Jeffrey M. Lloyd et al.

Patent Trials and Appeals Board

Feb 27, 2020

14098027 - (D) (P.T.A.B. Feb. 27, 2020)

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.
14/098,027 12/05/2013 Jeffrey M. Lloyd 102146 8008
32697 7590 02/27/2020
OFFICE OF INTELLECTUAL PROPERTY
SPAWARSYSCEN, PACIFIC CODE 36000
53510 SILVERGATE AVE. ROOM 103
SAN DIEGO, CA 92152-5765
EXAMINER
JORDAN, ANDREW
ART UNIT PAPER NUMBER
2883
MAIL DATE DELIVERY MODE
02/27/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY M. LLOYD and BRANDON J. WIEDEMEIER
____________

Appeal 2018-005606
Application 14/098,027
Technology Center 2800
____________

Before JAMES C. HOUSEL, MONTÉ T. SQUIRE, and
BRIAN D. RANGE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1 and 6, which are all of the claims pending in
this application.3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In this Decision, we refer to the Specification filed Dec. 5, 2013 (“Spec.”);
Final Office Action dated June 15, 2016 (“Final Act.”); Appeal Brief filed
Jan. 24, 2017, as corrected Feb. 28, 2017 (“Appeal Br.”); Examiner’s
Answer dated Mar. 13, 2018 (“Ans.”); and Reply Brief filed May 10, 2018
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies The United States Government and
Inventors, Jeffrey M. Lloyd and Brandon J. Wiedemeier, as the real parties
in interest. Appeal Br. 3.
3 Claims 2–5 and 7–20 are cancelled. Appeal Br. 1, 13; Reply Br. 3.
Appeal 2018-005606
Application 14/098,027
2
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to optical waveguide repair,
and in particular, to a multi-layered apparatus and system for addressing
structural differentials introduced when optical cables are spliced. Spec. ¶¶
2, 13; Abstract. Claim 1 illustrates the claimed subject matter on appeal and
is reproduced below from the Claims Appendix to the Appeal Brief:
1. A multi-layered optical fiber splice protection apparatus,
comprising:
a strengthening tube over an optical fiber which has been
spliced, said strengthening tube having an external tube surface
with an external tube diameter and an internal tube surface with
an internal tube diameter that is larger than an external cable
diameter of an optical cable, and at least one structural
reinforcement component embedded within said strengthening
tube;
said optical cable having a tension modulus Ko and said
strengthening tube having a tension modulus Ks greater than or
equal to Ko; and,
said optical cable having a bending modulus Eo and said
strengthening tube having a bending modulus Es within a range
of about ten percent above or below Eo.
Appeal Br. 13 (key disputed claim language italicized).
REFERENCE
The Examiner relies on the following prior art reference as evidence
in rejecting the claims on appeal:
Name Reference Date
Homma et al. (“Homma”) US 2012/0170899 A1 July 5, 2012
Appeal 2018-005606
Application 14/098,027
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REJECTION
On appeal, the Examiner maintains (Ans. 2) the following rejection:
claims 1 and 6 rejected under 35 U.S.C. § 103 as being unpatentable over
Homma. Final Act. 4.
OPINION
The Examiner determines that Homma teaches or suggests a
multi-layered optical fiber splice protection apparatus satisfying the
limitations of claim 1 and concludes the reference would have rendered the
claim obvious. Final Act. 4–5 (citing Homma, Figs. 7–12 (elements 131,
134, 135)). Regarding the “strengthening tube having a bending modulus Es
within a range of about ten percent above or below Eo” recitation of claim 1,
the Examiner concludes it would have been obvious to one of ordinary skill
in the art to have used in Homma’s system a material for the strengthening
tube having a bending modulus within the claimed range
in order to match material constants and provide
uniformity of mechanical material characteristics as
well as providing a manufacturing convenience.
Id. at 5; see also Ans. 6–10 (same).
Appellant argues principally the Examiner’s rejection of claim 1
should be reversed because Homma does not teach or suggest a
“strengthening tube having a bending modulus Es within a range of about ten
percent above or below Eo” and the Examiner has not provided reasoning
sufficient to support a conclusion of obviousness with respect to that element
of the claim. Appeal Br. 9–10; Reply Br. 9–12. Thus, Appellant contends
the “Examiner has not established a prima facie case of obviousness against
claim 1.” Appeal Br. 11; see also Reply Br. 9 (arguing the Examiner has not
provided a “rational underpinning” to support a prima facie case of
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Application 14/098,027
4
obviousness), 12 (arguing the Examiner’s rationale “does not meet neither
the KSR nor the MPEP standards”).
Appellant’s argument in this regard is well-taken because, on the
record before us, we are not persuaded the Examiner has established by a
preponderance of the evidence that Homma teaches or suggests a
“strengthening tube having a bending modulus Es within a range of about ten
percent above or below Eo” and it would have been obvious to one of
ordinary skill in the art to have used a strengthening tube in Homma’s
method falling within the scope of that element of the claim. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding the examiner bears the initial
burden of establishing a prima facie case of obviousness).
The portions of Homma the Examiner cites and relies upon in the
