Ex Parte Vidal et al

Patent Trial and Appeal Board

Apr 15, 2013

09988821 (P.T.A.B. Apr. 15, 2013)

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

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Application 09/988,821

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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.

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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.
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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
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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.
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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-
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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
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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.
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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.
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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.
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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

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