Ex Parte Vidal et alDownload PDFPatent Trial and Appeal BoardApr 15, 201309988821 (P.T.A.B. Apr. 15, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RONALD J. VIDAL, PAUL ALEXANDER, ROBERT M. KELLY, DAVID BRUTON, and ROBERT TODD ____________________ Appeal 2009-014192 Application 09/988,821 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and BART A. GERSTENBLITH, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014192 Application 09/988,821 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Appellants’ claimed invention relates to installation of cables. Spec. 1, para. [0001]. Claims 1, 16, 25, and 33 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of facilitating provision of a point-to-point cable connection between first and second points separated by an extended span of water including a first region of shallow water and a second region of relatively deep water, the method comprising: providing a plurality of ducts from the first point through the first region of the extended span to an offshore termination point between the first and second points, wherein the plurality of ducts are combined to form a multiple duct conduit; placing a first communication cable in one of said plurality of ducts to provide a connection between the first point and said offshore termination point; receiving at said offshore termination point, a second communication cable from the second point; and connecting said first communication cable to said second communication cable at said offshore termination point to create the point-to-point cable connection. Appeal 2009-014192 Application 09/988,821 3 The Rejections and Evidence Relied Upon The following rejections are before us on appeal: 1. Claims 1-7, 13-27, and 29-33 under 35 U.S.C. § 103(a) as unpatentable over Morishige (US 6,164,872; iss. Dec. 26, 2000), Peterson (US 5,722,793; iss. Mar. 3, 1998), and the Federal Highway Administration report/publication Prevention and Control of Highway Tunnel Fires, 1-28 (http://www.firetactics.com/FHWA2.htm) (last visited Feb. 14, 2005) (hereinafter “FHA”).1 Ans. 4. 2. Claims 1-33 under 35 U.S.C. § 103(a) as unpatentable over William2 (GB 2357944 A; pub. Jul. 4, 2001), Peterson, and one of either Fischer (US 3,813,477; iss. May 28, 1974), Galmont3 (EP 1039201 A3; pub. May 14, 2003), or Noji4 (JP 9322371 A; pub. Dec. 12, 1997). Ans. 7. BACKGROUND Appellants filed an amendment and Reply Brief on March 16, 2007, stating an intent to rewrite dependent claims in independent form. However, that amendment sought to amend independent claim 1 to include the limitations of claim 34 rather than amending claim 34 to include the 1 The Examiner explicitly withdrew claims 8, 9, 28, and 34 from this ground of rejection. Ans. 3. Because claim 10 depends from claims 8 and 9, we conclude the Examiner intended to withdraw the rejection of claim 10 as well. 2 Referred to by the Examiner as “U.K. '944,” and by Appellants as “UK '944.” See, e.g., Ans. 7; Br. 19. 3 Referred to by the Examiner as “European reference 1,039,210” and “European reference '201,” and by Appellants as “EU '210.” See, e.g., Ans. 7, 8; Br. 19. 4 Referred to by the Examiner as “Japanese reference 9-322371” and “Japanese reference '371,” and by Appellants as “Japan '371.” See, e.g., Ans. 7, 8; Br. 19. Appeal 2009-014192 Application 09/988,821 4 limitations of independent claim 1. Cf. 37 C.F.R. § 41.33(b)(2). Additionally, such amendment would alter the scope of claims 2-15, 22-24, 27-30, which depend from independent claim 1. See 37 C.F.R. § 41.33(b)(1). Because this amendment after final was not limited to canceling claims, the Examiner refused entry of the amendment and refused to consider the Reply Brief. See Adv. Act. dated Jul. 26, 2007; see also 37 C.F.R. §§ 41.33 and 41.41. On September 14, 2007, Appellants sought again to amend independent claim 1 to include the limitations of claim 34. The Examiner determined that this amendment after final suffered from the same shortcomings as the March 16, 2007 amendment, and thus the Examiner refused entry of this amendment. See Adv. Act. dated Aug. 13, 2008; see also 37 C.F.R. § 41.33. The Advisory Actions informed Appellants that the amendments were not entered. Neither of Appellants’ proffered amendments indicated a desire to discontinue the appeal and reopen prosecution before the Examiner. Therefore, our review is based upon the arguments made in Appellants’ Second Amended Appeal Brief dated August 17, 2006, and the claims therein. OPINION I. Claims 1-7, 13-27, and 29-33 over Morishige, Peterson, and FHA Appellants argue for claims 1-7, 13-27, and 29-33 as a group that the Examiner failed to make a prima facie case because: (a) the references are not properly combinable, and (b) the combination does not disclose all of the claim limitations. Br. 11-18. We select independent claim 1 as Appeal 2009-014192 Application 09/988,821 5 representative for analysis of these arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Following