Ex Parte Carpenter et al

Board of Patent Appeals and Interferences

Sep 10, 2012

11424770 (B.P.A.I. Sep. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARRY S. CARPENTER, TERRY L. SMITH, and STEPHEN J.
ZNAMEROSKI
____________

Appeal 2010-005605
Application 11/424,770
Technology Center 2800
____________

Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005605
Application 11/424,770
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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-3 and 5-19. Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

INVENTION
This invention relates to a cantilevered fiber array (CFA) that can be
used with integrated planar waveguide devices, such as a planar lightwave
circuit (PLC). (Spec. 1). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A fiber alignment device, comprising:
a base having at least one alignment groove and an end
face;
a stripped portion of an optical fiber positioned in the at
least one alignment groove; and
a cover having an end face on a same side of the device
as the end face of the base, wherein a terminal end of the fiber
extends beyond at least one of the end face of the base and the
end face of the cover, wherein the cover is bonded to the base to
secure the optical fiber between the base and the cover, wherein
the end face of the cover and the end face of the base are
substantially non-parallel.
(Disputed limitation emphasized).

REJECTIONS
Claims 1-3, 5-8, 10-16, 18, and 19 stand rejected under 35 U.S.C.
§102(e) as being anticipated by Colgan (U.S. Patent No. 7,116,886).
Appeal 2010-005605
Application 11/424,770
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Claims 9 and 17 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Colgan.

ANALYSIS
Issue: Under §102, did the Examiner err in finding that the cited
Colgan reference discloses "wherein the end face of the cover and the end
face of the base are substantially non-parallel," within the meaning of claim
1 and the commensurate language of independent claims 11 and 16?

Appellants present the following contentions regarding claim 1:
Furthermore, the Examiner s[t]ates that in FIG. 7a of
Colgan, the left end faces of carrier 52 and recessed fiber array
51 are non-parallel. Appellants respectfully disagree. The
zigzag line on the left side of carrier 52 is a breakaway line
indicating that the carrier continues indefinitely to the left
beyond the zigzag line. As such, there is no disclosure,
expressly or inherently, regarding the left end face of carrier 52.
Hence, contrary to the Examiner's statement, Colgan does not
disclose that the left end faces of carrier 52 and recessed fiber
array 51 are non-parallel.
(App. Br. 5-6).
The Examiner responds:
The zigzag breakaway line is drawn into a surface that is clearly
shown to be substantially straight up and down as seen in figure
7a. To wit, the portions of the left end face of portion 52 that
[are] not interrupted by the breakaway line are shown in Fig. 7a
to be non-parallel to the left end face of portion 51. The
Examiner submits that one of ordinary skill in the art would
recognize the orientation of the left end face of portion 52 based
upon the portions not interrupted by the breakaway line.
Additionally, if the left end face of portion 52 were intended to
be parallel to the left end face of portion 51, the left end face of
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Application 11/424,770
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portion 52 would be angled in the same manner as the left end
face of portion 51, with the breakaway line drawn into the then
angled end face.
(Ans. 11).
Appellants' argument is persuasive for at least the following reasons:
(1) After reviewing the record before us, we agree with Appellants'
argument (App. Br. 5-6) that the Examiner's Answer does not specifically
identify any teaching in Colgan that discloses the shape or orientation of the
left end face of carrier 52 in Figure 7A.
(2) For us to affirm the Examiner on this record would require
speculation on our part that: (1) the left end face of carrier 52, as depicted
with a zigzag drawing breakaway line, and (2), the left end face of recessed
fiber array 51, are substantially non-parallel. (Colgan, Fig. 7a). Without
additional evidence, we decline to speculate regarding the shape or
orientation of the left end face of carrier 52 that incorporates the zigzag line
drawing nomenclature.
Therefore, on this record, we cannot sustain the Examiner’s finding
that the cited Colgan reference discloses "wherein the end face of the cover
and the end face of the base are substantially non-parallel," within the
meaning of claim 1 and the commensurate language of independent claims
11 and 16.
Accordingly, we reverse the Examiner's rejection of claim 1 and
independent claims 11 and 16, which recite commensurate language. We
also reverse the Examiner's rejection under § 102(e) of dependent claims 2,
3, 5-8, 10, 12- 15, 18, and 19, which depend from independent claims 1, 11,
and 16. For the same reason, we also reverse the Examiner's rejection under
§ 103(a) of claims 9 and 17, which depend from claims 1 and 16, for which
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the Examiner does not present findings to cure the aforementioned
deficiency regarding Colgan.

DECISION
We reverse the Examiner's rejection of claims 1-3, 5-8, 10-16, 18, and
19 under 35 U.S.C. § 102.
We reverse the Examiner's rejection of claims 9 and 17 under 35
U.S.C. § 103(a).
REVERSED

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