# United States **Court of Appeals**  **for the Federal Circuit**

______________________ SOUTHWIRE COMPANY, Appellant

v.

CERRO WIRE LLC, FKA CERRO WIRE, INC., Appellee

______________________

2016

- 2287

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/000,696.

______________________

Decided : September 8, 2017

______________________

K IRK T. B RADLEY , Alston & Bird LLP, Charlotte, NC, argued for appellant. Also represented by K EITH E. B ROYLES , Atlanta, GA; C HRISTOPHER L. M C A RDLE , New York, NY.

P AUL R ICHARD S TEADMAN , DLA Piper US LLP, Chic ago, IL, argued for appellee. Also represented by J ENNIFER E. L ACROIX

.

______________________
Before L OURIE , M OORE , and H UGHES , Circuit Judges.

L OURIE , Circuit Judge

.SOUTHWIRE CO

. v. CERRO WIRE LLC 2

Southwire Co. (“Southwire”) appeals from the deci sion of the U.S. Patent and Trademark Office (“the PTO”) Patent Trial and Appeal Board (“the Board”) in an inter partes reex amination 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) (“ Fina l 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

. B ACKGROUND Southwire 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, i mm ediately prior to installation. See id. col. 1 ll. 25

– 28. Southwire explains that this solution was referred to as applying “soap” to the cable, and that it was ex pensive 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 instal lation. See ’301 patent col. 2 ll. 40

– 65.

Claim 1 of the ’301 patent is illustrative and reads as follows:
1. In a method of manufacturing a finished ele ctrical cable having a conductor core and a jacketSOUTHWIRE CO

. v. CERRO WIRE LLC 3

formed primarily of a first material, the jacket

su rrounding at least said conductor core and d efining the outermost exterior surface of the fi nished cable, the improvement comprising combining a preselected lubricant with said first material prior to the formation of said jacket in order to provide a redu ced coefficient of friction of said cable outermost exterior surface and also r educe the amount of fo rce required to pull the c able, during its installation through building
passageways, in which said lubricant is of the type which migrates through said j acket to be available at said outermost exterior su rface of said fi n ished cable during the c able’ s installation through building
passageways, the finished electrical cable having the cha r acteristic that an amount of force r equired to install said cable thr ough corr esponding holes in an arrangement of four 2" x 4" wood blocks ha ving holes drilled at 15° through the broad face and the cente rlines of the holes are offset 10" and pulled th rough at 45° to the horizontal from the last block is at least about a 30% reduction in comparison to an amount of force r equired to install a non

- lubricated cable of the same cable type and size through co rresponding holes in said a r rangement. ’301 patent , Reexamination Certificate, col. 1 ll. 25

– 47 (emphases and paragraph breaks added ).
On September 14, 2012, Cerro Wire, Inc. (“Cerro”) filed a request for inter partes reexamination of the ’301 patent. That patent had undergone two previous ex parteSOUTHWIRE CO

. v. CERRO WIRE LLC 4

reexaminations wherein original claims 1

– 21 were dete rmined to be patentable and new claims 22

– 29 were added. During the inter partes reexamination here on appeal

, in which Southwire sought to add claims 30

– 42, the Exa miner concluded that all claims , 1– 42
, would have been obvious over various combination s of prior art.
Only one combination is at issue in this appeal

— U.S. Patent 6,160,940 (“ Summers ”) , in view of Dow Corn ing Corporation, DOW CORNING ® MB50

- 011 Masterbatch (1997

- 99) (“ Dow ”) and Underwriters Laboratories, Inc., S TANDARD FOR S AFETY N ONMETALLIC -S HEATHED C ABLES 32

– 34 (2000) (“ UL

- 719 ”)

— and Southwire disputes only the Board’s interpretation of Summers

. Summers describes a “fiber optic cable that is suitable for installation in a cable passageway” and teaches that “to reduce resistance to a cable pulling force,” the p lastic material used to form the cable “can include a friction reducing additive” that “migrat[es] to the surface of the cable jacket,” such as, for example, fatty acids and silicone oils. Joint Appendix (“J.A.”) 169

