Ex Parte Bohler et al

Patent Trial and Appeal Board

Dec 26, 2018

12768158 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/768, 158 04/27/2010 Gregory B. Bohler
21495 7590 12/28/2018
CORNING INCORPORATED
INTELLECTUAL PROPERTY DEPARTMENT, SP-TI-3-1
CORNING, NY 14831
UNITED ST A TES OF AMERICA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HI09-033 5073
EXAMINER
JORDAN, ANDREW
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY B. BOHLER,
JULIAN L. GREENWOOD, III, KEITH A. GREER,
WESLEY B. NICHOLSON, and KIMBERLY D. SLAN
Appeal2018-004996
Application 12/7 68,158
Technology Center 2800
Before GEORGE C. BEST, A VEL YN M. ROSS, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Under 35 U.S.C. § 134, Appellants 1 appeal final rejection of claims 1,
29--38, 50-54, and 60. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as "Coming Cable Systems LLC."
Appeal Brief 1 ("Appeal Br.," February 5, 2016). In this opinion, we also
refer to the September 29, 2015, Final Action ("Final Act."), the February
16, 2018 Examiner's Answer ("Ans."), and the April 12, 2018, Reply Brief
("Reply Br.").
Appeal2018-004996
Application 12/7 68,158
CLAIMED SUBJECT MATTER
The disclosure is directed to a fiber optic assembly having a dielectric
armor. Claim 1, reproduced below, is representative:
1. An armored fiber optic assembly, comprising:
a fiber optic assembly having at least one optical
fiber and a jacket; and
a single layer dielectric armor formed from an
extrudable polymer material, the dielectric armor
surrounding the fiber optic assembly, providing crush
and impact resistance to the fiber optic assembly, and
having an inner surface and an outer surface, the
dielectric armor having an armor profile with an outside
diameter, wherein
the armor profile includes an undulating shape
along the length of the dielectric armor,
the outer surface of the dielectric armor defines the
outer surface of the armored fiber optic assembly, and
the jacket has a generally circular annular cross-
section with a smooth, arcuate outer surface of the jacket
that is adjacent to the inner surface of the dielectric armor
and contacts the inner surface of the dielectric armor at
various points along the length of the armored fiber optic
assembly, and wherein the armored fiber optic assembly
has a median separation in the range of about 0.1 - 1.5
millimeters between the fiber optic assembly and the
interior surface of the dielectric armor, wherein the jacket
has a jacket thickness and the dielectric armor has an
armor thickness greater than the jacket thickness.
Appeal Br. 18 (Claims Appendix).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Rohner
Lail
us 4,232,935
US 2001/0007 604 Al
2
Nov. 11, 1980
Jul. 12, 2001
Appeal2018-004996
Application 12/7 68,158
Register III
Paschal
US 2003/0161596 Al Aug. 28, 2003
US 2006/0280413 Al Dec. 14, 2006
REJECTION
The Examiner rejects claims 1, 30, 32-38, 50, 52-54, and 60 under 35
U.S.C. § I03(a) as unpatentable over the combination of Paschal and
Rohner. Final Act. 4.
The Examiner rejects claim 29 under 35 U.S.C. § I03(a) as
unpatentable over the combination of Paschal, Rohner, and Lail. Final
Act. 29.
The Examiner rejects claims 31 and 51 under 35 U.S.C. § I03(a) as
unpatentable over the combination of Paschal, Rohner, and Register III.
Final Act. 30.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). Having considered
the evidence presented in this Appeal and each of Appellants' contentions,
we are not persuaded that Appellants identify reversible error. Thus, we
affirm the Examiner's§ I03(a) rejections for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
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Claim 12
Appellants argue that the Examiner reversibly erred in finding that the
combined prior art teaches an "armor profile [that] includes an undulating
shape along the length of the dielectric armor" as recited in claim 1. Appeal
Br. 9. Specifically, Appellants acknowledge that Rohner teaches "the
desirability of a corrugated metallic tubular member for protecting a cable"
but argue that Rohner does not provide any teaching to use the corrugated
metallic member for the modification of the relevant structure in Paschal.
Id. ( emphases removed).
"[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007) (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)). In this case, Paschal undisputedly
describes a jacketed fiber optic cable (compare Final Act. 4, with Appeal Br.
