OFS Fitel, LLCDownload PDFPatent Trials and Appeals BoardApr 1, 202015468159 - (D) (P.T.A.B. Apr. 1, 2020) Copy Citation 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. 15/468,159 03/24/2017 Tristan Kremp Geisler 6 DIV1 US 2831 57040 7590 04/01/2020 OFS Fltel, LLC (FORMERLY FURUKAWA ELECTRIC NORTH AMERICA, INC.) 2000 NORTHEAST EXPRESSWAY NORCROSS, GA 30071 EXAMINER LEPISTO, RYAN A ART UNIT PAPER NUMBER 2883 NOTIFICATION DATE DELIVERY MODE 04/01/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): Arochester@ofsoptics.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TRISTAN KREMP, PAUL S. WESTBROOK, and TOMMY GEISLER Appeal 2019-004735 Application 15/468,159 Technology Center 2800 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and N. WHITNEY WILSON, Administrative Patent Judges. SMITH Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5 and 7–9, which constitute all the claims pending in this application. Claim 6 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as OFS Fitel, LLC. Appeal Br. 2. Appeal 2019-004735 Application 15/468,159 2 Appellant’s invention is generally directed to a high backscattering fiber having a perturbed segment, which has an index perturbation (Δn(x,y,z)) that causes a reflection of relative power (Rp→r(λ, z, l)) that is greater than three (3) decibels (dB) above Rayleigh scattering. (Spec.¶ 14.) Independent claim 1 is representative of the appealed subject matter and is reproduced below: Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A high backscattering single-mode optical fiber optically coupled to a transmission fiber, the high backscattering single-mode optical fiber comprising: a coupling loss of less than 0.5 decibels (dB) when coupled to the transmission fiber; and a perturbed segment, which has an index perturbation (Δn(x,y,z)) that causes a reflection of relative power (Rp→r(λ, z, l)) that is greater than three (3) decibels (dB) above Rayleigh scattering. App. Br. 14, Claims Appendix.2 The following rejections are presented for our review: 3 2 Appellant’s principal brief is unnumbered. We will refer to the Appeal Brief as though it were consecutively numbered beginning with the page including the header and entitled page “APPEAL BRIEF” as page 1. We ask that in the future counsel makes certain to number the pages of briefs submitted to the Board. 3 The complete statement of the rejections on appeal appears in the Final Office Action. (Final Act. 4–9). Appeal 2019-004735 Application 15/468,159 3 I. Claims 2, 5, and 7–9 and are rejected under 35 U.S.C. § 112(b) as indefinite. II. Claims 1– 5 and 7–9 rejected under 35 U.S.C. § 103 as unpatentable over Johnston (US 9,982,531 B2; May 29, 2018). OPINION Rejections 35 USC § 112(b) After consideration of Appellants’ arguments and the Examiner’s position in the Final Office Action and Answer, we affirm the rejection of claim 2 and reverse the rejection of claims 5 and 7–9. The Examiner bears the initial burden of presenting a prima facie case of unpatentability, whether the rejection is based on prior art or any other ground. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “The legal standard for definiteness [under section 112(b)] is whether a claim reasonably apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). The definiteness of the language employed in the claims must be analyzed, not in a vacuum, but always in light of the teachings of the prior art and the application disclosure as it would be interpreted by one of ordinary skill in the art. See In re Angstadt, 537 F.2d 498, 501 (CCPA 1976). Claim 2 When a term of degree is used in the claim, the Examiner should determine whether the Specification provides some standard for measuring that degree. Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367 (Fed. Cir. 2010); Enzo Biochem, Inc., v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 Appeal 2019-004735 Application 15/468,159 4 F.2d 818, 826 (Fed. Cir. 1984). If the Specification does not provide some standard for measuring that degree, a determination must be made as to whether one of ordinary skill in the art could nevertheless ascertain the scope of the claim (e.g., a standard that is recognized in the art for measuring the meaning of the term of degree). The Examiner finds claim 2 is indefinite because it recites the equation: . According to the Examiner, since the equation defines the reflection of relative power (Rp→r(λ, z, l)) utilizing