this, we address (c) Appellants’ additional arguments with regard to claims 5, 23, 29, and 32. Br. 7-11. a) Combinability Appellants present three contentions in support of the argument that the references are not properly combinable. First, Appellants contend that there is no reason to combine the references as proposed by the Examiner; rather, according to Appellants, the Examiner relies upon hindsight to derive reasons why a person of ordinary skill in the art would have combined the references.5 Br. 12. The Examiner provided reasoning in support of the proposed modifications. See Ans. 6-7. Appellants do not directly address these rationale, and Appellants’ general assertion does not convincingly explain why that reasoning is insufficient. Second, Appellants contend that the proposed combination would not have been obvious because it changes the principle of operation of the prior art (Morishige and Peterson). Br. 13-14. Specifically, Appellants contend the proposed combination would require, “mounting massive cylinders, in some inconceivable manner, on a remote controlled and self-propelled sea plough,” and would require replacing Peterson’s flexible conduit with Morishige’s massive inflexible cylinders. Id. We agree with the Examiner’s explanation that the rejection would not necessitate such changes. See Ans. 12. Consequently, Appellants’ argument is unpersuasive because it is based upon a mischaracterization of the rejection. 5 Appellants also make an argument against the Office Action dated March 23, 2004 (Br. 12); however, that action is not the subject of this appeal and therefore this argument is not relevant to the case at hand. Appeal 2009-014192 Application 09/988,821 6 Third, Appellants contend that Morishige is non-analogous because it is not in the field of endeavor of Appellants’ claims and is not pertinent to the particular problem with which Appellants were concerned. Br. 14. To begin, Appellants’ argument is unpersuasive because it essentially states the law with regard to analogous art without a cogent explanation of how that rule of law is tied to the facts of this case. See In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)) (“The analogous-art test requires that the Board show that a reference is either in the field of the applicant’s endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection.”). Specifically, with regard to the field of endeavor test, the method of claim 1 utilizes ducts and cables suitable for point-to-point cable connections through an extended span of water. Similarly, Morishige’s tunnel blocks 6002 includes ducts and cables 6036 suitable for point-to-point connections across an extended span of water Ans. 4-5, 12-13; Morishige, col. 1, ll. 20-25; col. 10, ll. 52-54, 65-67; col. 31. ll. 5-6; figs. 38, 44; see also In re Bigio, 381 F.3d 1320, 1325-27 (Fed. Cir. 2004) (The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of the similarity to the structure and function of the claimed invention as disclosed in the application.). Regarding whether Morishige is reasonably pertinent, an inventor considering a hinge and latch mechanism for portable computers would naturally look to references employing other “housings, hinges, latches, springs, etc.” See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379- Appeal 2009-014192 Application 09/988,821 7 80 (Fed. Cir. 2007). Likewise, a person of ordinary skill in the art considering providing a cable connection through an extended span of water, as Appellants sought to do, would consider a reference describing a tunnel 6001 suitable for use through an extended span of water that includes a plurality of conduits for various kinds of cables 6036, as disclosed by Morishige. See Spec., para. [0001]; Morishige, col. 27, l. 65 - col. 28, l. 2; col. 30, ll. 59-64; col. 30, l. 65 to col. 31, l. 8; figs. 38, 39, 44. For these reasons, Appellants’ argument does not convincingly explain why Morishige is not analogous art. b) Limitations Claim 1 calls for the offshore termination point to be between first and second points, and includes the step of connecting a first communication cable to a second communication cable at the offshore termination point to create a point-to-point cable connection from the first to the second point. The context of claim 1 suggests that a termination point is a point at which cables may be connected. The Specification does not provide a lexicographical definition of the claim term “termination point.” Consistent with our interpretation, the Specification describes that a termination point, or access point, facilitates access and splicing of cables. Spec., para. [0011]; see also para. [0015]. Appellants argue that Morishige fails to disclose or suggest an offshore termination point as claimed because there is no discussion in the reference of a point within the tunnel where two or more cables are connected (a termination point).6 Br. 16. 