9) whereas Rohner undisputedly describes advantages for using corrugated
metal to provide "a flexible and mechanically stable enclosure for the optical
waveguide." Compare Final Act. 6 ( quoting Rohner 1 :37--42), with Appeal
Br. 9. 3 Appellants also do not dispute the Examiner's finding that Rohner
describes that the "tubular member 4 may have transverse helical ... or
2 Appellants do not present argument separate from those for claim 1 for the
rejection of claims 30-38 and 50-53. Appeal Br. 13-14, 16. These claims
therefore, stand or fall with claim 1. See id.; see also 37 C.F.R.
§ 4I.37(c)(l)(iv).
3 In the Reply Brief, Appellants fault the Examiner for failing to provide
citations to Rohner in support of the rejection. Reply Br. 3--4. We direct
Appellants to the Final Rejection in which the Examiner provides a thorough
analysis of the rejection supported by factual evidence. See Final Act. 6.
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annular corrugations." Compare Final Act. 6 (quoting Rohner 2:19), with
Appeal Br. 9. We further note that the specification provides that the
"dielectric armor can have an armor profile resembling conventional metal
armored cables." Spec. ,r 7. Appellants also do not address the Examiner's
rationale that the combined prior art teaching would have led a skilled
artisan to arrive at the recited "undulating shape along the length of the
dielectric armor" to provide "flexibility without a corresponding loss in
mechanical stability or protection." Compare Final Act. 6, with Appeal Br.
9. Appellants do not present any unpredictable result argument, and we
discern no reversible error in the Examiner's fact findings with regard to this
claim limitation.
Appellants next argue that the Examiner reversibly erred in finding
that the prior art teaches "[a] jacket [that] ... contacts the inner surface of
the dielectric armor at various points along the length of the armored fiber
optic assembly" as recited in claim 1. Appeal Br. 10 ( emphasis removed).
Appellants, however, do not address Figure 5 of Paschal, which is cited in
support of the rejection. Compare id. at 10-11, with Final Act. 7; see also
Ans. 4--5. No reversible error has therefore been identified in the
Examiner's fact findings with regard to this claim limitation. See In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
rejections .... ").
Appellants also argue that the Examiner reversibly erred in finding
that the prior art teaches an "armored fiber optic assembly [that] has a
median separation in the range of about 0.1 - 1.5 millimeters between the
fiber optic assembly and the interior surface of the dielectric armor." Appeal
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Br. 11 ( emphasis removed). Appellants argue that "the geometry of the
dielectric armor arrangement discussed herein provides various
functionality, including crush resistance, impact resistance and ability to
return to undeformed shape following removal of loading" and cite to the
specification paragraphs 7, 40, 49 and 52 as support. Id. at 11-12. Not only
do Appellants fail to adequately explain why the recited median separation
distance is solely attributable to the geometry of the armor arrangement, but
the portions of the specification cited by Appellants also do not attribute any
purported functional advantages to the recited limitation. See Spec. ,r 7
("The dielectric armor provides crush and impact resistance to the optical
fibers and/or fiber optic assembl(ies) therein."); ,r 40 ("The elastic properties
of the rigid dielectric material of the armor 50 allow the assembly 20 to
recover generally to its original shape after crush or impact.."); ,r 49 ("An
added advantage in the use of dielectric armor is the lower weight when
compared with conventional metallic BX armor designs."); ,r 52 ("Two
factors that influence the mechanical performance of the dielectric armor are
geometry of the armored profile and the material characteristics of the armor
50.").
It has been generally held that changes in sizes of shapes of known
elements are within the level of skill in that art, especially in the absence of
unexpected results or criticality. See Gardner v. TEC Sys., Inc., 725 F.2d
1338, 1349 (Fed. Cir. 1984) (holding that, where the only difference
between the prior art and the claims was a recitation of relative dimensions
of the claimed device and a device having the claimed relative dimensions
would not perform differently than the prior art device, the claimed device
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was not patentably distinct from the prior art device). 4 In this case, because
Appellants' evidence does not support the argument that the purported
functional advantages patentably distinguish the recited median separation
distance from the prior art device, no reversible error has been identified in
the Examiner's findings.
