install said cable … is at least about a 30% reduction in comparison to an amount of force required to install a non-lubricated cable of the same cable type and size …” is an inherent result from the cable produced by the method disclosed in Summers.

The main reference, Summers, contains the following passage:

Cable jackets 45, 55 can be formed of a suitable plastic material, for example polyethylene, and, to reduce resistance to a cable pulling force, can include a friction reducing additive therein.  The friction reducing additive can function by migrating to the surface of cable jackets 45, 55 and lubricating the interface between the cable jackets and virtually any surface of or in the cable passageway. … Examples of suitable friction reducing additives include fatty acids compounds or derivatives, e.g., glycerol mono-stearate, stearic acid, or a fatty amide wax.

(Col. 3, line 65 to col. 4, lines 12.)

The patent owner argues that Summers “teaches five different factors that could go into reducing pulling force, with the coefficient of friction being only one of them” and “does not say which of these factors contributes how much to a reduction in pulling force, if at all.”  The patent owner also submitted their expert’s (Mr. Sasse) declarations showing that increased amounts of lubricant added to the material does not always result in a decreased coefficient friction.

However, PTAB picked some data from the declarations to support the obviousness conclusion.

(Reproduced from the PTAB decision, pages 12 and 15.)

The patent owner argues that PTAB engaged in improper picking and choosing “in selecting only the data from the declarations, by evidence that supported the expert’s conclusion that there is no necessary relationship between the concentration of lubricant added to a polymeric material and that material’s coefficient of friction” and omitting critical data that “runs directly counter to the Board’s conclusion.”

Although Summers never measures a pulling force or friction of the cable, the PTAB finds that Summers implicitly compares cable pulling force for cable jackets having a friction reducing additive to cable pulling force for cable jackets of similar dimension.  PTAB held that the 30% reduction limitation is inherently present in Summers because this reference “teaches that the lubricant must reduce the friction and lubricate the cable passageway, reasonably suggesting the pulling must also be reduced.

As to the patent owner’s argument based on a long-felt need, PTAB held that, “while Southwire [the patent owner]’s evidence showed a long-felt need, it did not establish a long-felt need without solution,” because Summers suggested similar solutions using a lubricant in the manufacturing process.

CAFC first discusses the issue of inherency and rejected the requester’s argument that a prima facie case for obviousness is met where the only difference between the claimed and prior art process is a property that results from performing the process, by holding, as decided in many precedent cases:

the Board erred in relying on inherency in making its obviousness determination.  We have held that “the use of inherency in the context of obviousness must be carefully circumscribed because ‘[t]hat which may be inherent is not necessarily known’ and that which is unknown cannot be obvious.” … we have emphasized that “the limitation at issue necessarily must be present” in order to be inherently disclosed by the reference.

CAFC stated that PTAB erred in concluding that Summers renders it obvious to have selected lubricant amounts that can achieve that same result, without finding that Summers necessarily would achieve a 30% reduction in pulling force.

However, CAFC agrees the conclusion in PTAB that the claims at issues are obvious over the cited references.  Based on the findings that Summers discloses an “identical or substantially identical” process, and the patent method does not differ “in any material way from the process disclosed in Summers (in view of Dow),” CAFC indicates that the burden to “prove that the subject matter shown to be in the prior art does not possess the characteristic relied on” is shifted from the PTO to the applicant.  In this case, CAFC affirms the obviousness conclusion because the patent owner did not provide any evidence or any explanation in the specification that the claimed characteristic is an unexpected result or “something other than an observed result of an old process.”

As to the long-left need argument, CAFC agrees with the conclusion in PTAB, holding that objective evidence submitted by the patent owner is insufficient because it “lacked a nexus to the claimed invention, and that any long-felt need adduced from the evidence had already been met by Summers because the prior art “indisputably provided several solutions before the ’301 patent’s priority date.

Take Away

The burden to prove inherency remains on examiner in the absence of evidence of record establishing that a method disclosed in prior art necessarily satisfies the claimed limitation.  Even so, obviousness can be found if the applicant fails to prove that the claimed limitation is unexpected or something other than an observed result of the disclosed process when the process appears identical to the claimed process.

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