OFS Fitel, LLC

Patent Trials and Appeals Board

Apr 1, 2020

15468159 - (D) (P.T.A.B. Apr. 1, 2020)

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