Lastly, Appellants argue that the Examiner reversibly erred in finding
that Paschal teaches or suggests that "the dielectric armor has an armor
thickness greater than the jacket thickness." Appeal Br. 12. Appellants
acknowledge that Paschal describes that "the thickness T2 of the jacket 130
is between 0.20 and 1.0 mm." Id. ( quoting Paschal ,r 37); see Final Act. 5
(finding that the jacket 130 teaches the recited jacket). Appellants
acknowledge that Paschal describes that "the thickness of the outer jacket
250 is between about 0.40 and 1.0 mm." Id. ( quoting Paschal ,r 46); see
Final Act. 5 (finding that the outer jacket 250 teaches the recited dielectric
armor). Appellants argue that the Examiner reversibly erred by comparing
4 An argument raised for the first time in a Reply Brief can be considered
waived if Appellants do not explain why it could not have been raised
previously. See Ex parte Nakashima, 93 USPQ2d 1834 (BP AI 2010)
(informative) ( explaining that arguments and evidence not timely presented
in the principal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
14 77 (BP AI 2010) (informative) ("Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause."). In this case,
Appellants do not explain why arguments in the Reply Brief could not have
been raised in the opening brief and we therefore decline to consider these
arguments to which the Examiner has not had an opportunity to respond.
Compare Reply Br. 6-7 (distinguishing Gardner v. TEC Sys., Inc., 725 F.2d
1338 (Fed. Cir. 1984)), with Final Act. 7-9, 8 (applying Gardner to the
rejection).
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"the low end of the T2 range" to "the upper end of the range" of the prior art
jacket 250. Appeal Br. 12. We are not persuaded that the Examiner is
prohibited from considering the entirety of the prior art teachings. The test
of obviousness is "whether the teachings of the prior art, taken as a whole,
would have made obvious the claimed invention." In re Gorman, 933 F.2d
982, 986 (Fed. Cir. 1991). The prior art teaches an armor thickness that is
greater, less than, or equal to the jacket thickness which encompasses the
recited limitation. Appellants have not identified any unexpected results
arising from their selection of the relative thicknesses of the armor and the
jacket. We therefore discern no reversible error here.
Claims 54 & 60
The dispositive issue for the rejection of claims 54 and 60 is whether
the combined prior art teaches or suggests a "separation between the outer
surface of the jacket and the inner surface of the dielectric armor [that]
varies along the length of the fiber optic assembly."
Appellants argue that the Examiner reversibly erred in relying on
Figures 1 and 2 of Rohner because "the pattern of the corrugation in
Rohner's metallic tubular member 4 appears consistent along its length."
Appeal Br. 15. We decline Appellants' invitation to speculate as to what the
prior art drawings may or may not appear to show subjectively. See In re
Chitayat, 161 USPQ 224,226 (CCPA 1969) (patent drawings are not
necessarily intended to show accurate relative dimensions and "arguments
based on mere measurement of the drawings [are] of little value.").
Moreover, Appellants do not address the Examiner's fact finding with regard
to Figure 5 of Paschal and the rationale in finding that the recited limitation
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is taught or suggested. Compare Appeal Br. 14--15, with Final Act. 20-22.
No reversible error has therefore been identified here.
Claim 29
The dispositive issue for the rejection of claim 29 is whether the
Examiner reversibly erred in finding that a "dielectric armor [that] has a
modulus of elasticity of 1200 MPa or greater." While Appellants
acknowledge that the cited reference Lail describes a tubular material having
tensile modulus from 800 Mpa to 1500 Mpa, Appellants argue that the
combined prior art teaching would not have led to an "outer surface of the
dielectric armor [that] defines the outer surface of the armored fiber optic
assembly" as recited in claim 1 because the tubular material in Lail is "an
internal tubular structure buried toward the center of the disclosed cable."
Appeal Br. 15 ( emphasis removed).
"[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result." KSR,
550 U.S. at 416 (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)).
All of the features of the secondary reference need not be bodily
incorporated into the primary reference and the skilled artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
In this case, both the structure recited in claim 1 and the property of a
material recited in claim 29 are known. Based on the prior art teaching, the
Examiner finds that claim 29 is not patentably distinguished from the prior
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art structure and Appellants do not argue otherwise. We accordingly sustain
the rejection of claim 29.
DECISION
The Examiner's decision is affirmed.
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)(l )(iv).
AFFIRMED
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