Ex Parte BridgesDownload PDFPatent Trial and Appeal BoardDec 19, 201714032275 (P.T.A.B. Dec. 19, 2017) Copy Citation 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). 2 Appeal 2017-002343 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”). 3 Appeal 2017-002343 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 4 Appeal 2017-002343 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 5 Appeal 2017-002343 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.” 6 Appeal 2017-002343 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. 7 Appeal 2017-002343 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. 8 Appeal 2017-002343 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 9 Appeal 2017-002343 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 10 Appeal 2017-002343 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. 11 Appeal 2017-002343 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”). 12 Appeal 2017-002343 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: 13 Appeal 2017-002343 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) 14 Copy with citationCopy as parenthetical citation