{"id":1757,"date":"2017-09-08T09:57:31","date_gmt":"2017-09-08T13:57:31","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1757"},"modified":"2017-09-09T12:04:20","modified_gmt":"2017-09-09T16:04:20","slug":"mere-quantification-of-the-results-of-a-known-process-is-not-patentable","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1757","title":{"rendered":"Mere Quantification of the Results of a Known Process is Not Patentable"},"content":{"rendered":"

In Southwire Co. v. Cerro Wire LLC<\/a>, [2016-2287](September 8, 2017), the Federal Circuit affirmed the PTAB’s decision in an inter partes<\/em> reexamination that the claims of U.S. Patent No. 7,557,301 on a method of making cable are unpatentable under 35 USC 103.<\/p>\n

The invention related to the inclusion of lubricant in the plastic jacket of electrical cable\u00a0that will migrate to the exterior of\u00a0the sheath and lubricate the surface during installation. \u00a0The Board affirmed the Examiner’s rejection of the claims over prior art that included a fiber optic cable that can include a friction\u00a0reducing additive that migrates to the surface of the\u00a0cable jacket. \u00a0Although the prior art did not specifically teach some of the details, such as a 30% reduction in pulling force, the Board held that where the claimed and prior\u00a0art products are produced by identical or substantially\u00a0identical processes, a prima facie case of either anticipation
\nor obviousness has been established, and thus the claimed details were inherent.<\/p>\n

The Federal Circuit found\u00a0that the Board erred\u00a0in relying on inherency in making its obviousness determination. The\u00a0use of inherency in the
\ncontext of obviousness must be carefully circumscribed\u00a0because that which may be inherent is not necessarily known and that which is unknown cannot be obvious. \u00a0While the Federal Circuit has recognized that inherency\u00a0may supply a missing claim limitation in an obviousness
\nanalysis, the limitation at issue necessarily\u00a0must be present in order to be inherently disclosed\u00a0by the reference. \u00a0The Federal Circuit noted that the Board cited\u00a0no evidence that the claimed 30% reduction in the pulling force\u00a0would necessarily result from the claimed process, which\u00a0contains no steps that ensure such reduction.<\/p>\n

Thus the Federal Circuit found that the Board erred in relying on inherency\u00a0without finding that Summers necessarily would achieve the claimed\u00a030% reduction in pulling force, but rather finding that it
\nmerely renders that limitation obvious.\u00a0However, the Federal Circuit concluded that the Board\u2019s error was\u00a0harmless because it did not need to invoke inherency.<\/p>\n

The Federal Circuit said that none of the patented steps differs in any material way\u00a0from the process disclosed in the prior art, and there was no evidence that the claimed 30% reduction\u00a0in pulling force would have been unexpected or unattainable. \u00a0In fact, the Federal Circuit said there was no evidence that the process disclosed in the prior art the at least 30% reduction. \u00a0Simply because the prior art never quantified the reduction\u00a0in pulling force achieved by its disclosed embodiments
\ndoes not preclude the possibility, or even\u00a0likelihood, that its process achieved the claimed at least a 30% reduction,\u00a0especially since its stated purpose was the same. \u00a0The Federal Circuit concluded that\u00a0In the
\nabsence of any evidence that the claimed 30% reduction\u00a0would have been unexpected in light of the prior art, there is no indication that the limitation is\u00a0anything other than mere quantification of the results of
\na known process.<\/p>\n

 <\/p>\n

as\u00a0that<\/p>\n","protected":false},"excerpt":{"rendered":"

In Southwire Co. v. Cerro Wire LLC, [2016-2287](September 8, 2017), the Federal Circuit affirmed the PTAB’s decision in an inter partes reexamination that the claims of U.S. Patent No. 7,557,301 on a method of making cable are unpatentable under 35 … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-1757","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1757","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1757"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1757\/revisions"}],"predecessor-version":[{"id":1758,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1757\/revisions\/1758"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1757"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1757"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1757"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}