Brown, Joe Denton.

Patent Trials and Appeals Board

Jul 2, 2020

2019004795 (P.T.A.B. Jul. 2, 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.
14/811,127 07/28/2015 Joe Denton Brown BROW3048/BEU 1064
23364 7590 07/02/2020
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
JORDAN, ANDREW
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOE DENTON BROWN
Appeal 2019-004795
Application 14/811,127
Technology Center 2800
Before LINDA M. GAUDETTE, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision twice rejecting claims 1–9 under 35 U.S.C. § 102(a)(1) as

1 This Decision includes citations to the following documents: Specification
filed July 28, 2015 (“Spec.”); Non-Final Office Action dated September 21,
2017 (“Non-Final”); Appeal Brief filed April 2, 2018 (“Appeal Br.”);
Examiner’s Answer dated April 2, 2019 (“Ans.”); and Reply Brief filed June
3, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as the
inventor, Joe Denton Brown. Appeal Br. 1.
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anticipated by, and claim 10 under 35 U.S.C. § 103 as unpatentable over,
Berens (US 2008/0170221 A1, published July 17, 2008).3
We AFFIRM IN PART.
CLAIMED SUBJECT MATTER
The claims are directed to an optical fiber that provides an indication
that breakage is imminent, and a method of manufacturing such a fiber.
Independent claims 1, 7, and 8, reproduced below, are illustrative of the
claimed subject matter:
1. An optical fiber having a core, at least one cladding
layer, and at least one buffer layer, comprising:
a built-in damage or wear detector in the form of
phosphors that emit light of a characteristic emission
wavelength λ2 in response to leakage of light from the core
through the at least one cladding layer, said light leaking from
the core having an interrogation wavelength λ1 and/or a
characteristic pattern or signature, wherein stimulation of
phosphor emission by the light of interrogation wavelength λ1
and/or a characteristic pattern or signature is indicative of aging
or wear on layers surrounding the at least one cladding layer,
and therefore of the risk of imminent breakage of the fiber,
wherein the phosphors are applied as a coating on or
incorporated into at least one of the cladding layer and the
buffer layer.
7. A method of making an optical fiber having an integrated
wear or damage detector, comprising the steps of (a) applying a
phosphor coating to a cladding or buffer layer of the optical
fiber, and/or (b) incorporating phosphors into the buffer layer or
layers surrounding the cladding layer, the applied or
incorporated phosphors emitting light of a characteristic
wavelength λ2 in response to leakage, from the core of the
optical fiber through the fiber cladding, of light having an

