from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 95/000, 696.
T. Bradley, Alston & Bird LLP, Charlotte, NC, argued for
appellant. Also represented by KEITH E. BROYLES, Atlanta, GA;
CHRISTOPHER L. McArdle, New York, NY.
Richard Steadman, DLA Piper U.S. LLP, Chicago, IL, argued for
appellee. Also represented by JENNIFER E. Lacroix.
LOURIE, MOORE, and HUGHES, Circuit Judges.
LOURIE, CIRCUIT JUDGE.
wire Co. ("South wire") appeals from the decision
of the U.S. Patent and Trademark Office ("the PTO")
Patent Trial and Appeal Board ("the Board") in an
inter partes reexamination concluding that claims
1-42 of U.S. Patent 7, 557, 301 ("the '301
patent") are unpatentable under 35 U.S.C. § 103.
See Cerro Wire, Inc. v. Southwire Co., No.
2015-004351, 2015 Pat. App. LEXIS 10285 (P.T.A.B. Sept. 29,
2015) ('Final Decision"); Cerro Wire, Inc. v.
Southwire Co., No. 2015-004351, 2016 Pat. App. LEXIS
1942 (P.T.A.B. May 2, 2016) (decision on request for
rehearing). For the reasons that follow, we affirm.
owns the '301 patent, which is directed to a method of
manufacturing an electric cable, wherein a lubricant is
incorporated into the outer sheath such that the lubricant
migrates to the surface of the sheath and results in a
reduction in pulling force required to install the cable.
See, e.g., '301 patent Abstract. According to
the patent, one prior art solution for reducing the pulling
force on a cable during installation was a post-manufacturing
method of coating the exterior surface of the cable with a
lubricant, such as petroleum jelly, immediately prior to
installation. See id. col. 111. 25-28. Southwire
explains that this solution was referred to as applying
"soap" to the cable, and that it was expensive and
inefficient. See, e.g., Appellant's Br. 5-6. The
'301 patent purports to improve upon the prior art
methods by incorporating a lubricant into the cable sheath
material during manufacture, so that the finished
cable sheath comprises a lubricant that will migrate to the
exterior of the sheath and lubricate the surface during
installation. See '301 patent col. 2 11. 40-65.
of the '301 patent is illustrative and reads as follows:
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 in order to provide a
reduced coefficient of friction of said cable outermost
exterior surface and also reduce the amount of force required
to pull the cable, during its installation through building
in which said lubricant is of the type 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 center-lines 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