Ex Parte 6825418 et al

Patent Trial and Appeal Board

Nov 27, 2012

90009433 (P.T.A.B. Nov. 27, 2012)

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.
90/009,433 04/03/2009 6825418 GAR0001 6165
12212 7590 11/27/2012
KACVINSKY DAISAK, PLLC (1532)
3120 Princeton Pike
SUITE 303
Lawrenceville, NJ 08648
EXAMINER
RUBIN, MARGARET R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/27/2012 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
____________________

Ex parte WPFY, INC.
____________________

Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B11
Technology Center 3900
____________________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent under reexamination (hereinafter the “‘418 Patent”) issued
to Dollins et al. on November 30, 2004.
Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

2
A. STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed April 3, 2009. WPFY Inc. (“WPFY”), the owner
of the patent under reexamination, appeals under 35 U.S.C. §§ 134(b) and
306 from a final rejection of claims 31-34, 36, and 37.2 An oral hearing was
conducted on August 22, 2012. A transcript of the hearing was made of
record on October 4, 2012.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. We affirm.

References Relied on by the Examiner
Falciglia et al. (“Falciglia”) 5,350,885 Sep. 27, 1994

Bürgisser 3 CH 590 544 Aug. 15, 1977

Underwriters Laboratories Inc. Standard for Safety, Metal-clad Cables, UL
1569, Second Edition, September 10, 1998 (“UL 1569”).

The Rejections on Appeal
The Examiner rejected claims 31-34, 36, and 37 under 35 U.S.C.
§ 103(a) as unpatentable over Bürgisser and Falciglia.
The Examiner rejected claims 31-34 under 35 U.S.C. § 103(a) as
unpatentable over UL 1569 and Bürgisser.

2 WPFY relies on its Appeal Brief filed September 15, 2011 (“App.
Br.”) and its Reply Brief filed February 14, 2012 (“Reply Br.”).

3 References in this opinion to page and line numbering involving
Bürgisser are to the English translation of that Swiss document which is of
record in this proceeding and dated March 25, 2009.
Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

3
The Examiner rejected claims 36 and 37 under 35 U.S.C. § 103(a) as
unpatentable over UL 1569, Bürgisser, and Falciglia.

The Invention
The invention relates to indicia-marked electrical cables. (‘418 Patent
1:5.) Independent claim 31 is reproduced below (App. Br. 26, Claims
App’x):
31. A cable comprising:

a tubular conductive sheath having inner and outer surfaces, the
inner surface of the sheath defining an internal passage sized and
configured to enclose a conductor,

a first visible indicia displayed on the outer surface of the
sheath and representing a gauge of the conductor, and

a second visible indicia displayed on the outer surface of the
sheath and indicating a type of cable.
B. ISSUES
1. Would a person of ordinary skill in the art have appreciated
from the combined teachings of Bürgisser and Falciglia that a cable may be
configured with a tubular conductive sheath having first and second visible
indicia displayed thereon as required by claim 31?
2. Would a person of ordinary skill in the art have appreciated
from the combined teachings of UL 1569 and Bürgisser that a cable may be
configured with a tubular conductive sheath having first and second visible
indicia displayed thereon as required by claim 31?
Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

4
C. ANALYSIS
Claim 31 is the sole independent clam involved in this reexamination
proceeding. The patentability of dependent claims 32-34, 36, and 37 is not
argued apart from the independent claim. The Examiner rejected claim 31
over the combination of Bürgisser and Falciglia and also over the
combination of UL 1569 and Bürgisser.
The cable set forth in claim 31 requires “a tubular conductive sheath”
operating to enclose a conductor. The claim further requires that first and
second forms of “visible indicia” be displayed on the outside of the sheath,
with the first indicia “representing a gauge of the conductor” and the second
indicia “indicating a type of cable.” In connection with each of the
Examiner’s prior art combinations, the dispute centers on the above-noted
features, in particular that a tubular conductive sheath incorporate each of
the required first and second visible indicia.
Bürgisser and Falciglia
Bürgisser discloses an “Electric Power Cable” (Bürgisser, Title.)
Bürgisser summarizes its invention as follows (id. at 2, ll. 4-6):
The electric power cable according to the invention is characterized in
that it has a sheath that is provide with one or more marking along
its entire length that identify the wire or wires it contains.