3 We have jurisdiction under 35 U.S.C. § 6(b).
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interrogation wavelength λ1 and/or a characteristic pattern or
signature.
8. A method of assessing or detecting damage to layers or
coatings of an optical fiber, and therefore of predicting a risk of
imminent breakage, comprising the steps of:
introducing into the optical fiber light having an
interrogation wavelength λ1; and
detecting damage to the fiber by detecting emissions of
wavelength λ2 that result from stimulation of phosphors applied
to or incorporated into a cladding and/or buffer layer of the
optical fiber when excess leakage of the interrogation beam
from a core of the optical fiber occurs.
Appeal Br. 14–15 (Claims Appendix).
OPINION
The Examiner rejected independent claims 1, 7, and 8, and dependent
claims 2–6 and 9, as anticipated by Berens, and rejected dependent claim 10
as unpatentable over Berens. See Non-Final 4–11. As to the anticipation
rejection, the Appellant argues in support of patentability of independent
claims 1, 7, and 8. See Appeal Br. 6–12. The Appellant’s arguments in
support of patentability of claim 10 are substantively the same as those made
in support of patentability of claim 8, from which claim 10 depends. See id.
at 12–13.
Berens describes fiber optic cable 100 as comprising the following
arrangement of parts beginning with the cable’s interior: core 160, cladding
150, buffer 140, braided layer 130, and jacket 110. Berens ¶ 20. Berens
discloses that buffer 140 surrounds and protects cladding 150. Id. Berens
describes braided layer 130 as providing conduit pull strength and jacket 110
as a plastic coating. Id. Berens discloses that “jacket 110 can be further
embedded with luminescent compound 120 distributed throughout jacket
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110 . . . [that] can be excited by an LED output to generate a fluorescence or
phosphorescence.” Id. ¶ 21.
The Examiner determined that the claim term “buffer layer,” recited
in each of independent claims 1, 7, and 8, encompasses Berens’s jacket 110
because “[t]he jacket of Berens buffers the cable from the environment.”
Non-Final 11. The Examiner explains that “[t]he term ‘buffer layer’ is seen
as a generic term in the art for one or more of [the many] coating and
protecting layers” in fiber optic cables and “does not imply any specific
materials or functions.” Ans. 4; see also id. at 10 (“[I]f it operates as a
buffer, the structure is a buffer.”).
The Appellant contends that the Examiner failed to apply the proper
claim interpretation standard, referencing the Examiner’s statement that
interpreting the claimed “buffer layer” as encompassing Berens’s jacket
“does no violence to the [claim] language despite the fact that it may be
inconsistent with common use” (Non-Final 11, 13). See Appeal Br. 9–12.
The Appellant argues that the Examiner’s interpretation of “buffer layer” is
unreasonable because “it is contrary to the ordinary meaning of the word
‘buffer’ in the optical fiber art,” and “contrary to [Berens’s] usage of
‘buffer.’” Id. at 7. We agree.
During examination, claim terms are given their broadest reasonable
construction consistent with the Specification, In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007), “as [they] would be interpreted
by one of ordinary skill in the art,” In re Suitco Surface, Inc., 603 F.3d 1255,
1260 (Fed. Cir. 2010) (citation omitted).
The Specification discloses that “an optical fiber includes a core, a
cladding, and a buffer layer,” each of which is “conventional” and “well
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known to those skilled in the art.” Spec. 6:16–19. The Appellant cites
http://www.cyberphysics.co.uk/topics/light/FiberOptics/FibreOptics.htm
(“the Cyberphysics website”) 4 for a description of a conventional optical
fiber’s structure. Appeal Br. 2. The Cyberphysics website’s illustration of an
optical fiber is reproduced below.

The Cyberphysics website Figure, above, depicts an optical fiber having the
following arrangement of parts beginning with the cable’s interior: a core, a
cladding, a buffer, armid fibers, and a jacket. The Figure includes a
description of the “buffer” as a “hard plastic coating to protect the cladding –
prevent scratches that could cause light leakage.” The Figure describes the
“aramid fib[er]s” as “giv[ing] flexible strength to the [optic fiber],” and
describes the “jacket” as an “outermost plastic protective cover.”
Comparing the above Cyberphysics website’s description with
Berens’s description of fiber optic cable 100 (supra pp. 3–4), we are
persuaded that the ordinary artisan would have understood the terms “buffer
layer” and “jacket” as referring to specific, individual parts of an optical

4 The website describes itself as “a web-based teaching aid - for students of
physics, their teachers and parents.”
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fiber cable. In particular, the ordinary artisan would have understood that the
buffer layer surrounds and protects the cladding, and differs from the jacket,
which is a typical optical fiber cable’s outermost layer or coating. Compare
the Cyberphysics website Figure, with Berens ¶ 20, Fig. 1. Accordingly, we
agree with the Appellant that the Examiner reversibly erred in determining
that the claim term “buffer layer” (claims 1, 7, 8) reads on Berens’s jacket
110.
The Examiner argues that even if the term “buffer layer” does not
encompass Berens’s jacket 110, independent claims 1, 7, and 8 still read on
Berens’s fiber optic cable 100, method of making the cable, and method of
detecting damage to cable layers, because “claim 1 (as well as independent
claims 7 and 8) recite that ‘the phosphors are applied as a coating on or
incorporated into at least one of the cladding layer and the buffer layer.’”
Ans. 3. The Appellant responds that “the inclusion of phosphors in a jacket
that surrounds a metal braid that surrounds a buffer can[not] be construed as
the phosphors being ‘coated on’ the buffer” as recited in the independent
claims, and asserts that “[m]erely ‘surrounding’ is not a synonym for
coating.” Reply Br. 2.
“[T]he [USPTO] must give claims their broadest reasonable
construction consistent with the specification. . . . Therefore, we look to the
specification to see if it provides a definition for claim terms but otherwise
apply a broad interpretation.” ICON Health, 496 F.3d at 1379; see 35 U.S.C.
§ 112 (a)–(b) (“The specification shall contain a written description of the
invention . . . . The specification shall conclude with one or more claims . . .
.”). The disputed claim language is not identical in claims 1, 7, and 8.
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Therefore we consider the broadest reasonable interpretation of the disputed
language for each of these claims.
Claim 1
Claim 5 depends from independent claim 1. 35 U.S.C. § 112(d)
provides that “a claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the subject matter
claimed.” Thus, to satisfy the requirements of 35 U.S.C. § 112(d), the claim
1 limitation “wherein the phosphors are applied as a coating on or
incorporated into at least one of the cladding layer and the buffer layer” must
be broader than (encompass) the claim 5 limitation “the phosphors are
provided as part of a separate coating surrounding the at least one cladding
layer” (emphasis added).
We turn next to the written description to see if it provides definitions
for any claim terms—for example, a definition of “separate coating
surrounding” (claim 5)—that indicates the scope of the invention is limited
to a phosphor coating directly adjacent the cladding layer, i.e., without any
intervening layers or coatings between the two. See In re Tanaka, 640 F.3d
1246, 1250 (Fed. Cir. 2011) (“[E]ach claim of a patent has a purpose that is
separate and distinct from the remaining claims. Claims of narrower scope
can be useful to clarify the meaning of broader, independent claims under
the doctrine of claim differentiation.” (citations omitted)). The Specification
explains that predicting when a fiber will break from damage to layers
surrounding the core or cladding is currently impractical or impossible.
Spec. 2:4–8, 20–24. Thus, “an objective of the invention [is] to provide a
way to assess damage [to] the coatings of an optical fiber and thereby
predict breakage of the optical fiber before it occurs.” Id. at 3:9–12
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(emphasis added); see also id. at 1:12–17 (“[The] invention relates to optical
fibers, and in particular to detection of coating degradation that presents a
risk of imminent breakage[, and] . . . to a method of manufacturing optical
fibers to enable detection of coating degradation.” (emphasis added)). The
Specification discloses that this objective is achieved by “a damage-
detecting, breakage-predicting phosphor layer.” See id. at 6:10–11 (emphasis
added). “[P]hosphors may be provided as part of a separate coating
surrounding the cladding or layers of the buffer, or may be incorporated into
the material of the buffer.” Id. at 4:7–10. “When light of wavelength λl is
present in the leakage, the phosphors in the phosphor coating are stimulated
and emit light of wavelength λ2. The resulting light emission from the
phosphor coating is visible or detectable to provide a warning that breakage
is imminent . . . .” Id. at 8:2–7 (emphasis added); see also id. at 7:25–26
(“As the coatings or layers surrounding the fiber deteriorate, leakage of light
increases . . . .” (emphasis added)); id. at 15 (claim 8) (reciting “[a] method
of assessing or detecting damage to layers or coatings of an optical fiber”).
The Specification discloses that “[i]n the preferred embodiment
illustrated in Fig. 1 . . . a phosphor coating is added between the cladding
and buffer layer.” Id. at 7:10–12 (emphasis added). The Specification states
that “[a]lthough depicted as a single coating layer between the cladding and
a buffer layer, it will be appreciated that the wear or damage detector in the
form of the phosphor coating [may] alternatively take the form of multiple
coatings, of one or more coatings between multiple cladding and/or buffer
layers, or of phosphors incorporated directly into the cladding and/or buffer
layers of the optical fiber.” Spec. 9:16–22 (emphasis added).
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The above citations and quotations evidence the inventor’s use of both
“coating” and “layer” to describe the cladding, buffer, and phosphors, and,
therefore, that these terms are synonymous as used in the Specification.
We did not find an occurrence of the claim 1 term “coating on” in the
original Specification. Nor did we find any indication that the scope of
“applied as a coating on” (claim 1) a layer differs from the scope of a
separate coating or layer between other layers as described in the
Specification. For example, we found no indication that “applied as a
coating on” requires affixing the phosphors to the cladding layer or buffer
layer, or positioning a phosphor-containing coating directly adjacent to one
of these layers (i.e., without any intervening layers or coatings between the
two). Accordingly, we determine that the broadest reasonable interpretation
of the claim 1 “wherein” clause encompasses Berens’s cladding 150 which
is surrounded by Berens’s luminescent compound 120-containing jacket
110. We note that Berens similarly uses both “coating” and “layer” in
describing jacket 110 and, as acknowledged by the Appellant (see Reply
Br. 2), luminescent compound 120-containing jacket 110 is a separate
structure that surrounds the other optical fiber layers. Compare Berens Title,
Abstract (“Fiber optic cable systems and methods incorporating a
luminescent compound-containing layer to identify cracks.” (emphasis
added)), with Berens ¶¶ 20–21 (“FIG. 1 illustrates an exemplary
embodiment of a fiber optic cable 100 incorporating a luminescent polymer
layer to identify cracks. . . . Braided layer 130 is surrounded by jacket
(plastic coating) 110. . . . [J]acket 110 can be further embedded with
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luminescent compound 120 distributed throughout jacket 110.” (emphasis
added)).5
Claim 7
Independent claim 7 recites “incorporating phosphors into the buffer
layer or layers surrounding the cladding layer.” Appeal Br. 15 (Claims
Appendix) (emphasis added). As with claim 1, we review the written
description to determine whether the broadest reasonable interpretation of
this claim 7 phrase encompasses Berens’s step of embedding luminescent
compound 120 into jacket 110 which surrounds cladding 150. See Berens
¶¶ 20–21.
The Specification discloses that the inventive “method modifies
conventional fiber manufacturing methods by adding the step of applying a
phosphor coating to the cladding or to a buffer layer of the optical fiber,
and/or the steps of incorporating phosphors into a [sic] buffer layers or
layers surrounding the fiber cladding.” Spec. 10:1–6 (emphasis added). As
evidenced by the Cyberphysics website Figure, as well as Berens, the layers
surrounding an optical fiber’s cladding are not limited to the buffer layer, but
include a jacket. Accordingly, we determine that the broadest reasonable
interpretation of the claim 7 “incorporating” step encompasses Berens’s step