– 70. Although Summers does not express ly teach that the friction reducing add itive can reduce the pulling force by “ at least about

. . . 30%, ” as required by c laim 1, the Examiner adopted Cerro’s argument that the finished cable of Summers , in view of the other references, “has the chara cteris tic that an amount of force required to install said cable . . . is at least a 30% reduction ” because that chara cteristic “is an inherent result of the cable being made in accordance with the method steps.” See Final Decision

, 2015 Pat. App. LEXIS 10285 , at *9

– 10 ( internal quotation marks omitted).

S outhwire appealed to the Board, which affirmed, concluding that the Examiner’s rejection was supported by a preponderance of the evidence. See id. at *10

– 11. The Board explained that “[w]here the claimed an d prior art products are . . . produced by identical or substantiallySOUTHWIRE CO

. v. CERRO WIRE LLC 5

identical processes, a prima facie case of either anticip ation or obviousness has been established.” Id. at *12. It found that Summers ’s lubricants “would achieve the claimed force red uction” because Summers (in view of Dow ) teaches the same method steps

— namely, extruding a cable jacket formed from a plastic material containing a lubricant , such that the lubricant migrates to the surface of the jacket and lubricates the interface betwee n the cable and any surface of the cable passageway. Id. at *13. The Board explained that because the claims recite “a preselected lubricant” chosen to “provide a reduced coefficient of friction,” they “require an amount of lubricant which meets the stat ed reduction in [coefficient of fri ction] .” Id. at *16. Thus, the Board concluded, because Summers teaches reducing the coefficient of friction using a lubricant, it inherently teaches the 30% reduction limitation because it renders it “obvious to have s elected [lubricant] amounts” that achieve the claimed reduction. Id. at *16 (internal quotation marks omitted).
The Board rejected all of Southwire’s evidence as lac king factual support. The Board found that the three declarations of Southwire’s expert, Mr. Sasse

, were u npersuasive because the data tables provided therein fail to report standard deviations, statistical significance, or certain relevant details of the experimental design. Id. at *16– 21. The Board found that all of Southwire’s objective evidence lacked factual support because it contained only “general allegation [s] ” without corroborating evidence. Id. at *24

– 26. Furthermore, the Board found that the objective evidence related generally to one of Sout hwire’s products (SIMpull), with no evidence that SIMpull embo dies the 30% reduction , or any other, claim limitation. Id. at *25, *26, *30

– 34. The Board found that, while Sout hwire’s evidence showed a long

- felt need, it did not esta blish a long

- felt need without solution

— rather, the solution had been provided by Summers because the need was for a (general) alternative to the prior art use of “soap” on theSOUTHWIRE CO

. v. CERRO WIRE LLC 6

cables, not for a (specific) 30% reduction in pulling force using lubricants incorporated into the sh eath. Id . at *33

– 36. Southwire timely appealed to this court. We have j urisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

D ISCUSSION
We review the Board ’ s legal determinations de novo

, In re Elsner , 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the Board’ s factual findings underlying those determinations for substantial evidence, In re Gartside , 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported by substa ntial evidence if a reasonable mind might accept the ev idence to support the finding. Conso l. Edison Co. v. NLRB

, 305 U.S. 197, 229 (1938). Obviousness is a que stion of law, based on underlying factual findings, inclu ding what a reference teaches, whether a person of ordinary skill in the art would have been motivated to combine references, and any relevant objective indicia of nonobviousness

. Apple Inc. v. Samsung Elecs. Co.

