Ex Parte Fernald et al

Patent Trial and Appeal Board

Jun 21, 2016

13311786 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/311,786 12/06/2011 MARK R. FERNALD
36735 7590 06/23/2016
PATTERSON & SHERIDAN, L.L.P. /Weatherford
24 Greenway Plaza, Suite 1600
HOUSTON, TX 77046
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.
WEAT/0553USC1 9821
EXAMINER
EL SHAMMAA, MARY A
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
06/23/2016 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):
PSDocketing@pattersonsheridan.com
Pair_eOfficeAction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK R. FERNALD, TREVOR W. MACDOUGALL,
MARTIN A. PUTNAM, REBECCA S. BRYANT, CHRISTOPHER J.
WRIGHT, MICHAEL ARCARD, and CHRISTOPHER T. CHIPMAN
Appeal2015-000592
Application 13/311,786
Technology Center 2800
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1and3-21. We have jurisdiction under 35 U.S.C. § 6(b). Claim 2
is canceled. See App. Br. (Claims App'x) 16.
We reverse.
1 According to Appellants, the real party in interest is
WEATHERFORD/LAMB Incorporated. App. Br. 3.
Appeal2015-000592
Application 13/311,786
STATEMENT OF THE CASE
The Invention
Appellants' invention relates "to optical waveguide attachment
techniques and, more particularly, to techniques for achieving a low loss
large diameter fusion splice." Spec. ,-i 2. Claims 1 and 9 are independent.
Claim 1 is illustrative of the subject matter on appeal:
1. A method for splicing together two optical waveguide
sections, wherein at least one of the optical waveguide sections
comprises a core disposed in at least one cladding, the method
compnsmg:
a) aligning distal ends of the two optical waveguide
sections, wherein a cross-sectional dimension of the at least one
of the optical waveguide sections is greater than 400 µm;
b) providing at least two laser beams for heating the
optical waveguide sections;
c) adjusting a power level of the at least two laser beams;
and
d) exposing the distal ends of the optical \vaveguide
sections to the at least two laser beams.
See App. Br. (Claims App'x) 16.
Rejections on Appeal
Claims 1and3-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Walters et al. (US 2001/0014198 Al; published Aug. 16,
2001) ("Walters") and Nakamura (US 2002/0165525 Al; published Nov. 7,
2002). See Final Act. 2-6.
RELATED APPEALS
Although not identified by Appellants as a related appeal (see App.
Br. 4), we note that the parent of the present application, Application
2
Appeal2015-000592
Application 13/311,786
101755,708, was the subject of Appeal 2009-013386 (decided Mar. 17, 2011,
reconsidered June 16, 2011). See 37 C.F.R. § 41.37(c)(l)(ii) (2013).
ISSUE
The dispositive issue presented by Appellants' contentions is as
follows:
Is Nakamura analogous art with regard to Appellants' claimed
invention?
ANALYSIS
The Examiner finds that "Walters and Nakamura are analogous
because both Walters and Nakamura disclose waveguides with lenses on the
ends, and waveguides are analogous." Ans. 2. But, the Examiner
incorrectly identifies the issue as whether Walters and Nakamura are
analogous art to each other. See Ans. 2; App. Br. 3. Rather, as Appellants
contend, the correct issue is whether Nakamura is analogous art to
Appellants' claimed invention because "[a] reference qualifies as prior art
for an obviousness determination under § 103 only when it is analogous to
the claimed invention." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(citations omitted); see App. Br. 2-3. In an analogous art determination,
[ t ]wo separate tests define the scope of analogous prior art: ( 1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
Klein, 647 F.3d at 1348 (citations omitted).
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Appeal2015-000592
Application 13/311,786
Accordingly, Appellants contend that Nakamura is not analogous art
to Appellants' claimed invention because Nakamura is neither (1) in the
same field of endeavor as Appellants' invention, nor (2) reasonably pertinent
to the problem faced by Appellants. We agree with Appellants.
The first test for analogous art "requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention's
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention." In re Bigio, 3 81 F .3 d
1320, 1325 (Fed. Cir. 2004). Here, although the Examiner is correct that the
Appellants' claimed invention and the cited references are all broadly
directed to optical components such as fibers or waveguides (see Ans. 2),
Nakamura diverges substantially from "the embodiments, function, and
structure of [Appellants'] claimed invention," Bigio, 381 F.3d at 1325.
Indeed, although both Nakamura and Appellants' invention use laser beams
that contact optical waveguides, Nakamura uses its laser beam to treat a
patient's eye (see Nakamura ,-i,-i 2, 11-13), whereas in contrast, Appellants'
invention uses one or more laser beams to fusion-splice optical waveguide
sections, at least one of which has a large diameter (see Spec. ,-i 18). See
also App. Br. 3. Therefore, we find Nakamura is not from the same field of
endeavor as Appellants' claimed invention.
Turning to the second test for analogous art, "[a] reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor's attention in
considering his problem." Klein, 647 F.3d at 1348 (quoting In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992)). Here, we agree with Appellants (see App.
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Appeal2015-000592
Application 13/311,786
Br. 2-3) that Nakamura, which is concerned with irradiating a laser beam to
a patient's eye (see Nakamura iii! 2, 11-13), logically would not have
commended itself to Appellants' attention in considering their problem of
fusion-splicing of a large optical waveguide while maintaining uniform
heating, minimizing loss, and avoiding use of epoxy (see Spec. iJ 18).
Therefore, we agree with Appellants that Nakamura is not reasonably
pertinent to the particular problem with which Appellants were involved.
For emphasis only, we observe that the Examiner's articulated
motivation to combine Walters with Nakamura-that by using a larger
diameter optical fiber, the irradiation spot size ofNakamura's treatment laser
beam can be changed-is irrelevant and inapplicable to Walter's method of
fusion-splicing optical components of substantially different cross-sectional
areas. See Final Act. 3; Nakamura iJ 31. Accordingly, the Examiner has not
identified a rational underpinning for the legal conclusion of obviousness as
required by KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
Appellants have persuaded us that the Examiner erred in finding
Nakamura to be analogous art. Accordingly, we do not sustain the rejection
of claims 1 and 3-21, which were rejected relying on the teachings of
Nakamura.
DECISION
The decision of the Examiner to reject claims 1 and 3-21 is reversed.
REVERSED
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