Ex Parte Hong et al

Board of Patent Appeals and Interferences

Jan 13, 2009

10407298 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SIU-PING HONG,
STEVEN ALAN JACOBS, DAVID KALISH,
ALBERT JOHN RITGER, and IAN A. WHITE
____________

Appeal 2008-3629
Application 10/407,298
Technology Center 1700
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Decided: January 13, 2009
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-3, 7, 9, 14, 17,
and 25-28. (Second Corrected Appeal Brief “Br.” 2, III.) We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2008-3629
Application 10/407,298

Claim 1 is illustrative of the invention and is reproduced below:
1. Method for manufacture of a lightguide device, comprising:

directionally solidifying a solid body from a fluid across a solidifying
interface between the solid body and the fluid, the device including a glass
lightguide comprising a core and a cladding, and the lightguide containing a
series of geometric perturbations for provoking mode coupling,

CHARACTERIZED IN THAT

the method comprises introduction of at least one acoustic wave in the
fluid by means of an acoustic generator which is acoustically coupled with
the fluid, whereby the acoustic wave introduces periodic deformations into
the solidifying body, such deformations comprising said geometric
perturbations.

Appellants request review of the sole ground of rejection: claims 1-3,
7, 9, 14, 17, and 25-28 under 35 U.S.C. § 112, second paragraph, as
indefinite (Ans. 3, (9)).
ISSUE
Have Appellants shown that the Examiner reversibly erred in finding
that the claim term “acoustic wave” renders the claims indefinite?
We answer this question in the affirmative.
FINDINGS OF FACT
1. The Examiner finds that the Specification contains an explicit
definition of the term “acoustic wave” as an “elastic wave” (Ans. 4:1-
2 (citing Spec. 9:13-14)).
2. The Specification includes a section entitled “Terminology” which is
followed by the statement “(Meanings of terms, always consistent

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Application 10/407,298

with common usage, are sometimes more specific.)” (Spec. 7:1-2.)
3. The Terminology section of the Specification includes the following
statement: “Acoustic wave – Refers to an elastic wave, whether or
not in the audible range, which may be introduced into the fluid
region via ambient or solidified glass.” (Spec. 9:13-14.)
4. The Examiner finds that “an elastic wave is a wave in a solid body.”
(Ans. 4:3.)
5. Claim 1 recites a method which includes “introduction of at least one
acoustic wave in the fluid by means of an acoustic generator which is
acoustically coupled with the fluid.”
6. The Examiner contends that “one of ordinary skill would not be able
to understand what the claim requires” (Ans. 4:9-10) because claim 1
“requires two inconsistent things: 1) that the wave be in a solid and 2)
that [it] is in a fluid” (Ans. 4:7-8).
7. The Examiner does not dispute Appellants’ assertion that the ordinary
meaning of “acoustic wave” is “‘[a] longitudinal wave that [] consists
of a sequence of pressure pulses or elastic displacements of the
material, whether gas, liquid, or solid.” (Br. 4 (quoting Exhibit B)).
(See, e.g., Ans. 6 (noting that the rejection is based on Appellants’
definition “and any other definition for ‘acoustic wave’ is largely
irrelevant”).)
8. The Examiner does not respond to Appellants’ assertion that “the term
[‘acoustic wave’] is used consistently throughout the specification”
(Br. 6:11-12). Nor does the Examiner comment on the portions of the
Specification relied on by Appellants as supporting interpretation of
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Application 10/407,298

the claim 1 term “acoustic wave” in accordance with its ordinary
meaning (Br. 2, ¶V1). (See generally, Ans. 4-8, (10).)
9. The Specification states that “[i]n accordance with the invention, an
acoustic generator serves for introduction of an acoustic wave into the
fluid during fabrication.” (Spec. 5:6-8.)
10. The “Detailed Description” section of the Specification includes a
description of generating geometric deformations “by means of an
acoustic wave generator, acoustically coupled with, and introducing
appropriate acoustic wave energy into the fluid region – in the
instance of fiber fabrication, into the fluid draw region.” (Spec.
10:12-15.)
11. The Specification describes Figure 1 as “showing localized acoustic
coupling of wave energy in transverse direction relative to the fiber
axis.” (Spec. 16:1-3.)
12. Figure 1 shows a process in which a preform 10 undergoes heating by
a heat source 11 to liquefy and permit drawing reduction of fiber in a
fluid region 12. (Spec. 16:11-13.) “Alternative means for
introduction of the acoustic wave – ultimately into fluid region 12 . . .
are shown: 1) via ambient by means of an acoustic generator . . .
17a/18a . . . , and[] 2) via solid material – i.e., via preform 10, 20 by
means of oscillator/transducer 17b/18b . . . .” (Spec. 16:15-18.)
13. In addition to the foregoing citations to the Specification, the
Specification includes additional description (in connection with the
inventive process) relating to introduction of acoustic waves in fluid.

1 FF 9-12, infra, are among the portions of the Specification relied upon by
Appellants.
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Appeal 2008-3629
Application 10/407,298

PRINCIPLES OF LAW
35 U.S.C. § 112, second paragraph, provides that “[t]he specification
shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his
invention.” A claim is considered indefinite if it does not reasonably apprise
those skilled in the art of its scope. Amgen, Inc. v. Chugai Pharm. Co., Ltd.,
927 F.2d 1200, 1217 (Fed. Cir. 1991); see also, In re Venezia, 530 F.2d 956,
958 (CCPA 1976) (relevant inquiry under § 112, second paragraph, is
whether the claims delineate to a skilled artisan the bounds of the invention).
In general, words used in a claim are accorded their ordinary and
customary meaning. Honeywell Int'l Inc. v. Universal Avionics Sys. Corp.,
488 F.3d 982, 992 (Fed. Cir. 2007). “[T]he ordinary and customary meaning
of a claim term is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention.” Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). In interpreting
claim terms, we rely on the written description for guidance in ascertaining
the scope and meaning of the claims. See id. at 1317.
A patentee “may demonstrate an intent to deviate from the ordinary
and accustomed meaning of a claim term by including in the specification
expressions of manifest exclusion or restriction, representing a clear
disavowal of claim scope.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1325 (Fed. Cir. 2002); accord Alloc, Inc. v. Int'l Trade Comm'n, 342
F.3d 1361, 1368 (Fed. Cir. 2003) (“A patent applicant may consistently and
clearly use a term in a manner either more or less expansive than its general
usage in the relevant art, thereby expanding or limiting the scope of the term
in the context of the patent claims.”) However, the scope of a claim term
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should only be limited based on an express disclaimer of a broader
definition. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
ANALYSIS
Appellants have persuasively argued that the Examiner reversibly
erred in finding the appealed claims indefinite. The Examiner’s position is
based on a finding that the Specification provides an explicit definition for
the term “acoustic wave.” However, we are in agreement with Appellants
that the two lines of the Specification referenced by the Examiner do not
demonstrate an intent on the part of the Appellants to deviate from the
ordinary and accustomed meaning of the term “acoustic wave.” Rather, we
find that the term “acoustic wave” has been used consistently and clearly
throughout the Specification in a manner consistent with what Appellants
contend is the ordinary meaning in the art.
CONCLUSION
The decision of the Examiner rejecting claims 1-3, 7, 9, 14, 17, and
25-28 is reversed.

REVERSED

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FITEL USA CORP.
SUITE 2H02
2000 NORTHEAST EXPRESSWAY
NORCROSS, GA 30071

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