, 839 F.3d 1034

, 1047

– 48, 1051 (Fed. Cir. 2016) (en banc).
Southwire argues that, as an initial matter, the Board erred in relying on “inherency” in making its obviousness determination. Second, Southwire argues that Summers does not inherently teach the “at least about a 30% redu ction” in pulling force limitation because a limitation is not inherent in a reference unless it is necessarily, i.e., a lways , present

. Thus, Sou thwire argues , t he Board ’s finding that a “skilled artisan would have had reason to select [lubricant] concentrations that did” achieve th e 30% reduction in pulling force is the antithesis of inherency, which requires certainty, not experimentation. Final Decision , 2015 Pat. App. LEXIS 10285, at *21.
Cerro responds that substantial evidence supports the Board’s finding that any cable made with the same man ufacturing steps as Summers ( in view of Dow ), using theSOUTHWIRE CO

. v. CERRO WIRE LLC 7

same lubricant in amounts sufficient to redu ce the coefficient of friction and pulling force (as disclosed in Summers and Dow ), would also produce the same result recited in the claims. Cerro contends that i t is well

- established law that, in cases such as this one, a prima facie case for obviousnes s is met where the only difference between the claimed and prior art process is a property that results from performing the process. Cerro argues that i t is not inventive to claim a test for cables made in accordan ce with known prior art methods a nd disco ver that the cable has that certain performance characteristic.
First, w e agree with Southwire that the Board erred in relying on inherency in making its obviousness dete rmination. We have held that “ the use of inherency in the context of obviousness mus t be carefully circumscribed because ‘ [t]hat which may be in herent is not necessarily known’ and that which is unknown cannot be obvious. ” Honeywell Int’l v. Mexichem Amanco Holding S.A.

, No. 2016

- 1996,

— F.3d

— , 2017 WL 3254943 , at *1 0 (Fed. Cir. Aug. 1, 2017) (quoting In re Rijckaert , 9 F.3d 1531, 1534 (Fed. Cir. 1993)). While “[ w] e have recognized that inhe rency may supply a missing claim limitation in an obv iousness analysis,” PAR Pharm., Inc. v. TWI Pharm., Inc.

, 773 F.3d 1186, 1194

– 95 (Fed. Cir. 2014) (collecting cases), we have emphasized that “ the limitation at issue necessarily must be present ” in order to be inherently disclosed by the reference

, id. (emphasis added). The Board cited no evidence that a reduction of 30% in the p ulling force would necessaril y result from the claimed process, which contains no steps that ensure such reduction.
Here, the Board found that because the claims recite “a preselected lubricant” chosen to “provide a reduced coefficient of friction,” they “require an amount of lubr icant which meets the stated reduction in [coefficient of friction] .” It found that

, because Summers teaches redu cing the coefficient of friction using a lubricant, Summers inherently teaches the 30% reduction limitation becauseSOUTHWIRE CO

. v. CERRO WIRE LLC 8

Summers renders it “ obvious to have selected [lubricant] amounts” that achieve that result

. Final Decision , 2015 Pat. App. LEXIS 10285, at *16 (emphasis added)

. We conclude that t he Board erred in relying on inherency without finding that Summers necessa rily would achieve a 30% reduction in pulling force, but rather finding that it merely renders that limitation obvious.
However, we also conclude that the Board’s error was harmless because

, although it improperly invok ed inhe rency, it need not have. I t m ade the necessary underlying factual findings to support an obviousness determination. It found that the claimed method simply applies the same process for the same purpose as disclosed in Summers

— i.e., to reduce the pulling force on a cable for ease of installation

. See, e.g. , J.A. 169.

The Board found that Summers discloses an “identical or substantially identical” process to that claimed in the ’30 1 patent

. Final Decision , 2015 Pat. App. LEXIS 10285, at *12. It found that Summers teaches that a “ fiber optic cable

. . . is extruded with [a] cable jacket

. . . formed from plastic material (e.g., polyethylene) containing a lubricant (e.g., fatty acid[] compounds, silicon oils, or fluoro

compounds), with such lubricant characterized by migra ting to th e surface of [the] cable jackets

. . . and lubricating the interface between the cable jackets and v irtually any surfac e of or in the cable passageway. ” Id. at *12

– 13. Those findings are supported by substantial record ev idence. See, e.g. , J.A. 169

– 70.