The Request for Reexamination filed April 3, 2009 evaluated the
content of Bürgisser with respect to the type of markings is disclosed. That
evaluation appeared as follows (Req., 4-5)4:

4 The Examiner’s Answer incorporates by reference the noted content
of the Request for Reexamination. (Ans., 5.)
App
Reex
Paten

of B
cond
eal 2012-0
amination
t 6,825,4
WPFY d
ürgisser w
uctors or “
06723
Control 9
18 B1
oes not ch
ith respect
type of ca
0/009,433
allenge th
to disclos
ble.” Nor

5
e above-qu
ure of mar
is it evide
oted asse
kings dire
nt to us th
ssment of
cted to “ga
at the asse

the conten
uge” of
ssment is
t
Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

6
inaccurate. Rather, WPFY contends that the “sheath” disclosed in Bürgisser
is not a structure which corresponds to the sheath of claim 31. The
underlying basis for that position appears to be that Bürgisser’s “sheath” is a
type of “insulator” rather than a component which is “conductive” as
required by the claims. (App. Br., 9-10.) 5
The Examiner expresses no disagreement with WPFY’s contention.
Indeed, the Examiner also takes the view that Bürgisser’s sheath is not
conductive. (Ans., 5:17-19.) To account for the conductive sheath
requirement of the claims, the Examiner relies on the teachings of Falciglia.
(Id. at 5-7.)
Falciglia is directed to an “armored cable” incorporating an
“[a]rmored cable sheath” which “is coded for easy visual identification by
applying patterns, e.g., colored patterns along the length of the cable.”
(Falciglia, Title, Abstract.) Falciglia further assesses its inventive cable as
follows (id at 1:56-66):
[T]he invention features an armored cable sheath including a
conductive tubular structure having an internal passage, an outer
surface, a first end, and a second end. The internal passage is sized
and configured to enclose one or more conductors. The tubular
structure is made of a material having a first visual appearance. A
pattern of visible indicia, or different visual appearance from the first

5 We observe that WPFY contends that the term “sheath” as it appears
in the English translation of Bürgisser constitutes a “translation error” of the
German word “mantel.” (App. Br., 10, fn. 3.) WPFY, however, does not
offer any evidentiary support for that contention. Moreover, even assuming
arguendo that the term “mantel” has been mistranslated and should instead
be read as a “‘coating,’ ‘jacket’’ or ‘layer’,” as is urged by WPFY, lacking
from the Briefs is any meaningful explanation as to what prejudicial error
arises from the alleged mistranslation.
Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

7
visual appearance, is applied on the outer surface and is repeated
along the length of the sheath.

Thus, Falciglia characterizes its sheath as being “a conductive tubular
structure” having “a pattern of visible indicia” on an outer surface thereof
and which encloses “one or more conductors.” Falciglia explains the
purpose of the patterns or indicia on the surface of its cable (id. at 2:30-35):
By looking at the cable, one can easily determine the number of
conductors, type of insulation, and/or type of cable, or the particular
application. The premarking of various colored designs on the sheath
saves time and reduces errors in handling, installing, inspecting, and
maintaining the armored cable.

We observe that there is notable similarity between the above-noted
purpose of the indicia applied to the outer surface Falciglia’s sheath and that
of the indicia applied to the outer surface of Bürgisser’s sheath. In
particular, Bürgisser describes the following with respect to the purpose of
its disclosed markings or indicia (Bürgisser, 3:1-3):
The proposed cable marking is advantageous not only for the
installation of the cable, but also for all subsequent types of
supplementary or repair work, in which unknown cables may be
encountered, the identification of which is critical.

