Ex Parte Bridges

Patent Trial and Appeal Board

Dec 19, 2017

14032275 (P.T.A.B. Dec. 19, 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.
2262-0006 8061
EXAMINER
JORDAN, ANDREW
ART UNIT PAPER NUMBER
2883
MAIL DATE DELIVERY MODE
14/032,275 09/20/2013
28078 7590 12/20/2017
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
Rodney Bridges
12/20/2017 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 RODNEY BRIDGES
Appeal 2017-002343
Application 14/032,275
Technology Center 2800
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
WESLEY B. DERRICK, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1—17 under 35 U.S.C. § 103(a). App. Br. 5; Ans. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter new grounds of rejection.
The subject matter of this appeal relates to a holding device for
holding cylindrical fiber optic components of a fiber track on a printed
1 In our opinion we refer to the Specification (filed Sept. 20, 2013)
(“Spec.”), the Final Office Action (dated July 15, 2015) (“Final Act.”), the
Appeal Brief (filed Feb. 12, 2016) (“App. Br.”), the Examiner’s Answer
(dated Sept. 23, 2016) (“Ans.”), and the Reply Brief (filed Nov. 23, 2016)
(“Reply Br.”).
Appeal 2017-002343
Application 14/032,275
circuit board. Spec. 1:7—9. Figures 1 and 2 below depict embodiments of
the claimed device.
Figures 1 and 2 are cross-sectional views of stackable bodies used in a
holding device having a single recess (3) and two recesses (3 A, 3B),
respectively. Spec. 6:17—22; 7:31—8:1.
Claims 1 and 5 are illustrative (paragraphing and italics added):
1. A holding device for holding cylindrical fiber
optical components comprising
at least one stackable body,
each stackable body having at least one recess,
the recess being configured to receive and to hold two
adjacent cylindrical fiber optical components together in a side-
by-side relationship within the recess.
5. The holding device according to claim 1, wherein a
width of the recess within said stackable body is twice the
diameter of a cylindrical fiber optical component.
App. Br. 10, 11 (Claims Appendix).
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Application 14/032,275
The Examiner maintains, and Appellant2 appeals, the rejections of
claims 1—17. App. Br. 3; Ans. 2. Appellant separately argues the rejection
of claims 1 and 5 under 35 U.S.C. § 103(a) over the combination of Daoud3
and Hodge.4 App. Br. 7—16. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), and in view of the lack of arguments directed to the
subsidiary rejections under § 103(a), dependent claims 2-4 and 6—17 will
stand or fall together with independent claim 1 on which they depend either
directly or indirectly.
OPINION
The dispositive issues for this appeal are (1) whether the Examiner
erred in construing the claim terms “recess” and “configured to receive and
to hold two adjacent cylindrical fiber optical components together in a side-
by-side relationship within the recess”; (2) whether the Examiner erred in
finding that Daoud discloses a recess as required by claim 1; and (3) whether
the Examiner erred in finding that Daoud discloses a recess having a width
equal to twice the diameter of one of the fiber splices as required by claim 5.
After review of the arguments and evidence presented by both
Appellant and the Examiner, we affirm the stated rejections. Because our
discussion also expands on the Examiner’s basis for the rejections, we enter
a new ground of rejection.
2 Appellant is the Applicant, ADVA Optical Networking SE, which,
according to the Appeal Brief, is the real party in interest. App. Br. 2.
3 Daoud, US 6,259,851 Bl, issued July 10, 2001 (“Daoud”).
4 Hodge, US 5,146,532, issued Sept. 8, 1992 (“Hodge”).
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Application 14/032,275
Claim 1
The Examiner (1) finds that Daoud discloses the holding device of
claim 1 except for the body of the device being stackable; (2) finds that
Hodge discloses an optical fiber retention device having a stackable body;
and (3) concludes that it would have been obvious to include a stackable
system such as Hodge’s in a system according to Daoud in order to provide
support for additional splices/fibers. Final Act. 3^4 (citing Daoud Figs. 3, 6,
6B; Hodge Figs. 4, 12). Figures 3 and 6 of Daoud are shown below:
FIG. 3
single: fmb smi user
SPEKES SPLICES 6
Figures 3 and 6 show side elevation views of Daoud’s spliced optical fiber
holder with and without the fiber splices being held. Daoud 2:7—16.