N one of the patented steps differ s in any material way from the process disclosed in Summers (in view of Dow )

. And there is no evidence that the claimed 30% reduction in pulling force would have been unexpected or unattai nable from the process disclosed i n Summers . In fact, there is no evidence that the process disclosed in Summers did
not produce an “ at least

. . . 30% reduction ” in pulling force

. Our predecessor court has held that where “ allSOUTHWIRE CO

. v. CERRO WIRE LLC 9

process limitations

. . . are expressly disclosed by [the prior art reference] , except for the functionally expressed [limitation 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

, 562 F.2d 1 252, 12 54

– 55 (CCPA 1977) (emphases added) (internal quotation marks omitted)

. The court noted that “[w]hether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, [or] on ‘prima facie obviousness’ under 35 U.S.C. § 103,

. . . the burden of proof i s the same.” Id.
Simply because Summer s never quantified the redu ction in pulling force achieved by its disclosed embod iments does not preclude the possibility, or even likelihood, that its process achieved at least a 30% redu ction , especially since its s tated purpose was the same as that of the ’301 patent

— to reduce the pulling force on the cable for ease of installation

. See, e.g. , J.A. 169. In the absence of any evidence that the claimed 30% reduction would have been unexpected in light of the Summers disclosure , there is no indication that the limitation is anything other than mere quantification of the results of a known process.
Furthermore, the 30% reduction limitation was added to the claim by amendment in a previous reexamination in order to over come the prior art, J.A. 3

– 4, 58

– 60
, with seemingly no focus on that limitation in the original written descrip tion. Other than a single mention that, under a certain test, “lubricated specimens” (the details of which are undisclosed) yielded a 50% reduct ion in pulling force compared to non

- lubricated standards, ’301 patent col. 6 ll. 20

– 24, the written description provides no discu ssion regarding the amount of reduction in pulling force ; it merely teaches that one can reduce the pulling force by incorporating certain lubricant s into the cable sheath, as taught by Summers

. Thus, neither the patent itself nor any evidence proffered by Southwire during the reexam ination provide s any indication that the “at l east about aSOUTHWIRE CO

. v. CERRO WIRE LLC 10

30% reduction” limitation was something other than an observed result of an old process, writ ten into the claim in an attempt to avoid the prior art process. In sum, the Board’s underlying factual findings are supported by substantial evidence and reasonably support its conclusion that it would have been “ obvious to have selected such amounts” as would achieve the claimed reduction in pulling force because “ the claims require an amount of lubricant which meets the stated reduction in [coeffic ient of friction] ” and “ Summers teaches reducing the coefficient of friction ” using the same process, for the

same pur pose

. Final Decision , 2015 Pat. App. LEXIS 10285, at *16.
Southwire also argues that the Board erred in a cknowledging that Southwire’s evidence shows a long

- felt need, but then disregarding the evidence by finding that the prior art solved that need

. Southwire argues that such an approach is circular and would render consider ation o f long

- felt need a dead let ter. U nder that reasoning, Southwire contends, every time the Board finds that a reference teaches a limitation, there could never be a long

- felt need , as the reference purportedly already pr ovided a solution

. Cerro responds that the Board correctly rej ected Southwire’s objective evidence because the declarations provided do not relate specifically to the claims at issue and they contain no proof of a nexus to any of the claim limitations . And, Cerro continues, the Board correctly characterized the prob lem to be solved broadly, because that characterization is supported by the ’301 patent itself. Under that broad characterization, Cerro contends, Summers indisputably provided several solutions before the ’301 patent’s priority date. It taught using cab le sheaths with irregular surface characteristics, as well as the claimed solution of lubricants incorporated into the sheath.SOUTHWIRE CO

. v. CERRO WIRE LLC 11

We agree with Cerro . S ubstantial evidence supports the Board’s findings that Southwire’s evidence lacked factual support

, that its objective evidence lacked a nexus to the claimed invention , and that any long

- felt need adduced from the evidence had already been met by Summers

. W e see no legal error in its analysis.

C ONCLUSION We have considered the parties’ remaining arguments but find them to be unpersuasive. For the foregoing reasons, we affirm the decision of the Board.

AFFIRMED