Thus, each of Bürgisser and Falciglia conveys a desire to affix
markings or indicia to the exterior surfaces of their respective cables for the
purpose of identifying characteristics of the cables. In view of the teachings
of those references, the Examiner concluded that WPFY’s claims 31 would
have been obvious including the placement of multiple visible indicia onto
the surface of a conductive sheath. (Ans., 5-7.)
Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

8
Although WPFY seemingly presents various separate arguments in
challenging the Examiner’s conclusion6, in essence, the underlying premise
for each of those arguments is the same and amounts to a contention that the
prior art does not convey displaying multiple visual indicia on the outer
surface of a sheath which is “conductive.” In that regard, WPFY is
evidently of the view that any combination of Bürgisser and Falciglia
necessarily results in indicia affixed to an interior insulating cover of a
conductor so as to be “concealed within” an outer conductive sheath. (E.g.,
App. Br., 11:2-11.)
We do not agree with WPFY. In assessing obviousness, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991). That assessment should take into account the inferences and creative
steps that a person of ordinary skill in the art would employ. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). Furthermore, a prior art reference
must be considered for everything it teaches by way of technology and is not
limited to the particular invention it is describing and attempting to
protect. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir.
1985).
WPFY’s position as to the non-obviousness of its claims ostensibly
rests on a distinction between cables with an outer sheath or covering which

6 For example: lack of motivation to combine the references (App. Br.,
7); the proposed modification rendering Bürgisser unsatisfactory for its
intended purpose (id. at 10-12); the references teaching away from the
claimed invention (id. at 12-17); the use of impermissible hindsight
reconstruction to arrive at the invention (id. at 21).
Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

9
is conductive as compared with one which is insulating. Yet, the record
reveals that when it comes to placing identifying indicia on cables, that is a
distinction without a difference. Bürgisser readily conveys that information
representative of conductor gauge and cable type is conveyed to a cable
installer or operator via markings displayed on the outer surface of a cable.
Although the outer sheath of the cable set forth in Bürgisser may be made of
an insulating material, Bürgisser does not limit its teachings to such material.
Similarly, Falciglia also describes placing visible indicia conveying cable
characteristics onto a cable whose outer sheath is conductive. In our view, a
skilled artisan would have readily inferred from the technological teachings
of the prior art that known information associated with a cable, such as the
gauge of a contained conductor and cable type, may be suitably applied, via
visible indicia, to a cable’s outer tubular coating or sheath, be it conductive
or otherwise.
We are cognizant of inventor Dollins’ testimony7, which essentially
echoes the above-noted arguments advanced by WPFY. In that regard, Mr.
Dollins testifies (Dollins Decl., ¶ 11):
If Falciglia and Burgisser were combined, it is my opinion, that
the resulting cable would have one indicia on the exterior of the
armored cable sheath and additional marking on the insulating sheath
which is inside the armored cable sheath. Thus, one of ordinary skill
in the art would not even see the markings from Burgisser until the
cable is cut or viewed from an end. Thus, the combination of
Falciglia and Burgisser does not disclose a tubular conductive sheath

7 See James C. Dollins’ “Declaration under 37 C.F.R. § 1.132” entered
into the record on November 29, 2010.

Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

10
having a first visibile [sic] indicia on the outer surface of the sheath
and a second visible indicia also on the outer surface of the sheath.

Mr. Dollins, however, does not meaningfully explain the underlying
basis for that opinion. Nor do we think that the testimony appropriately
takes into account what one with ordinary skill and creativity in the art
would have appreciated from the above-discussed content of Bürgisser and
Falciglia directed to applying visible indicia to cable surfaces. Indeed, the
testimony appears predicated on the insufficiently supported premise that
there is some type of distinction in the art as between conductive surfaces
and non-conductive surfaces for cables with respect to applying identifying
markings to those surfaces. Although we have considered the Dollins
Declaration, nothing requires us to credit the inadequately explained
testimony of an expert. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d
1089, 1092 (Fed. Cir. 1997).
After thorough evaluation of the record as a whole, including WPFY’s
arguments and the declaration testimony of inventor Dollins, we are not
persuaded of error in the Examiner’s rejection of claim 31 as obvious based
on the teachings of Bürgisser and Falciglia. Accordingly, we sustain the
rejection of claims 31-34, 36, and 37 as unpatentable over those references.
UL 1569 and Bürgisser
UL 1569 is a “Standard for Safety” provided by Underwriters
Laboratories Inc. and is directed to “Metal-Clad Cables.” (UL 1569, Title
page.) UL 1569 discloses that “markings” may be applied “on the outer
surface of a finished cable that has an overall jacket or anywhere within a
finished cable.” (Id. at p. 61, § 31.1.) Although, as is noted by the Examiner
Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