In the Appeal Brief, Appellant argues that the Examiner’s
interpretation of “recess” and “side-by-side relationship” to encompass the
structure of Daoud, which has lateral openings separated from each other by
spaces through which a separate fiber ribbon can pass, is unreasonably
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Application 14/032,275
broad. App. Br. 5. According to Appellant, the customary meaning of
“recess” as applied to Daoud “would encompass only the recesses (8) and
not any free space between the retention members (6).” Id. at 6. Appellant
also contends that because Daoud fixes each optical fiber within its own
separate lateral opening (8), Daoud’s structure “does not show a single
recess ‘configured to receive and to hold two adjacent cylindrical fiber
optical components together’” as recited in claim 1. Id.
Appellant further argues that the Examiner’s interpretation of “side-
by-side” as encompassing both “immediately adjacent” as well as “next to”
does not apply to Daoud’s holder because “the fiber splices are specifically
held apart by the material of the retention member (6) or by the gap (10).”
Id. at 7. Appellant contends that the Specification informs the definition of
“side-by-side” when it refers to “a single recess adapted to receive two
adjacent cylindrical fiber optical components” as well as from every drawing
which “shows the fiber components in contact with each other in a side-by-
side relationship.” Id. at 8 (citing Spec. 2:15,-16; 6:20-21; Figs. 3—8).
Appellant concludes that the term “side-by-side” means “immediately
adjacent” because that is what is disclosed in the original specification and
drawings. Id.
The Examiner responds that even if Daoud’s open spaces are
articulated recesses, i.e. linked, they are recesses nonetheless. Ans. 2. The
Examiner further responds that limitations from the Specification cannot be
read into the claims. Id. at 3. The Examiner finds that the recesses in Daoud
are able to receive and hold several adjacent cylindrical fiber optical
components together. Id. at 4. Regarding Appellant’s argument that the
Examiner’s interpretation of “recess” is overly broad and unreasonable
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Application 14/032,275
because the limit on how far apart the retention members (6) and the gap
(10) must be to no longer be considered a “recess” is arbitrary, the Examiner
states that if there is overlap between what the claims mean and what the
prior art shows, then the prior art reads on that portion of the claim. Id. at 5.
The Examiner finds that Daoud provides a recess that holds optical fiber
cables, particularly splices {id.), that the presence of a gap is not seen to
diminish the adjacent nature of the held cables {id. at 6), that the dimensions
of Daoud’s device are variable as to the space between held cables {id.), and
that most adjacent objects are divided by space {id.). The Examiner also
finds that “immediately adjacent” is not present in the claims, but
nevertheless met by Daoud. Id. at 8. The Examiner additionally finds that
there are no special definitions provided in the Specification and that the
interpretation of “adjacency” and “next to it-iveness” are valid in view of the
plain meaning of terms whereas Appellant seeks a narrow interpretation that
would not have been understood by a person having ordinary skill in the art
at the time of the invention. Id. at 9.
In the Reply Brief, Appellant maintains that the Examiner’s
interpretation of “recess” is unreasonable. Reply Br. 4. Appellant asserts
that it “is simply seeking an interpretation of the term [recess] that is
consistent with the ordinary meaning of the term.” Id. at 2. Appellant
contends that it is not claiming an “articulated recess” that is “consisting of
segments united by joints.” Id. at 3 (quoting Merriam-Webster Dictionary).
Regarding the claim requirement that the recess be configured to hold two
adjacent optical components, Appellant contends that the Examiner’s
position that all adjacent objects are divided by space or separating
structures is a “platitude” and “irrelevant” to the interpretation of “recess.”
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Application 14/032,275
Id. at 3. Appellant also asserts that the Examiner’s example of adjacent city
blocks separated by a street cuts against the Examiner’s position because
“[a] building on one city block ... is not considered to be one with a
building on another city block simply because a street separates them.” Id.
at 3^4. Finally, Appellant asserts that claim 1 includes “side-by-side” in
order to avoid the interpretation of “adjacent” applied by the Examiner. Id.
at 4. According to Appellant, the Examiner’s interpretation of “adjacent” is
not “consonant with Applicant’s specification and drawings.” Id.
