Ex Parte Dean et al

Patent Trial and Appeal Board

Dec 27, 2016

14087468 (P.T.A.B. Dec. 27, 2016)

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.
14/087,468 11/22/2013 David Lee Dean JR. HI12-017A 4345
21495 7590 12/29/2016
CORNING INCORPORATED
INTELLECTUAL PROPERTY DEPARTMENT, SP-TI-3-1
CORNING, NY 14831
EXAMINER
PEACE, RHONDA S
ART UNIT PAPER NUMBER
2874
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID LEE DEAN, JR.
and WILLIAM CARL HURLEY
Appeal 2015-003716
Application 14/087,468
Technology Center 2800
Before PETER F. KRATZ, MARK NAGUMO, and
WESLEY B. DERRICK, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—15.1 We have jurisdiction pursuant to
35 U.S.C. §6.
Appellants’ claimed invention is directed to a method of
manufacturing a cable wherein a jacket and a second optical fiber are co­
extruded (Spec. 128).
Claim 1 is illustrative and reproduced from the Claims Appendix
below (App. Br. 11):
1 Appellants state “[t]he real party in interest is Coming Cable Systems LLC,
the assignee of record, and Coming Optical Communications LLC,
successor in interest to Coming Cable Systems LLC” (App. Br. 1).
Appeal 2015-003716
Application 14/087,468
1. A method of manufacturing a cable, comprising:
extruding a second optical fiber, wherein the second optical fiber is
plastic, and wherein the second optical fiber is configured to release, along a
length of the second optical fiber, at least some of light passed through the
second optical fiber; and
extruding, while extruding the second optical fiber, a jacket to at least
patiially [sic] embed the second optical fiber and to surround a first optical
fiber, the first optical fiber comprising a glass core and cladding, wherein the
glass core is configured to provide controlled transmission of light
therethrough for high-speed data communication;
wherein the first optical fiber is positioned in an interior cavity of the
jacket and the second optical fiber is integrated with an exterior surface of
the jacket, and wherein the jacket is such that light released by the second
optical fiber is visible along the exterior surface of the jacket, thereby
providing a visual trace.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
The Examiner maintains the following grounds of rejection2:
Claims 1—11 and 13—15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Keller in view of Harper. Claim 12 stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over Keller in view of
Harper and Strasser.
We reverse the stated rejections substantially for the reasons argued
by Appellants (App. Br. 6—9; Reply Br. 1—3).
2 Claims 16—20 were cancelled in an Amendment filed April 25, 2014 (see
App. Br. 3, n.l).
Strasser
Harper
Keller
US 6,257,750 B1
US 6,317,553 B1
US 6,347,172 B1
July 10, 2001
Nov. 13, 2001
Feb. 12, 2002
2
Appeal 2015-003716
Application 14/087,468
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984). Here, the Examiner’s reliance on a
combination of Keller and Harper to underpin the stated obviousness
rejections is not well-founded.
Concerning the first stated obviousness rejection, the Examiner finds
that Keller fails to teach a method of forming a cable including a step of
extruding a side-emitting (“second”) optical fiber via an extrusion process
while extruding a jacket and/or co-extruding a second optical fiber and a
jacket as required by independent claims 1 and 9, respectively (Final Act. 5—
6; Keller, col. 3,11. 19-46; col. 4,11. 3-67, col. 6,11. 48-67; col. 7,11. 1-9).
The Examiner relies on Harper for an alleged teaching of the co­
extrusion of a conductive material (heterogeneous region) and a jacket (Final
Act. 6; Harper, abstract, col. 1,11. 48—55, col. 2,11. 9-13, col. 3,11. 1—21, 33—
38, col. 5,11. 6—36; Figs. 1—4, 6—9). Based on the Examiner’s findings, the
Examiner maintains that one of ordinary skill in the art would have been led
to combine the teachings of Keller and Harper “thereby forming the jacket
and second optical fiber of Keller from materials which do not mix and
using a co-extrusion process as taught by Harper to simultaneously extrude
both the jacket material and second optical fiber” (Final Act. 6).
Even if we could agree with the Examiner that Harper’s method of
introducing a heterogeneous region into the coating layer(s) during the
coating of a fiber strand comprises a co-extrusion of the coating layers (12,
13) and the heterogeneous region material (14), we concur with Appellants
that the Examiner has not established that Harper’s coating application
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Appeal 2015-003716
Application 14/087,468
method comprises a teaching of the co-extrusion of a plastic optical fiber
(second optical fiber) with a cable jacket (Reply Br. 2—3; App. Br. 7).
Consequently, the Examiner has not established an adequate factual
predicate for the proposed modification of Keller based on the teachings of
Harper that would have resulted in a process satisfying all of the limitations
required by Appellants’ independent claims 1 and/or 9.
Moreover, as argued by Appellants, the Examiner has not established
that Strasser, as employed by the Examiner in the separate rejection of
dependent claim 12, makes up for the deficiencies in the Examiner’s
proposed combination of Keller and Harper (App. Br. 9—10).
Rejections based on § 103(a) must rest on a factual basis with these
facts being properly set forth and interpreted without hindsight
reconstruction of the invention from the prior art. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
On this record, we reverse the obviousness rejections of the appealed
claims.
CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.
REVERSED
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