11
(Ans., 18), UL 1569 is directed to safety standards involving “metal-clad
cables,” WPFY submits that the referenced “overall jacket” is disclosed only
as constituting materials that are not conductive. (App. Br., 23.) WPFY
also urges that markings arranged “anywhere within a finished cable” is not
a teaching of applying markings or indicia to any outer surface of a cable
sheath. (Id.) WPFY further contends that UL 1569 does not itself disclose
any visual indicia on a conductive sheath nor would one with ordinary skill
in the art would not have applied Bürgisser’s teachings concerning markings
applied to an insulating sheath. (Id. at 23-24.) WPFY thus concludes that
the combination of UL 1569 and Bürgisser is insufficient to render claim 31
unpatentable.
We do not agree with WPFY’s above-noted assessments of the
content of UL 1569’s disclosure, however, even assuming that they are
correct, we observe that there is no dispute that the “metal-clad cables”
disclosed in UL 1569 are understood to incorporate a conductive sheath.
(App. Br., 23:10-12: “Patentee agrees….UL 1569 does disclose a conductive
sheath…” (emphasis in original).) As discussed above, Bürgisser clearly
provides that markings were known to be applied to the outer surface of a
cable sheath or coating to desirably convey characteristics of the cable, such
as those representative of gauge and cable type. The record does not
demonstrate that teachings directed to identifying indicia on insulating
sheaths are somehow precluded from being applied to conductive sheaths.
Having reviewed the record, we are not persuaded of error in the
Examiner’s rejection of claim 31 based on the combined teachings of UL
1569 and Bürgisser. In reaching our decision, we have considered Mr.
Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

12
Dollins’ Declaration. Although he generally testifies that “the combination
of UL 1569 and Bürgisser do not disclose a first indicia on the outer surface
of a conductive sheath and a second indicia on the outer surface of a
conductive sheath” (Dollins Decl., 14), notably lacking from that testimony
is credible explanation or evidentiary support underlying the conclusion
reached.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 31-34 as unpatentable over UL 1569 and Bürgisser. We also sustain
the rejection of claims 36 and 37 over UL 1569, Bürgisser, and Falciglia.
D. CONCLUSION
1. We conclude that a person of ordinary skill in the art have
appreciated from the combined teachings of Bürgisser and Falciglia that a
cable may be configured with a tubular conductive sheath having first and
second visible indicia displayed thereon as required by claim 31.
2. We conclude that a person of ordinary skill in the art have
appreciated from the combined teachings of UL 1569 and Bürgisser that a
cable may be configured with a tubular conductive sheath having first and
second visible indicia displayed thereon as required by claim 31.
E. ORDER
The rejection of claims 31-34, 36, and 37 under 35 U.S.C. § 103(a) as
unpatentable over Bürgisser and Falciglia is affirmed.
The rejection of claims 31-34 under 35 U.S.C. § 103(a) as
unpatentable over UL 1569 and Bürgisser is affirmed.
Appeal 2012-006723
Reexamination Control 90/009,433
Patent 6,825,418 B1

13
The rejection of claims 36 and 37 under 35 U.S.C. § 103(a) as
unpatentable over UL 1569, Bürgisser, and Falciglia is affirmed.

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c).

AFFIRMED

PATENT OWNER:

KACVINSKY DAISAK, PLLC (1532)
4500 BROOKTREE ROAD
SUITE 302
WEXFORD, PA 15090

THIRD PARTY REQUESTER:

GARY W. HAMILTON
HAMILTON & TERRILE, L.L.P.
8911 NORTH CAPITAL OF TEXAS HWY
SUITE 3150
AUSTIN, TX 78759