rejection do not describe or depict a strengthening tube having a bending
modulus within a range of about ten percent above or below the bending
modulus of an optical cable, as required by the claim. See Homma, Figs.
7–12. Although, for example, Figure 12 of Homma depicts a fusion splice
structure with optical cables 11, sheaths 16, a reinforcing member 131, an
adhesion tube 134, and a protective tube 135, the Examiner does not identify
or direct us to any specific disclosure or discussion in Homma regarding any
of these components having a certain bending modulus or a bending
modulus within a certain range. In particular, the Examiner does not
identify or direct us to any teaching or suggestion in Homma regarding the
material used for protective tube 135, whether individually or in
combination with adhesive tube 134, having a bending modulus within a
range of about ten percent above or below the bending modulus of optical
cable 11 in the manner claimed.
Appeal 2018-005606
Application 14/098,027
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The Examiner also does not identify sufficient evidence or
persuasively explain how or why one of ordinary skill in the art would have
arrived at an apparatus falling within the scope of that limitation of the
claim. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(requiring “reasoning with some rational underpinning to support the legal
conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
In particular, at pages 6 and 12 of the Answer and page 5 of the Final
Office Action, the Examiner does not adequately explain why one of
ordinary skill would have used a material for the strengthening tube in
Homma’s method having a bending modulus falling within the claimed
range. Although the Examiner asserts that one of ordinary skill would have
done so “in order to match material constants and provide uniformity of
mechanical material characteristics as well as providing a manufacturing
convenience” (Ans. 6; Final Act. 5), the Examiner does not direct us to
persuasive evidence or provide adequate technical reasoning to sufficiently
support any such finding. For example, the Examiner does not identify
supporting evidence or provide any further technical discussion as to why
one of ordinary skill would have had reason to match material constants
beyond the generic statements above. The Examiner also does not provide
any further explanation regarding the meaning of the phrase “providing a
manufacturing convenience” in the context of claim 1 and the prior art and
what one of ordinary skill in the art would have understood that phrase to
mean.
Moreover, contrary to what the Examiner’s rejection seems to imply,
the fact that it may have been technically possible to use a strengthening
tube having a bending modulus within a range of about ten percent above or
Appeal 2018-005606
Application 14/098,027
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below the bending modulus of an optical cable, without more, does not
necessarily mean or suggest that one of ordinary skill would have actually
used such a material for the strengthening tube in Homma’s method having a
bending modulus falling within the scope of the claim and that it would have
been obvious to do so. See also Belden Inc. v. Berk–Tek LLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled
artisan not only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention.”).
The Examiner’s assertion that the “rejection does not modify Homma,
but rather selects materials where no specific materials have been selected”
(Ans. 7) is conclusory and, without more, insufficient to sustain the
Examiner’s rejection. Kahn, 441 F.3d at 988 (holding “rejections on
obviousness grounds cannot be sustained by mere conclusory statements”).
Although claim 1 does not specifically identify the material to be used for
the strengthening tube, the claim does recite and require that the
strengthening tube have a bending modulus falling within a specific range,
i.e., “within a range of about ten percent above or below Eo,” which is
supported by Appellant’s Specification. See Spec. ¶¶ 17, 26 (disclosing that
“[t]he bending modulus Es of strengthening tube 40 when added to the
optical cable 10 is within about ten percent above or below the bending
modulus Eo of optical cable 10” and “prevents excessive bending from being
exerted on the optical fiber 15 and prevents optical cable 10 from kinking
over first and second terminating outer rims 49a and 49b”).
The Examiner’s assertion that the “rejection sets forth a rationale for
achieving the claimed subject matter from the Homma reference” (Ans. 12)
is equally unpersuasive because it, too, is conclusory and does not
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Application 14/098,027
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meaningfully address Appellant’s principal argument that the Examiner does
not identify sufficient evidence or persuasively explain why one of ordinary
skill in the art would have arrived at the claimed range.
We, therefore, do not sustain the Examiner’s rejection of claim 1.
Because claim 6 depends from claim 1, we also do not sustain the
Examiner’s rejection of that claim.
Accordingly, we reverse the Examiner’s rejection of claims 1 and 6
under 35 U.S.C. § 103 as obvious over Homma.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6 103 Homma 1, 6

REVERSED