6 Appellants also argue that the Office Action dated July 30, 2003, fails to discuss that Morishige’s cables terminate at the termination points identified Appeal 2009-014192 Application 09/988,821 8 Appellants’ interpretation of claim 1, like ours, is that a termination point as claimed is a point at which two or more cables may be connected. Appellants are correct that Morishige is silent with regard to connection points within the tunnel 6001. However, this observation does not illustrate error in the Examiner’s rejection because the Examiner did not find that Morishige explicitly discloses connection points. Rather, the Examiner concluded that it would have been obvious to provide splice points (a point that facilitates access and splicing of cables) for Morishige’s cables 6036, at any point along tunnel blocks 6002, particularly in light of Peterson’s disclosure of offshore connection points for cables. Ans. 5-6, 14 (citing Peterson, col. 2, ll. 19-22; col. 7, ll. 4-7). Thus, Appellants’ argument is unpersuasive because it does not address the rejection as articulated by the Examiner. Appellants also argue that Peterson and FHA both fail to disclose or suggest use of an offshore termination point fed by a plurality of ducts. Br 17. This argument also fails to address the rejection as articulated by the Examiner, which relies upon Morishige for disclosure of a plurality of ducts. Ans. 4; see also Morishige, col. 11, ll. 3-4; fig. 38 (sectional view showing two ducts, one around each grouping of three cables 6036 at the lower left and right of tunnel block 6002). by the Examiner. This is an appeal from the Office Action dated August 29, 2005, and Appellants’ comments with regard to other Office Actions are not relevant to this appeal. Appeal 2009-014192 Application 09/988,821 9 c) Additional arguments Appellants recite the language of claims 5, 23, 29, and 327 and assert with regard to the additional limitation of each claim that, “this language has not been properly rejected.” Br. 8-11. Such argument is unpersuasive because contrary to this assertion, the Examiner specifically addressed each of these limitations. Ans. 10 (claim 5), 11 (claims 23, 29, 32). Consequently, we sustain the rejection of claims 1-7, 13-27, and 29- 33. II. Claims 1-33 over William, Peterson, and one of either Fischer, Galmont, or Noji Appellants argue claims 1-33 as a group, and we select claim 1 as representative. Br. 19-20; see 37 C.F.R. § 41.37(c)(1)(vii ). Appellants present three arguments for the patentability of claim 1. First, Appellants argue that the Examiner has not made a prima facie case of obviousness because claim 1 calls for providing a plurality of ducts that are combined to form a multiple duct conduit, while “in stark contrast” William and Peterson each disclose a single duct. Br. 19. This argument is inapposite because the Examiner relies upon Fischer, Galmont, or Noji as disclosing multiple ducts. Ans. 8, 16. Second, Appellants argue that the purpose of William teaches away from a combination with Peterson because William’s process eliminates the need for the landing processes disclosed by Peterson. Br. 20. The rejection does not incorporate Peterson’s landing processes; rather, Peterson is relied 7 Appellants also argue for the patentability of claim 28; however, claim 28 is not subject to this ground of rejection. See Br. 10. Appeal 2009-014192 Application 09/988,821 10 upon as disclosing cables from an onshore point to an offshore point or vice versa. See Ans. 16-17. Thus, Appellants’ argument is unpersuasive because it does not address the rejection as articulated by the Examiner. Further, teaching away is not established by the mere presence of any conflicting teachings in the prior art; rather, the solution claimed must be discouraged. See In re Fulton, 391 F.3d 1195, 1199-1201 (Fed. Cir. 2004). Here, Appellants have not established that the solution claimed was discouraged by the prior art. Third, according to Appellants, the Examiner’s reasoning—that providing William with ducts or conduits within which the cables are placed would provide a well-protected communication line—is unsupported. Br. 20. We disagree. Appellants’ argument ignores that the Examiner’s conclusion is supported by reference to Fischer, Galmont, and Noji as disclosing protecting cables within a duct. Ans. 9-10. Appellants’ argument is unpersuasive because it fails to address the evidence provided by the Examiner. Consequently, Appellants fail to demonstrate error in the rejection of claim 1, and claims 2-33 fall with claim 1. DECISION We affirm the Examiner’s decision to reject claims 1-7, 13-27, and 29-33 under 35 U.S.C. § 103(a) as unpatentable over Morishige, Peterson, and FHA. We affirm the Examiner’s decision to reject claims 1-33 as unpatentable over William, Peterson, and one of either Fischer, Galmont, or Noji. Appeal 2009-014192 Application 09/988,821 11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh Copy with citationCopy as parenthetical citation