For the reasons discussed below, Appellant’s arguments fail to
identify a reversible error in the Examiner’s claim interpretations and
findings as to Daoud. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
We find the Examiner’s claim constmction reasonable because
Appellant does not direct us to any particular portion of the Specification
that restricts the size of a recess from including space beyond that required
to hold or retain two optical components other than Figures 3—8 (App. Br.
8). Appellant’s Figures 3—8 depict the round cross-sections of two optical
components as abutting each other as well as the surface of the stackable
body that defines the recess. Figure 3 is shown below.
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Application 14/032,275
Figure 3 is a cross-section view of an exemplary holding device in which
two adjacent cylindrical fiber optical components are inserted into each
recess. Spec. 8:27—33.
Claim 1 does not require that the optical components touch each other,
nor does Appellant propose such a claim construction for the terms
“adjacent” or “side-by-side” which describe the relationship between the two
optical components “within the recess.” Similarly, claim 1 does not require
that the entire surface of the body that defines the recess touch the optical
components. Therefore, to construe the term “recess” to require a maximum
size in which the two optical components touch each other as well as the
walls of the holding device as shown in Appellant’s Figures 3—8 would
improperly read limitations from the Specification into the claim. Although
the claims are interpreted in light of the specification, limitations from the
specification are not read into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
Appellant asserts that the ordinary and customary meaning of “recess”
is used in the Specification and not met by Daoud’s holding device (Reply
Br. 2). However, Appellant does not offer any affirmative construction or
definition of the term. The pertinent dictionary definition of “recess” is “a
receding part or space, as a bay or alcove in a room.”5 This definition,
likewise, does not limit the contours of a receding space. In addition,
Appellant does not direct us to any disclosure in the Specification regarding
the size or width of the recess being critical. Indeed, the configuration of the
recess required by claim 1 is relative to “cylindrical fiber optical
components” that are not themselves required by the claim, suggesting
5 http://www.dictionary.com/browse/recess?s=t.
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Application 14/032,275
variability in the size of the recess depending on the components selected.
The exemplary fiber optic components disclosed in the Specification include
photo detectors, fiber optical splices, fiber optical taps, fiber optical
couplers, micro-optic wavelength division multiplexers, optical fibers, or
even bundles of optical fibers. Spec. 6:10-13. Based on the cited record on
appeal, we are not persuaded of error in the Examiner’s interpretation of
claim 1. Accordingly, we affirm the stated rejection of claim 1 as obvious
over Daoud and Hodge.
Claim 5
The Examiner determines that Daoud and Hodge disclose the subject
matter of claim 5 for the reasons stated on page 5 of the Final Action.
In the Appeal Brief, Appellant argues that the Examiner erred in
rejecting claim 5 based on the Examiner’s “expansive view” of the term
“recess” as requiring that the recess between opposed retention members of
Daoud be able to contain two cylindrical fiber components. App. Br. 8.
Appellant contends that Daoud does not disclose a recess having a width
equal to twice the diameter of one of the fiber splices as required by claim 5
because “each individual recess (8) of Daoud has a width that is only large
enough for one fiber splice.” Id. at 9.
The Examiner responds that Appellant argues its own definition of
“recess” rather than using the Examiner’s interpretation. Ans. 11. The
Examiner finds that Daoud horizontally holds at least two fibers in a side-
by-side manner as explained in connection with the rejection of claim 1. Id.
Regarding Appellant’s assertion that a single retention member is not
present in Daoud, the Examiner finds that the term “width” is not specified
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Application 14/032,275
as to whether it is a maximum or minimum width, e.g., therefore the claim is
open to a broader interpretation than that sought by Appellant. Id. at 11—12.
The Examiner finds that Daoud shows a recess having many widths present
as shown in annotated Figure 6 below. Id. at 12.
two diameters
X-
one diameter
*—-fer';
Annotated Figure 6 shows a width of two diameters and a width of one
diameter between two interior portions of the recess identified by the
Examiner. Id.