an almost equal/approximately sign (≈), the actual scope of the claim cannot be determined or is impossible to glean because no range or specific meaning as to what the almost equal sign encompasses is provided. (Final Act. 2.) Appellant argues the use of approximately (≈) does not render the claim indefinite. (Appeal Br. 7.) In support of this position, Appellant points to other extrinsic evidence including the claims of other issued patents that utilize the approximately terminology. (Appeal Br. 7–8.) Appellant’s arguments and evidence lack persuasive merit. A claim is not indefinite if the Specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree). See, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371–72, 112 USPQ2d 1188, 1193 (Fed. Cir. 2014) (observing that although there is no absolute or mathematical precision required, “[t]he claims, when Appeal 2019-004735 Application 15/468,159 5 read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art”). However, in this instance Appellant has not directed us to portions of the Specification that establish the metes and bounds of approximately (≈) as utilized by the claimed invention.That is, Appellant has not directed us to portions of the Specification that provide guidance as to the acceptable variance for the claimed reflection of relative power (Rp→r(λ, z, l)), nor have we found any such guidance therein. For the foregoing reasons, we sustain the Examiner’s rejection of claim 2. Claims 5 and 7–9 The Examiner finds claims 5 and 7–9 are indefinite because they contain equations that either give no values or range to the equation (claim 5) or only partial ranges and values (claims 7-9). Given only partial information for the variable of the equation, the scope of the claim cannot be identified, according to the Examiner. Appellant argues claims 5 and 7–9 further limit independent claim 1 that provides the boundaries of the reflection of relative power (Rp→r(λ, z, l)). (Appeal Br. 9.) We agree with Appellant that the subject matter of claims 5 and 7–9 is not indefinite. The Examiner has not adequately explained why the use of equations in the rejected claims do not further limit the subject matter of independent claim 1. The Examiner has not asserted that the Specification fails to provide definitions of the various variables utilizing the equations such that a person of ordinary skill in the art would not have understood their metes and bounds. Appeal 2019-004735 Application 15/468,159 6 For the foregoing reasons, the rejection of claims 5 and 7–9 under §112(b) is reversed. Rejection 35 USC § 103 The Examiner rejects claims 1– 5 and 7–9 as obvious over Johnston. After review of the respective positions provided by Appellant and the Examiner, we AFFIRM the Examiner’s rejection under 35 U.S.C. § 103. We limit our discussion to independent claim 1 as argued by Appellant. 37 C.F.R. § 41.37(c)(1)(iv). Claims 2, 5, and 7–9 stand or fall with independent claim 1. We add the following for emphasis. Appellant argues Johnston teaches away from the use of a single mold optical fiber as required by the claimed invention and Johnston expressly discusses known disadvantages of using single-mode optical fibers in vertical seismic profiling (VSP). (Appeal Br. 10–11.) Appellant’s arguments are not persuasive of reversible error. While it is recognized that Johnston discusses the disadvantages of utilizing standard single-mode fibers for VSP, the Johnston invention is directed to providing three or more reflectors in the fiber, or a continuous distribution of scatter sites with reflectivity varying with position, to produce an improved strain response. (Johnston, col. 4, ll. 62–65.) Appellant has not directed us to portions of Johnston that establish the described novel invention is a multi-mode fiber. Appellant has not directed us to portions of Johnston that establish the described novel invention is not a modified single-mode fiber. Appellant has not explained that the addition of reflectors to the fiber creates a fiber that is not a single-mode fiber. Appeal 2019-004735 Application 15/468,159 7 For the foregoing reasons and those presented by the Examiner, we sustain the Examiner’s obviousness determination. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 5, 7–9 112(b) Indefiniteness 2 5, 7–9 1–5, 7–9 103 Johnston 1–5, 7–9 Overall Outcome 1–5, 7–9 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation