Donald G. Heflinger et al.

Patent Trials and Appeals Board

Aug 23, 2019

15459786 - (D) (P.T.A.B. Aug. 23, 2019)

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.
15/459,786 03/15/2017 DONALD G. HEFLINGER NG(ST)023817 US NPR 5046
109501 7590 08/23/2019
Tarolli, Sundheim, Covell & Tummino
LLP and Northrop Grumman Systems Corporation
1300 East Ninth Street
Suite 1700
Cleveland, OH 44114
EXAMINER
TAVLYKAEV, ROBERT FUATOVICH
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
08/23/2019 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):
docketing@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DONALD G. HEFLINGER and LUKE A. SWEATLOCK
____________

Appeal 2018-008277
Application 15/459,786
Technology Center 2800
____________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
DONNA M. PRAISS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1–20 under 35 U.S.C. § 103 as unpatentable
over Capasso et al. (US 2010/0226134 A1, published Sept. 9, 2010)
(“Capasso”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is identified as Northrup Grumman Corporation
(Appeal Br. 3).
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Application 15/459,786

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Independent claim 1 is illustrative (emphasis added to highlight key
disputed limitation):
1. An optical fiber comprising:
a core material that extends along an axial length of the
optical fiber and which corresponds to a core of the optical
fiber;
a cladding material surrounding the core material along
the axial length of the optical fiber and which corresponds to a
cladding of the optical fiber; and
an optical fiber-coupler arranged at an end-face of the
optical fiber and coupled to the cladding material and
surrounding an optical aperture associated with an end of the
core material, the optical fiber-coupler being configured to
couple an optical beam incident on the optical fiber-coupler
and at least a majority of the core material [into the core
material] 2 based on plasmonic waves induced on the optical
fiber-coupler in response to the incident optical beam.

While Appellants present separate sections for each of independent
claims 1, 9 and 15, the arguments are essentially the same in each section for
each independent claim (e.g., Appeal Br. 18).
Appellants only separately address dependent claims 6, 12, and 20, for
essentially the same reasons as their respective independent claim and for
each other (e.g., Appeal Br. 16).
ANALYSIS
After review of Appellants’ and the Examiner’s opposing positions,
the applied prior art, and Appellants’ claims, we determine that Appellants’

2 Claim 1 in the Claims Appendix of the Appeal Brief is incorrect as the
Examiner did not enter the amendment after final (see Advisory Action
mailed Feb. 9, 2018). The claim herein is the claim on appeal, with the
amendment that was not entered by the Examiner in brackets.
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arguments are insufficient to identify reversible error in the Examiner’s
obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
A preponderance of the evidence supports the Examiner’s determination that
the claimed subject matter is unpatentable within the meaning of § 103 in
view of the applied prior art. Accordingly, we will sustain the Examiner’s
§ 103 rejection, for essentially those reasons expressed in the Answer,
including the Examiner’s Response to Argument section, and we add the
following primarily for emphasis.
“[T]he PTO 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.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id. (citations omitted)
Appellants’ arguments focus on whether Capasso discloses structure
that encompasses the limitations regarding the fiber coupler being
configured to couple an optical beam incident on the coupler and at least a
majority of the core material; Appellants contend Capasso’s structure is only
described as an optical output device and not as an optical receiver (e.g.,
Appeal Br. 7). Each argument advanced by Appellants is adequately
addressed by the Examiner (see generally Ans.). As pointed out by the
Examiner, the claim language of independent claim 1 does not distinguish
over the optical waveguide (coupler and optical fiber) of Capasso because it
is capable of the claimed function, as denominated by the Examiner (see
generally Ans.). Appellants have not directed our attention to any special
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definition of the disputed phrases/language of claim 1 in the Specification,
or to any persuasive reasoning or credible evidence to establish that the
Examiner’s interpretation of the language in independent claim 1 is
unreasonable.
Specifically, Appellants repeatedly argue that Capasso does not
explicitly describe that its optical device receives incident optical energy
(Appeal Br. 7; Reply Br. 3). Appellants state that the functional language
used in claim 1 means the optical fiber is used as an optical receiver, “as
opposed to an optical transmitter” and Capasso “fails to describe” this
capability or that “Capasso can be implemented as an optical receiver”
(Reply Br. 3). Appellants further argue that the Examiner’s position is based
on “impermissible hindsight” (Reply Br. 4).
It is well established that when there is a reason to conclude that the
structure of the prior art is capable of performing the claimed function, the
burden shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. See, e.g., In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellants’ contention
that the Examiner’s position is based on impermissible hindsight (Reply Br.
4), appears misdirected, since the Examiner’s position was premised on the
inherent two-way capability of a passive optical device (Ans. 3). Notably, as
pointed out by the Examiner, Capasso discloses that the optical waveguide
may be a completely passive device (Final Action 7; Capasso ¶¶ 7, 10, and
84; Ans. 3). Appellants have not provided any persuasive reasoning or
credible evidence to refute the Examiner’s determination that the optical
waveguide (that is, coupler and optical fiber) of Capasso is capable of
optical reciprocity (see generally Ans.). Attorney’s arguments in a brief
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cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (citation omitted).
Furthermore, since there are only two possibilities, that an optical
waveguide device be either a receiver or transmitter, one of ordinary skill in
the art would have readily inferred that the structure of Capasso would have
been capable of being configured to operate in either direction, to receive or
transmit an optical beam, if such a capability is indeed not inherent.
Appellant has thus not shown error in the Examiner’s determination that one
of ordinary skill in the art, using no more than ordinary creativity, would
have predictably used the optical waveguide of Capasso as either a receiver
or a transmitter. It is well established that obviousness does not require
absolute predictability of success, rather, all that is required is a reasonable
expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
(citation omitted).
Appellants also do not point out reversible error in the § 103 rejection
of dependent claims 6, 12, and 20 for reasons explained by the Examiner
(Ans. 7, 8).
Accordingly, the Examiner’s § 103 rejection is affirmed with respect
to all of the claims on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
ORDER
AFFIRMED