In the Reply Brief, Appellant contends that the Examiner’s annotation
of Figure 6, which includes the space between Daoud’s “actual recess in the
retention members,” produces “a width that is much greater than twice the
diameter of the fiber optic cables.” Reply Br. 5. Appellants further assert
that the Examiner’s claim interpretation “forces applicants to capitulate with
a picture claim, thereby depriving the inventor of the coverage that his/her
invention deserves.” Id.
We are not persuaded by Appellant’s argument that the Examiner
reversibly erred in finding that Daoud discloses a recess for holding optical
components having a width of “twice the diameter of a cylindrical fiber
optical component” as recited in claim 5. The problem with Appellant’s
argument is that Appellant does not direct us to any support for a different
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Application 14/032,275
interpretation of “recess” other than Figures 3—8 of the Specification as
discussed above in connection with claim 1.
Regarding the Examiner’s mapping of claim 5 to Daoud’s Figure 6,
we are not persuaded by Appellant’s argument that the Examiner identifies a
width greater than twice the diameter of the fiber optic cables (Reply Br. 5).
As the Examiner explains, claim 5 does not specify whether the width of
twice the diameter of a cylindrical fiber optical component is a minimum or
maximum width (Ans. 11—12) and the width of the recess as applied to
Daoud holds two cylindrical fiber optical components as shown by
annotated Figure 5 of Daoud (Ans. 12). Therefore, the preponderance of the
evidence supports the Examiner’s finding that Daoud discloses a recess
having a width equal to twice the diameter of one of the fiber splices as
required by claim 5.
Appellant’s argument that the Examiner’s rejection of claim 5 forces
Appellant to retreat to a picture claim of its holding device is not persuasive
of reversible error by the Examiner where the device as claimed would have
been obvious over the cited prior art.
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
For the foregoing reasons, we affirm the Examiner’s rejection under
35 U.S.C. § 103(a) of claim 5.
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Application 14/032,275
New Ground of Rejection Under 35 U.S.C. § 103(a)
To the extent that “recess” recited in claims 1 and 5 is limited to a
space that conforms to the shape of two optical components along the entire
plane in which the two optical components are in side-by-side alignment as
Appellant implies, we find that it would have been obvious to one of
ordinary skill in the art at the time of filing of Appellant’s Application to
modify Daoud’s lateral opening (Daoud Fig. 3, item 8), holding and
conforming to a single fiber splice (Daoud Fig. 6), such that the lateral
opening is extended or elongated to hold two optical components as
evidenced by Krampotich6 (Krampotich Fig. 15). Figure 15 of Krampotich
is shown below.
Figure 15 depicts a cable clip. Krampotich 121. Krampotich describes
cable slots (114) being narrower than the width of cable 120 to prevent
escape of the cables from slots 114. Id. 1 55. Figure 15 shows two such
cables in side-by-side alignment in slot 114 that touch each other as well as
conform to the surface of slot 114. Therefore, it would have been obvious to
modify the stackable holding device of Daoud and Hodge as found by the
6 Krampotich, US 2004/0151465 Al, issued Aug. 5, 2004 (“Krampotich”).
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Application 14/032,275
Examiner, by elongating Daoud’s lateral opening for the benefit of
conforming to two optical components in side-by-side alignment to hold a
second optical component while preventing the escape of cables from the
recess as evidenced by Krampotich. Such a modification of Daoud and
Hodge in view of Krampotich has a recess that (1) is configured to receive
and to hold two adjacent cylindrical fiber optical components together in a
side-by-side relationship within the recess as required by claim 1, and (2)
has a width of the recess that is twice the diameter of cylindrical fiber optical
component as required by claim 5.
For the foregoing reasons, we find claims 1 and 5 unpatentable under
35 U.S.C. § 103(a) over the combination of Daoud and Hodge as evidenced
by Krampotich.
DECISION
For the foregoing reasons, we affirm all of the Examiner’s rejections
under 35 U.S.C. § 103(a) and enter a new ground of rejection of claims 1 and
5 under 35 U.S.C. § 103(a) over Daoud and Hodge as evidenced by
Krampotich.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection
. . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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Application 14/032,275
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
ORDER
AFFIRMED & NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R, $ 41.50(b)
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