5Cf. The American Heritage Dictionary (accessed June 24, 2020),
https://www.ahdictionary.com/word/search.html?q=layer (Layer: “2a. A
single thickness of a material covering a surface or forming an overlying
part or segment . . . .” (emphasis added)),
https://www.ahdictionary.com/word/search.html?q=coating (Coating: “1. A
layer of a substance spread over a surface as for protection or decoration; a
covering layer.” (emphasis added)).

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of embedding luminescent compound 120 into jacket 110 which surrounds
cladding 150.
Claim 8
Independent claim 8 recites “phosphors applied to or incorporated into
a cladding and/or buffer layer.” Spec. 15 (Claims Appendix). Having
considered this language in light of the Specification, we find no basis for
interpreting this language to exclude Berens’s jacket 110 with incorporated
phosphors 120 that surrounds cladding 150 and buffer 140. See In re Baker
Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (explaining that the
USPTO cannot adopt a construction that is “beyond that which was
reasonable in light of the totality of the written description” in the
Specification). Berens evidences that the ordinary artisan would have
understood that the term “applied,” as used in describing the components of
an optical fiber, encompasses surrounding a layer or layers with another
layer or coating. See Berens ¶¶ 20– 21 (describing “optic cable fabrication
processes” as follows: “Braided layer 130 is surrounded by jacket (plastic
coating) 110. . . . Prior art jackets are typically orange for MMF and yellow
for SMF. . . . In one exemplary embodiment . . . the [prior art] yellow or
orange jacket (PVC material) is merely replaced with transparent PVC and
applied in an identical fashion.” (emphasis added)).
In sum, for the reasons discussed above, we are not persuaded that the
Examiner’s rejections are based on unreasonably broad interpretations of “a
coating on” (claim 1), “applying a . . . coating to” (claim 7) and “phosphors
applied to” (claim 8) a cladding or buffer layer as encompassing Berens’s
jacket 110 embedded with luminescent compound 120.
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The Appellant also argues that “phosphors 120 of Berens are not used
to detect light leaking from the core.” Appeal Br. 7. The Appellant explains
that
when detecting light launched into the buffer and cladding as
well as the core, as Berens does, it is not possible to determine
which of the detected light is the result of core leakage and
which is the result of leakage from the cladding and the buffer.
The present invention seeks to detect light leaking from the core
(due to degradation of the cladding), and therefore places the
phosphors in the layer next to the cladding, i.e., the buffer layer.
Reply Br. 4.
The Appellant’s arguments are not persuasive of error in the
Examiner’s rejections because they are not directed to limitations recited in
claims 1, 7, or 8. Claims 1 and 7 require that the phosphors are only capable
of responding to light leakage from the optical fiber core through the fiber
cladding. See Appeal Br. 14–15 (Claims Appendix). The Appellant has not
explained why Berens’s luminescent compound 120 fails to meet this
requirement. Claim 8 recites “detecting damage to the fiber by detecting
emissions of wavelength λ2 that result from stimulation of phosphors
applied to or incorporated into a cladding and/or buffer layer of the optical
fiber when excess leakage of the interrogation beam from a core of the
optical fiber occurs.” Appeal Br. 15 (Claims Appendix) (emphasis added).
When a claim recites a method step that is conditioned on the occurrence of
some event, the broadest reasonable interpretation of the scope of that claim
may encompass two separate methods: one in which the conditional step
occurs and one in which the conditional step does not occur. Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792, at *4–5 (PTAB Apr. 28,
2016) (precedential); see also Cybersettle, Inc. v. Nat’l Arbitration Forum,
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Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of
course true that method steps may be contingent. If the condition for
performing a contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be
performed.”). Because the claim 8 “detecting” step is contingent on the
occurrence of excess leakage of the interrogation beam from the core, claim
8 reads on a method that includes only the first claim 8 step. The Appellant
has not explained persuasively why Berens fails to disclose a method that
includes the first claim 8 step. See, e.g., Ans. 5–7. “Claims which are broad
enough to read on obvious subject matter are unpatentable even though they
also read on nonobvious subject matter.” In re Lintner, 458 F.2d 1013, 1007
(CCPA 1972) (citation omitted).
Any remaining arguments made by the Appellant regarding the
Examiner’s rejections of claims 1–5 and 7–10, but not discussed in this
Decision, are not persuasive for the reasons explained by the Examiner in
the Answer. Accordingly, we sustain the rejections of claims 1–5 and 7–10.
Claim 6
The Examiner acknowledges that claim 6, dependent from claim 1,
requires that the phosphors are incorporated into the buffer layer. Ans. 3–4;
see Appeal Br. 15 (Claims Appendix). The Examiner’s finding that Berens
teaches this limitation is based on an interpretation of the “buffer layer” as
encompassing Berens’s jacket 110. Above, we determined that this
interpretation is overly broad. Although the Appellant does not argue
separately in support of patentability of dependent claim 6, we nonetheless
reverse the rejection of this claim as anticipated by Berens. See 37 C.F.R.
§ 41.37(c)(iv) (“Notwithstanding any other provision of this paragraph, the
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failure of the appellant to separately argue claims which appellant has
grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately.”).
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–9 102 Berens 1–5, 7–9 6
10 103 Berens 10
Overall
Outcome:

1–5, 7–10 6

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).
AFFIRMED IN PART