Ex Parte Kasahara et al

Patent Trial and Appeal Board

Jul 15, 2016

13397397 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/397,397 02/15/2012 Minoru KASAHARA
22850 7590 07119/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
3945 l 8US8CONT 4699
EXAMINER
TAVLYKAEV, ROBERT FUATOVICH
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
07/19/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MINORU KASAHARA, MINORU SAITO,
Y ASUO NAKAJIMA, and HIROKI TANAKA
Appeal2015-000387
Application 13/397,397
Technology Center 2800
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-5 and 7-12 as unpatentable
over at least the combined prior art of Ishii (JP 2007-79603A, published
Mar. 29, 2007), Asrar et al. (US 2008/0160302 Al, published July 3, 2008)
1 According to Appellants, the real party in interest is Furukawa Electric Co.,
LTD (Br. 1).
Appeal2015-000387
Application 13/397,397
("Asrar"), and Senoo et al. (JP 2009-122209, published June 4, 2009)
("Senoo").2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We affirm.
Upon consideration of the evidence of record and each of Appellants'
contentions as set forth in the Appeal Brief filed June 20, 2014, we
determine that Appellants have not demonstrated reversible error in the
Examiner's rejection (e.g., Ans. 3-7 (mailed Aug. 1, 2014)). We sustain the
rejection for the reasons expressed by the Examiner in the Final Office
Action and the Answer. We add the following for emphasis.
As pointed out by the Examiner, Appellants have not adequately
addressed the Examiner's response to their arguments (presented in an
amendment after final) that was first expressed "at length in the advisory
action of 3/7/14" (Ans. 3; Br. generally). The Examiner's response is
repeated in the Examiner's Answer (Ans. 3-7); and no reply brief was filed.
Since ii~ppellants have not presented any cogent arguments sufficient to
address the Examiner's position, they have not shown any reversible error in
the Examiner's 103 rejections.
"A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective." In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that
it would have been obvious for an artisan with ordinary skill to develop
2 Claims 6 and 13 were cancelled (e.g., Ans. 3). The Examiner applied
additional prior art to various dependent claims (Final Action generally).
Appellants' arguments focus solely on claim 1 (Claims App.; Br. generally);
thus, all the claims including those separately rejected stand or fall with
claim 1 (see also Br. 6).
2
Appeal2015-000387
Application 13/397,397
workable or even optimum ranges for result-effective parameters. In re
Boesch, 617 F.2d 272, 276 (CCPA 1980); see also In re Woodruff, 919 F.2d
1575, 1577-78 (Fed. Cir. 1990) (where the difference between the claimed
invention and the prior art is some range, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range).
Appellants have not shown error in the Examiner's determination that
one of ordinary skill in the art, using no more than ordinary creativity, would
have used amounts of each of a reactive and an unreactive silane coupling
agent as recited in claim 1 in the optical fiber of the applied prior art
Ishii/ Asrar/Senoo combination, and that such would have naturally resulted
in the recited transmission loss property (Ans.; Br. generally).
The decision of the Examiner is affirmed.
}Jo time period for taking any subsequent action in connection \'l1ith
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
3