Ex Parte Isenhour et al

Patent Trial and Appeal Board

Oct 2, 2017

13902039 (P.T.A.B. Oct. 2, 2017)

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.
13/902,039 05/24/2013 Micah Colen Isenhour HI10-074 6291
21495 7590 10/04/2017
CORNING INCORPORATED
INTELLECTUAL PROPERTY DEPARTMENT, SP-TI-3-1
CORNING, NY 14831
EXAMINER
WONG, ERIC K
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
10/04/2017 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 MICAH COLEN ISENHOUR, DENNIS MICHAEL KNECHT1,
and JAMES PHILLIP LUTHER,
Appeal 2016-002182
Application 13/902,039
Technology Center 2800
Before PETER F. KRATZ, CHRISTOPER L. OGDEN, and
BRAIN D. RANGE, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 2, 4—6, 9, 11—13, 16—18, 20, and 21.
We have jurisdiction pursuant to 35 U.S.C. § 6. We reverse.
Appellants’ claimed invention is directed to a hybrid mechanical
splice connector having an electrical portion and an optical portion.
1 According to Appellants the Real Party in Interest is Coming Cable
Systems LLC, now named Coming Optical Communications LLC.
Appeal 2016-002182
Application 13/902,039
Claim 1 is illustrative and reproduced below:
Claim 1. A hybrid mechanical splice connector having an
electrical portion and an optical portion, comprising:
at least one electrical contact;
a shell;
at least one body for receiving at least one field optical
fiber and securing the electrical contact, wherein the body
includes a mechanical retention component for securing at least
one optical field fiber to the at least one body where the
mechanical retention component can move between an open
position and a clamp position.
Appeal Br., Claims App’x. 32.
In addition to Official Notice, the Examiner relies on the following
prior art references as evidence in rejecting the appealed claims:
Liao US 2010/0290745 A1 Nov. 18,2010.
Shimotzu WO 2009/030982 A1 Mar. 12, 2009.
The Examiner maintains the following grounds of rejection:
Claims 1, 2, 4, 5, 9, 12, 13, and 16—18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Liao in view of Shimotsu.
Claims 6, 11, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Liao in view of Shimotsu and Official Notice.2
We reverse the stated rejections. Our reasoning follows.
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 E.2d
1468, 1472 (Led. Cir. 1984). Here, the Examiner’s reliance on a
2 The Examiner presents the rejection of claims 20 and 21 separately from
the rejection of claims 6 and 11 (Final Act. 6—8); however, we consolidate
that latter rejections for purposes of review on appeal.
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Appeal 2016-002182
Application 13/902,039
combination of Liao and Shimotsu to underpin the stated obviousness
rejection is not well-founded.
Concerning the Examiner’s first stated rejection, the Examiner has
determined that Liao fails to disclose a mechanical retention component that
can move between an open position and a clamp position, which is a
required feature of all the claims on appeal (see independent claims 1, 4, and
20).
The Examiner relies on Shimotzu for disclosing a mechanical
retention component (18, 15/151) as shown in Figures 4—7, 10, 12, 13, 16,
and 17 and the Examiner maintains that one of ordinary skill in the art would
have been led to use the retention component of Shimotzu in the mechanical
splice connector of Liao in order to help removably secure the optical fibers
in Liao (Final Act. 3—4).
As argued, inter alia, by Appellants, however, Liao requires an optical
module 3, which includes main body 30 and optical fibers 35, to move (be
movably received) with respect to the insulative housing 1 and plastic case 9
of Liao and the Examiner has not established how the proposed modification
would be consistent with the desired movable operably of Liao for the fiber
connection rather than frustrating such a purpose by attempting to install a
fixed retainer component in accordance with the teachings of Shimotzu
(App. Br. 24—25; Liao 117, 25, 27).
Moreover, Appellants argue that the Examiner does not address much
less establish how the sleeve 15 and retainer 18 of Shimotzu would interface
with the significantly different connector of Liao, which does not connect a
first fiber to a second fiber as in Shimotzu, which lack of detail further
highlights the lack of motivation for one of ordinary skill in the art to
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Application 13/902,039
attempt a modification as generally proposed by the Examiner (App. Br. 26—
27).
The record appears to support Appellants’ argument, and the
Examiner’s rebuttal position in the Answer lacks persuasive merit (Ans. 3^4;
see Reply Br. 4—6).
In sum, establishing a prima facie case of obviousness of an invention
comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed.” KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Here, for reasons argued by Appellants, the Examiner’s conclusively
proposed modification of Liao by the retention feature of Shimotzu falls
short in providing the requisite incentive for one of ordinary skill in the art
to implement a modification of Liao as proposed.
Thus, the Examiner’s first stated rejection appears to be based upon
impermissible hindsight in view of the Appellants’ disclosure. See also In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art”).
Accordingly, we do not sustain the rejection.
The Examiner has not established how the reliance on Official Notice
for certain other features with respect to the rejection of certain dependent
claims in the separately stated obviousness rejections cures the
aforementioned deficiency in the base rejection.3
3 The Examiner’s reference to certain additional references in the Examiner
Answer is noted; however, the latter references are not part of the relied
upon evidence set forth in the stated rejections (Ans. 4). Consequently, we
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Application 13/902,039
It follows that we shall reverse all of the Examiner’s obviousness
rejections.
CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.
REVERSED
do not consider these references. In re Hoch, 428 F.2d 1341, 1342 n.3
(CCPA 1970) (“Where a reference is relied on to support a rejection,
whether or not in a ‘minor capacity,’ there would appear to be no excuse for
not positively including the reference in the statement of rejection.”). See
also Ex parte Raske, 28 USPQ2d 1304, 1304-1305 (BPAI 1993) (“[The
newly-cited references] are not positively included in the statement of
rejection, and we have considered the issue . . . based solely on the evidence
contained in [the statement of the rejection].”).
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